A recent federal district court decision has clarified when state law claims are preempted by the federal Copyright Act and highlights the importance of registering for a copyright. Because different remedies and damages are available under federal and state law, the interaction of the two regimes affects a company’s potential exposure for infringement. In particular, businesses may be able to assert preemption of state law claims by arguing that the federal Copyright Act provides the exclusive remedy for any purported misappropriation of a work. Companies seeking to protect a work should also be aware that they may not be able to rely on the protections of state law where the work falls within the scope of the Copyright Act. To be entitled to any protection under the Copyright Act, it will be necessary to register the work.
The Frontier Group, Inc. v. Northwest Drafting & Design, Inc., 2007 WL 1880299 (D. Conn. 2007), arose out of a dispute over architectural plans. Frontier Group brought an action in state court under Connecticut law against Northwest Design Group, Mark Robinson, and Martial Grondin. While the claims against Northwest Design and Robinson were settled, Frontier alleged that Grondin violated the ownership rights Frontier had in a set of architectural plans, drawings, and specifications by converting Frontier’s rights to his own benefit to the exclusion of Frontier. Frontier created the plans for a home, but the homeowner sold the property to Grondin, who took the plans to another company to finish construction without consent or authorization from Frontier.
Frontier alleged that Grondin converted its ownership and possession rights in the plans, and thereby violated Connecticut’s Unfair Trade Practices Act. Grondin prevailed by arguing that Frontier’s claim was, in reality, a copyright infringement case and that Grondin’s state law claims were preempted. Grondin was able to remove the case to federal court and successfully move for summary judgment.
In assessing whether Frontier’s claims were preempted, the court used a two-prong test to determine whether the Copyright Act governs Frontier’s claim. The first prong is called the subject matter requirement and the second prong is called the general scope requirement. First, the court must determine whether the allegedly infringed work falls within the type of work protected by the Copyright Act, and second the court must determine whether the state law claim protects the same rights as the Copyright Act. The court found that the plans satisfied the first prong because they are works of authorship, fixed in a tangible medium of expression that fall within the categories protected by the Copyright Act. The court also found that the second prong was satisfied because Frontier’s claims did not contain any “extra elements” that made the claims different from a copyright infringement claim, a factor that would have helped to avoid preemption.
While the court found that the Copyright Act did apply, the court then granted summary judgment in favor of Grondin because Frontier did not have a registered copyright on the architectural plans, which is required before a copyright infringement suit may be instituted.