Monday, May 17, 2010

2d Cir: Tortious Interference and Conversion Claims Preempted By Copyright Act

Miller v. Holtzbrinck Publishers, L.L.C., 2010 WL 1932322, 1 -2 (2d Cir. May 14, 2010):

First, we consider Miller's claims against the third-party defendants. The Copyright Act preempts a state law claim when: “(1) the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103, and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. § 106.” Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir.2004). State law claims may proceed only if those claims contain “extra elements that make it qualitatively different from a copyright infringement claim.” Id. In applying this standard, “we take a restrictive view of what extra elements transform an otherwise equivalent [state law] claim into one that is qualitatively different from a copyright infringement claim.” Id . at 306; accord Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 851 (2d Cir.1997). More specifically, “[i]f unauthorized publication is the gravamen of [plaintiff's] claim, then it is clear that the right [she] seek[s] to protect is coextensive with an exclusive right already safeguarded by the [Copyright] Act” and thus that state law claim is preempted. Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 201 (2d Cir.1983), rev'd on other grounds, 471 U.S. 359 (1985) (holding that plaintiff's claims of tortious interference and conversion were preempted by the Copyright Act).

 Applying the above framework to this case, we conclude that the Copyright Act preempts Miller's claims of tortious interference and conversion. Here, as in Harper & Row, “unauthorized publication is the gravamen of [her] claim.” Id. As the District Court stated, “[h]er case rests on her theory that [the third-party defendants] tortiously interfered with her business relations and converted her literary work by publishing the book without authorization [by her] or credit [to her].” Miller v. Holtzbrinck Publishers, L.L.C., 2008 U.S. Dist. LEXIS 92038 at *8 (S.D.N.Y. Nov. 12, 2008). For this reason, we conclude that Miller's claims against the third-party defendants are preempted by the Copyright Act.


Christopher Schiller said...

If the District Court's reading of the gravamen of the case is accurate to the claim, then there is no non-co-extensive State element and therefore the decision is correct.

But suppose the claim wasn't that the tort was the unauthorized publishing but the lack of attribution in that publishing? This, in essence would make the gravamen a moral rights claim, which is acknowledged to be outside of the current U.S. copyright statute's purview.

The U.S. Senate, in passing the Berne Treaty adoption legislation, stated that the rights in the Treaty did not require alteration to the laws already available in the U.S.- the assumption being that all sections, (including 6bis,) were already available to U.S. citizens through federal, state or common law sources. But since the Lanham Act was taken off the table as a potential source of moral rights in Daystar, I haven't yet seen a case that found where these Senators thought moral rights for U.S. citizens were hiding.

Of course, any claim that this was an actual call for moral rights recognition would depend on how the case was argued in the District Court. I doubt the language could sustain it, but, it brought the interesting question to my mind.

Ray Dowd said...

Christopher - Off the top of my head, Daystar involved a public domain work (videotape of work based on Gen'l Eisenhower's memoirs). Scalia said you can't use Lanham Act to make a mutant copyright law that will live forever.

My recollection is that you can also use the Lanham Act for non-PD works in a "reverse passing-off" claim. I succeeded in this for a film producer/maker who had copyrightable contributions to a film and whose credit was wrongfully removed.

Also the DMCA penalizes removal of copyright information, so check out for example the claims alleged in the Obama/Hope case against Shepard Fairey

I haven't thought about that question for a while and haven't had my second cup of coffee or opened my book to remember what I've written so please don't rely on this.