«IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW MEXICO TIZE W. CLARK, author, and BAU PUBLISHING GROUP, Plaintiffs, vs. Civ. No. 14-00965 ...»
“[c]opyright law provides very limited protection to the characters presented in the creative work.” Acker, 46 F. Supp. 3d at 172 (internal quotation and citation omitted). A character’s obscure or general appearance is not a protectable expression. See Nichols v. Universal Pictures Corp., 45 F. 2d 119, 121 (2d Cir. 1930), cert denied, 282 U.S. 902 (1931). Only well-developed characters may enjoy copyright protection. Id. (“It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”). Therefore, Plaintiffs’ asserted basic characteristics are insufficient to support a finding of substantial similarity.
In light of the aforementioned, the Court finds that no reasonable person would conclude that The Maze and The Maze Runner are substantially similar. As a result, Plaintiffs’ Complaint lacks any allegations, beyond Plaintiffs’ conclusory statement, that Defendants’ work, The Maze Runner, infringed on Plaintiffs’ protectable expressions in The Maze. Thus, Plaintiffs’ Count I is subject to dismissal under Rule 12(b)(6). It also follows that Plaintiffs’ Count II is dismissed as
claims will be dismissed with prejudice.
C. Unfair Trade Practices & Unfair Competition (Count III) Defendants assert that Plaintiffs’ state law unfair trade practices and unfair competition claims are preempted by the Copyright Act, 17 U.S.C. §§ 101–1332. Furthermore, Plaintiffs’ federal unfair competition claim for attribution falls within the exclusive province of federal copyright law. Plaintiffs counter that under New Mexico’s notice only pleadings standard, the Complaint sufficiently pleads the “state law or federal law claim in unfair trade practices and unfair competition.” (Doc. 36) at 28.
1. Plaintiffs’ State Law Claims Section 301 of the Copyright Act describes the extent to which state common-law and
statutory causes of action are preempted. It provides, in relevant part:
(a) [A]ll legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to...
(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.
17 U.S.C. § 301. “[A] state-law claim is preempted if (1) the work is within the scope of the ‘subject matter of copyright’ as specified in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under state law are equivalent to any exclusive rights within the scope of federal copyright as set out in 17 U.S.C. § 106.” R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1146 (10th Cir.
respect to uncopyrightable as well as copyrightable elements.” Id. at 1146-47.
Defendants maintain that Plaintiffs’ claim meets both prongs of the preemption test: The Maze is a literary work under 17 U.S.C. § 102(a)(1); and, Plaintiffs have not alleged a requisite extra element to distinguish the purported rights at issue from those conferred by copyright.
Plaintiffs do not challenge either of Defendants’ contentions. And, as such, the Court finds that the first requirement is satisfied. The Court, nevertheless, will review “whether the state-law rights asserted by [Plaintiffs] are equivalent to any of the exclusive rights within the general scope of copyright, as specified in 17 U.S.C. § 106.” Id. at 1147.
Section 106 of the Copyright Act grants copyright owners the exclusive rights to: (1) reproduce the copyrighted work; (2) prepare derivative works; (3) distribute copies of the work to the public by sale; (4) perform the work publicly; and (5) display the work publicly. 17 U.S.C. § 106(1)–(6). As explained by the Tenth Circuit, a state violation is deemed preempted, “[w]hen a right defined by state law may be abridged by an act which, in and of itself, would infringe one of the exclusive rights.” R.W. Beck, Inc., 577 F.3d at 1147 (internal quotations omitted). The state law is not preempted if the state law violation is “predicated upon an act incorporating elements beyond mere reproduction or the like.” Id.
In Count III of the Complaint, Plaintiffs allege that:
The Maze by Tize Clark was in the public domain and was receiving healthy book sales and royalties to Tize Clark, in the summer of 2005.... [Defendant] Dashner published his novel... without consent or acknowledgment of its source and copyrightable material from 2009 to 2013 with million dollar sales of his book.
From at least October 6 of 2009, and continuously since that date [D]efendant James Dashner and Random House (Delacorte Press) [sic] has been publishing, selling, and otherwise marketing the book, The Maze Runner by Dashner, to their profit and without credit and royalties to Tize Clark.
out of Defendants’ publication and selling of The Maze Runner as their own original work.
Because the nature of Plaintiffs’ state law unfair trade practices and unfair competition claim flows from the “publication” of The Maze Runner that arose from the alleged copying of Plaintiffs’ work, Plaintiffs’ state law claim is preempted. See R.W. Beck, Inc., 577 F.3d at 1145– 49 (state law claims of unfair competition and unjust enrichment preempted by Copyright Act);
see also Ehat v. Tanner, 780 F.2d 876, 879 (10th Cir. 1985) (nature of unfair competition claims based on “reproduction” of plaintiff’s work are within scope of federal copyright). Accordingly, Plaintiffs’ state law claim in Count III is subject to dismissal for failure to state a claim with prejudice.7
2. Plaintiffs’ Federal Unfair Competition Claim Defendants assert that Plaintiffs’ federal unfair competition claim is subject to dismissal because Plaintiffs’ rights are limited to those provided by the Copyright Act, and, therefore, Plaintiffs cannot also pursue a Section 43(a) Lanham Act claim. Defendants cite Dastar v.
Twentieth Century Fox, 539 U.S. 23 (2003), to argue the Section 43(a) claim is barred as a matter of law. Plaintiffs did not respond to Defendants assertion.
The Lanham Act, generally, “was intended to make ‘actionable the deception and misleading use of marks,’ and ‘to protect persons engaged in... commerce against unfair competition.’” Dastar, 539 U.S. at 28 (ellipsis in original) (quoting 15 U.S.C. § 1127).
Section 43(a) of the Lanham Act provides, in pertinent part:
7 In the response, Plaintiffs summarily contend that if the Court grants Defendants’ motion as to the “state law and federal law claim in unfair trade practices and unfair competition” the “Court permit amendment to separately state claim.” (Doc. 36) at 28. As thoroughly addressed above, Plaintiffs’ state law claims for unfair trade practices and unfair competition are preempted and, therefore, any amendment to the Complaint would be futile. See Brereton, 434 F.3d at 1219. Plaintiffs’ request for amendment is, therefore, denied.
(A) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person....
[S]hall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A).
Here, in the Complaint, Plaintiffs allege Defendants published, sold, and marketed the book The Maze Runner as their own. This constitutes a claim of “reverse passing off,” where Defendants “misrepresent someone else’s goods or services as [their] own.” Dastar, 539 U.S.
at 27 n.1 (citation omitted). The Court agrees Dastar governs its evaluation of this claim.
In Dastar, the defendant purchased videos of a television series for which the copyright had expired, copied the videos, made some “minor” revisions, and then released the videos under a new title that referenced the defendant as the distributor and producer. Id. at 26–27, 31. The Supreme Court rejected the plaintiffs’ reverse passing off claim under the Lanham Act for failure to credit the plaintiffs for the original videos. The Supreme Court held that the term “origin” as used in Section 43(a)(1) is “incapable of connoting the person or entity that originated the ideas or communications” contained in the produced goods. Id. at 32. In declining to recognize a cause of action under Section 43(a) “for, in effect, plagiarism,” the Supreme Court found that such a holding would conflict with federal copyright law, “which addresses that subject
specifically.” Id. at 33, 36. The Court concluded:
In sum, reading the phrase “origin of goods” in the Lanham Act in accordance with the Act’s common-law foundations (which were not designed to protect
Id. at 37 (emphasis in original).
It follows that under Dastar, the Lanham Act does not prohibit the conduct complained of in this matter, i.e. Defendants’ publication of The Maze Runner, which Plaintiffs allege is substantial similar to Plaintiffs’ work, without crediting Plaintiffs. This type of allegation falls within the exclusive purview of federal copyright law. Thus, Plaintiffs may not state a federal unfair competition claim for the same alleged conduct that supports the copyright infringement claim. Consequently, Defendants are entitled to dismissal, with prejudice, of Plaintiffs’ federal unfair competition claim in Count III.
1. Defendants’ Motion to Dismiss Complaint (DKT. #1) by Defendants Dashner and Random House (Incorporating Authorities) (Doc. 22) is granted; and
2. Plaintiffs’ claims against Defendant James Dashner and Defendant Random House in Count I, Count II, and Count III in the Complaint (Doc. 1), filed October 24, 2014, will be dismissed with prejudice.