MEMORANDUM OPINION AND ORDER
KENNEDY, District Judge.
Plaintiff, International Kitchen Exhaust Cleaning Association ("Kitchen Exhaust"), is a nonprofit corporation that promotes fire safety in restaurants and professionalism in the kitchen-exhaust-cleaning industry. Defendant, Power Washers of North America ("Power Washers"), also a nonprofit corporation, advances the interests of the power-washing industry. Kitchen Exhaust alleges that Power Washers is liable to it for copyright infringement and unfair competition because Power Washers copied and used certain certification-program materials, particularly test questions, that had been created by Kitchen Exhaust's agent. Kitchen Exhaust seeks multiple remedies, including punitive damages and injunctive relief.
Before the court is Power Washers' motion to dismiss Kitchen Exhaust's amended complaint. Power Washers argues that (1) Kitchen Exhaust failed to register its copyright before filing suit as allegedly required by the Copyright Act, (2) the Copyright Act preempts Kitchen Exhaust's unfair-competition claim, and (3) Kitchen Exhaust has no "claim" for punitive damages as a matter of law. Having considered Power Washers' motion, Kitchen Exhaust's opposition thereto, and the record of this case, the court concludes that Kitchen Exhaust's attempts at registration before filing suit were adequate under the Copyright Act and that Kitchen Exhaust's unfair-competition claim is preempted. The court further construes Kitchen Exhaust's punitive damages
I. FACTUAL BACKGROUND
The following facts are gleaned from Kitchen Exhaust's amended complaint.
Though both parties share an interest in clean kitchen exhausts, Kitchen Exhaust apparently first created a certification program and related testing materials on the subject. In September 1995, Kitchen Exhaust entered an agreement with Ackland Andrews & Associates ("Ackland") whereby Ackland was to create 400 test questions for Kitchen Exhaust's certification program.
It is unclear when Kitchen Exhaust first employed and sold its certification-program materials and the questions Ackland created. Whatever the date, the materials have carried copyright notices since 1995.
On November 23, 1998, Kitchen Exhaust was informed that Power Washers had published on its web site verbatim excerpts from Kitchen Exhaust's certification-program materials.
Kitchen Exhaust filed a copyright-registration form on November 25, 1998, with the U.S. Copyright Office.
On December 2, 1998, Power Washers responded to Kitchen Exhaust's letter and agreed to eliminate references to Kitchen Exhaust's materials.
A. Copyright Registration
Power Washers argues that Kitchen Exhaust's failure to obtain certification from
The Copyright Act states that "no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title."
This is a question of first impression in this circuit.
To best effectuate the interests of justice and promote judicial economy, the court endorses the position that a plaintiff may sue once the Copyright Office receives the plaintiff's application, work, and filing fee. Thus, if Kitchen Exhaust indeed filed its copyright application, deposited its work, and paid the appropriate fee before filing suit, the court shall hear its claims on the merits rather than dismiss them and require the refiling of the complaint.
However, Kitchen Exhaust has alleged in its amended complaint that it "filed a copyright registration form" before commencing the instant action.
B. Copyright Preemption
Power Washers argues that Kitchen Exhaust's unfair-competition claim is preempted by the Copyright Act because Kitchen Exhaust seeks identical relief
The Copyright Act preempts a state-law claim if two conditions are met: (1) the subject matter protected by the state-law claim "come[s] within the subject matter of copyright as specified by section 102 and 103" of the Act; (2) the state-law claim governs 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."
The parties do not dispute that the first condition is met here. Any contrary argument would be in vain, as there is no doubt that Kitchen Exhaust's certification-program materials fall within the ambit of the Copyright Act.
The second preemption condition is also met. Section 106 of the Copyright Act protects (and preempts) the rights to: (1) reproduce the work; (2) prepare derivative works; (3) distribute copies to the public via sale or other ownership transfer or by rental, lease, or lending; and (4) publicly display the work.
To gauge Kitchen Exhaust's unfair-competition claim, the court applies the "extra element" test. This circuit has not considered the applicability of this test, but this district has recently applied it.
Kitchen Exhaust's first claimed wrong — that Power Washers unlawfully published, distributed, sold, and marketed Kitchen Exhaust's protected materials — is, of course, explicitly within the coverage of section 106 of the Copyright Act and is preempted. Kitchen Exhaust's second claimed wrong merits further discussion.
Kitchen Exhaust's claim that Power Washers is "passing off" Kitchen Exhaust's copyrighted material as Power Washers's own is termed "reverse passing-off."
Kitchen Exhaust basically seeks protection for Power Washers's failure to attribute Kitchen Exhaust's ownership of the certification-program materials Power Washers allegedly copied. This district has held before that such a "failure to attribute" is alone insufficient for a state-law claim to avoid Copyright Act preemption.
C. Punitive Damages
Power Washers moves to dismiss Kitchen Exhaust's third claim, styled "punitive damages." Power Washers argues that Kitchen Exhaust mispleaded a remedy as a free-standing cause of action and further, under the Copyright Act, punitive damages are unavailable. Kitchen Exhaust rejoins that, if this is not a free-standing cause of action, it should not be dismissed because it is a technical and not substantive error.
Power Washers is correct: punitive damages is a remedy and not a freestanding cause of action and should be dismissed. The court, however, declines to rule on whether Kitchen Exhaust may recover punitive damages as a remedy at this stage of this litigation. This issue is properly considered at a later time in the proceedings.
Assuming that Kitchen Exhaust is able to timely amend its complaint to assert that it deposited its work with the Copyright Office and paid the appropriate fee before filing this suit, the court denies Power Washers's motion to dismiss Kitchen Exhaust's copyright-infringement claim. Because Kitchen Exhaust's unfair-competition claim seeks damages for "reverse passing off," the court finds it preempted by the Copyright Act. Finally, the court shall dismiss Kitchen Exhaust's punitive damages "claim" as improperly pleaded, but reserves judgment on the availability of punitive damages as a remedy to Kitchen Exhaust's copyright claim.
Accordingly, it is, this 11th day of January 2000, hereby