(Thomas Yarnell contributed research and writing to this post.)
In a past post, we wrote about copyright as it relates to how preemption of state law civil causes of action in the same or related cases. In writing about the Perez Hilton and NFL Films cases, we noted that federal copyright law did not preempt applicable state laws (specifically, “hot news” and right of publicity claims) because the rights claimed under the state laws were not equivalent to the rights protected by the Copyright Act.
Put another way, federal copyright preempts state law claims where the rights sought to be enforced under the state claims do not necessarily match those protected by the Copyright Act. In those cases, the rights protected by copyright – reproduction, performance, distribution or display of the work – were distinguishable from the rights protected by the state law claims.
A 2008 North Carolina case offers a counter example, involving failure to show that a state law added some unique element outside of the rights protected by copyright. The case, Rutledge v. High Point Regional Health System, F.Supp.2d –, 2008 WL 2264239 (M.D.N.C.) shows how claims under state law can only avoid copyright preemption if they are “qualitatively different” from copyright law.
Rebecca Tushnet, a Law Professor at Georgetown University Law School, wrote extensively about the case, and her commentary is here.
Plaintiff was Rutledge, a physician who developed a unique gastric bypass weight loss procedure. Rutledge registered federal copyrights for the procedure and the accompanying processes, documentation and so forth.
There was no issue in the case about whether Rutledge’s copyright claim was valid, but rather whether he could also pursue North Carolina state law unfair competition claims (under the North Carolina Unfair and Deceptive Trade Practices Act) against a group of physicians who he claimed misappropriated his copyrighted works.
Unlike the hot news and right of publicity cases, there was no question as to whether the works involved were being used by another party for commercial purposes. Instead, the question was whether Rutledge’s claim under the North Carolina Unfair and Deceptive Trade Practices Act (UDPTA) added that unique element outside of those rights protected by the Copyright Act.
The court noted that, “Where courts have found an extra element sufficient to avoid preemption in this context, the record frequently, but not always, reflects a separate cause of action alleging the additional claim (and thus elements) upon which the unfair competition claim is predicated.”
Rutledge claimed that the extra elements in this case were “misrepresentation” and “deception”, because the defendants misrepresented the copyrighted materials as their own, altered the materials, surreptitiously posted them on the Internet, and used the materials. Rutledge argued that these constituted the necessary unique element to survive a preemption challenge to his state law unfair competition claim.
The court, however, found that the misrepresentation claim was “the natural consequences of a Copyright Act violation.” Rutledge “neither has a free-standing cause of action for misrepresentation upon which to rest the UDTPA claim, nor are the acts upon which he predicates his UDTPA claim different from those giving rise to the Copyright Act claim such that the UDTPA claim would be qualitatively different from the Copyright Act claim. Thus, the UDTPA claim is preempted.”
In plain English, the court found that the plaintiff’s claims of what the defendants had done amounted to restatements of the same claimed copyright violations – and since already covered by copyright, were therefore preempted.
This is a fairly broad reading of copyright preemption, in that it relies heavily on the claims being based on the same set of underlying facts, rather than involving independent facts giving rise to independent claims. That alone would seem to eviscerate any realistic ability to escape a preemption claim when a copyright issue is involved, since the same set of facts will presumably be shared across the set of state and federal claims.
It seems likely that the plaintiff’s reliance on state unfair competition was based on the weakness of copyright as a viable remedy in this case, where ideas and expression were intermingled in the alleged infractions and infringements. Copyright, of course, protects the expression of ideas rather than the ideas themselves. Where the misappropriation involved “how” to do something rather than the physical thing itself, the remedies for breach may be severely limited.
This may further explain the court’s reluctance to enforce Rutledge’s claims, perhaps viewing his reliance on unfair competition as a backdoor to obtain copyright protection for the ideas themselves.
Plaintiff also alleged use of the materials to perform medical treatment. The court treated this as an allegation of use of the ideas, rather than the expression. The Copyright Act bars protection for ideas, and as part of that preempts idea claims like this where no contractual violation is alleged. (Depending on the claims, “use” could also mean simply consulting the materials, which implicates no copyright rights but is allowed by the first sale doctrine.)
Add Comment