MEMORANDUM AND ORDER
WILLIAM K. THOMAS, District Judge.
This action, originally filed in the United States District Court for the Southern District of Texas, was transferred to this court. It is currently before the court on defendant's motion to strike
Plaintiff's complaint contains two counts and is brought pursuant to 28 U.S.C. § 1338(a) and (b). Count I presents a claim for copyright infringement and alleges that plaintiff authored "an original" book entitled Records Retention which is "copyrightable subject matter under the laws of the United States."
Plaintiff further alleges that he "spent many long hours" researching and preparing data which he compiled "by sending a questionnaire" to numerous federal and state agencies. Plaintiff then "followed up
Count II, as amended, presents several examples of recommended retention periods in plaintiff's copyrighted work and lists "similar titles and recommended retention periods in defendants' article `Records Maintenance.'" It says that in defendants' article, numerous other portions are "coincidentally . . . identical or similar to the portions of plaintiff's book Records Retention." Plaintiff then alleges:
Count II concludes that defendant has "willfully and deliberately misappropriated certain information contained [in plaintiff's book]" and "traded upon the good name and reputation of plaintiff, all to plaintiff's damage and detriment."
Relying on Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964) and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964), Penton argues:
While recognizing that these cases dealt with federal protection under the patent laws, Penton notes that "the same principle applies when the protection is given by the federal copyright statutes."
In Sears, the Court set aside a district court injunction against Sears, affirmed by the Seventh Circuit. While invalidating a design patent of Stiffel's pole lamp, the district court enjoined Sears "from unfairly competing with [Stiffel] by selling or attempting to sell pole lamps identical to or confusingly similar to" Stiffel's lamp. In reversing and granting final judgment, the Court reasoned:
Sears, supra, at 231, 84 S.Ct. at 789.
The same ruling was reached in Compco. The district court invalidated Sun-Brite's design patent of fluorescent lighting fixtures but enjoined Compco "from unfairly competing with [Sun-Brite] by the sale or attempted sale of reflectors identical to, or confusingly similar to" the fixtures made by Day-Brite. The Seventh Circuit affirmed. The Supreme Court reversed and granted judgment in favor of Compco.
Significantly, the Court noted:
Compco, supra, at 238, 84 S.Ct. at 782. Thus, the Court recognizes that a state common law unfair competition claim, based on one party's deceptive palming off of an article or work product and not merely upon the copying of another person's article or product, is not preempted by the federal patent laws.
In Goldstein v. California, 312 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), the Court rejected the argument that "Congress so occupied the field of copyright protection as to preempt all comparable state action," noting that the Congress, the Copyright Office and the courts agreed that under the existing law, there was no preemption. That is no longer true. The new Copyright Act establishes preemption with respect to other laws. Section 301(a) provides:
This language preempts and abrogates all legal and equitable rights arising under the common law or statutes of any state
To sustain defendant's motion to dismiss, it must be found that plaintiff's second cause of action, asserting that "Defendant Penton has willfully and deliberately misappropriated certain information contained in the work, Records Retention," is a common law claim that is preempted by section 301(a). However, section 301(a) must be construed together with section 301(b) which reads:
By this language, Congress makes it clear that certain "rights or remedies under the common law or statutes of any State" are not annulled nor limited by the new copyright law. The legislative history discloses that the Conference substitute adopted the House amendment of section 301. This House amendment had "deleted the clause of section 301(b)(3) ". . . enumerating illustrative examples of causes of action,
By deleting the examples (set forth in the margin, n.8), Congress must have decided it was better to permit the states in the first instance through statutory or decisional law to specify or fashion "rights or remedies" that fall within clause (3), subject, of course, to court application of the copyright law limitations of clause (3). While deleted from clause (3), those causes of action remain illustrative of "certain types of misappropriation, not preempted under section 301." However, these exemplified causes of action could only be brought as a pendent state claim in conjunction with a copyright infringement action if indeed the pendent claim was recognized as a legally sufficient state action and provided the claim did not involve a legal or equitable right that is "equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106."
If the plaintiff's second cause of action involved unfair competition by "passing off", it would constitute a cause of action which is available under Ohio law (were this the governing law). Under Fed.R.Civ.P. 8(e)(2), the plaintiff can plead inconsistent and alternative facts and claims. Moreover, a "passing off" claim would not concern the violation of legal or equitable rights that are "equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106." However, plaintiff's second cause of action is not drafted as a "passing off" claim but rather as a broad "misappropriation" claim.
The undoubted right of the plaintiff to plead in the alternative may here be asserted only if the alternative pleading of "misappropriation" is legally sufficient. Plaintiff argues that "misappropriation" is an
Should the plaintiff prevail on its first cause of action demonstrating that its registered copyrights have been infringed, and the defendants fail in any defense and counterclaim of copyright invalidity, plaintiff's count of "misappropriation," an alternative claim by plaintiff's own characterization would become redundant. However, should plaintiff Mitchell fail to prove infringement or if infringed, defendant should show that the copyrights are invalid, then Sears and Compco come into play. These cases hold that once patent protection (similarly copyright protection) is denied, the alleged infringer has "every right to" copy the patented product or copyrighted work of authorship. Plaintiff alleges "misappropriation" by Penton of "many of the factual recitations contained within Records Retention." If proved, such a claim asserts in effect, if not in substance, what Stiffel and Sun-Brite unsuccessfully claimed in Sears and Compco.
Under this disposition, namely that "misappropriation" as claimed by the plaintiff does not circumvent Sears and Compco, it is unnecessary to reach the further question of whether plaintiff has or could frame a claim of "misappropriation" that is actionable under the law of the state where the alleged tort took place.
Defendant Penton's motion to dismiss the second count, as amended, is granted without prejudice to the plaintiff to assert a pendent state claim, consistent with this opinion and applicable state law.
IT IS SO ORDERED.
Section 103 provides: