Opinion
No. 02 C 0725
March 14, 2002
MEMORANDUM OPINION AND ORDER
Reinke + Associates Architects Inc. and Stembridge Builders have sued various defendants for copyright infringement under the Copyright Act (Count I), 17 U.S.C. § 101 et. seq., and unfair competition under the Illinois Consumer Fraud and Deceptive Business Practice Act (Count II), 815 ILCS § 505/1 et. seq. Last year, defendants Bieritz and JB Architecture Group moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. I granted the motion and dismissed the complaint without prejudice on the ground that the complaint failed to properly allege infringement. See Reinke Associates Architects, Inc. v. Cluxton, No. 02 C 0725, 2002 WL 31817982 (N.D. Ill. Dec. 16, 2002). Plaintiffs subsequently filed an amended complaint, and the same defendants have moved again to dismiss this complaint. Defendants argue that: (1) Reinke lacks standing, (2) Count I and Count II otherwise state no claims, (3) Count II is preempted by Section 301(a) of the Copyright Act, and (4) plaintiffs filed their complaint after the expiration of the limitations period. In the prior ruling, I held that the respective statutes of limitations did not preclude both counts, and I see no reason to change this decision. Defendants also move to strike the affidavit of Richard Reinke.
Count I; Copyright Infringement
Defendants argue that plaintiffs have failed to state a copyright claim because they have failed to allege ownership, identify the plans and works, and allege copying or an inference of copying. In order to state a claim of copyright infringement, a complaint need allege only ownership, registration, and infringement. Sweet v. City of Chicago, 953 F. Supp. 225, 227 (ND. Ill. 1996). Other details of the claim may be obtained by discovery. Id. In light of this standard, there is no merit to defendants' argument that plaintiffs have failed to identify the plans and works. All that is required is that plaintiffs allege registration, and they have sufficiently done so in the complaint. Similarly, there is no merit to defendants' argument that plaintiffs have failed to allege copying or an inference of copying. Plaintiffs have plead that the defendants viewed or had the opportunity to view the copyrighted plans, works, or brochures that were prepared off the plan and work and that the defendants' infringing plans are substantially similar to the copyrighted plan and work. Furthermore, where a plan and work are substantially similar and available for inspection by the general public, access to them is assumed under the Copyright Act. Pickett v. Prince, 207 F.3d 402, 404 (7th Cir. 2000). Finally, as to the defendants' claim that plaintiffs have failed to allege ownership, this argument is only directed to Reinke. Nowhere do defendants argue that Stembridge has failed to allege ownership, and lacking any reason to do so, I will not dismiss Count I as to Stembridge.
As to Reinke, defendants argue that it has failed to allege that it is the legal or beneficial owner of the copyright in the Park Ridge Work. The basis of their argument is Exhibit B, the alleged "complete a-signment" of Reinke's ownership of the copyright to Stembridge in 1996. In response, Reinke notes that it is possible to have two separate and distinct copyrights available for architectural works and architectural plans, see Hunt v. Pasternack, 192 F.3d 877, 879-80 (9th Cir. 1999); Robert R. Jones Associates, Inc. v. Nino Homes, 858 F.2d 274 (6th Cir. 1988); see also, 17 U.S.C. § 102(a)(5) and (a)(8), and that such was the case here. Reinke is correct. The so-called "complete a-signment" in 1996 was only a transfer of Reinke's copyright to the "architectural work" of Park Ridge to Stembridge, but Reinke retained its interest in the "architectural plans" of Park Ridge. Exhibit B refers only to the copyright exhibiting registration number VA 985-698 (the Park Ridge Work) and does not refer at all to the copyright exhibiting registration number VA 985-697 (the Park Ridge Plan). As such, Reinke has adequately alleged ownership of the latter copyright, and I will not dismiss Count I as to it.
Count II: Unfair Competition
Among other arguments, defendants argue that plaintiffs' Copyright Act claim precludes this claim. The Copyright Act expressly preempts legal or equitable rights under state law if these rights are equivalent to any of the exclusive fights within (or excluded by) the general scope of copyright as specified by § 106. 17 U.S.C. § 301(a). Under a two-prong test, preemption occurs if (1) the work in which the right is asserted is fixed in tangible form and falls within the subject matter of copyright and (2) the rights claimed are equivalent to the exclusive rights or the lack of such rights as determined by § 106 of the Copyright Act. See Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 674 (7th Cir. 1986); Marobie-FL, Inc. v. National Ass'n of Fire and Equipment Distributors and Northwest Nexus, Inc., 983 F. Supp. 1167, 1180 (N.D. Ill. 1997). Plaintiffs do not dispute that their architectural plans and works are fixed in tangible form and come within the subject matter of copyright. Rather, they argue that the right they assert is broader than the rights specified in § 106 and thus not "equivalent" to them.
A right under state law is "equivalent" to one of the fights within the general scope of copyright if it is violated by the exercise of any of the fights set forth in § 106, in other words, if it "is infringed by the mere act of reproduction, performance, distribution or display." Id. "To avoid preemption, the state claim must incorporate an extra element that changes the nature of the action so that it is qualitatively different from a copyright infringement claim." Id. (omitting internal quotations). Plaintiffs argue that they plead such aforementioned extra elements in their complaint, namely: (1) that defendants' misrepresentation of whom the true author and originator of the infringing plans and subsequent work created a likelihood of confusion in the public; (2) that defendants' false designation was a result of their intention to set forth a misstatement or omission of the true author and owner of the plan and work and this false designation was made to the public; and (3) that defendants created the infringing plan so that they would be published and relied on by the City of Naperville to issue a building permit and by the White Eagle Homeowners Association architectural review committee. In taking the steps to allege these so-called extra elements, plaintiffs have done more than the plaintiff in Marobie-FL. Id. at 1180 (noting plaintiff's failure to plead any new allegations in its unfair competition claim). Nonetheless, plaintiffs' allegations fall short of the standard set forth in Marobie-FL. Plaintiffs' allegations derive from nothing more than "the inherent misrepresentation that accompanies the unauthorized copying and distribution of another's copyrighted work," but this is "not enough" to avoid preemption. Marobie-FL, 983 F. Supp. at 1180. Courts have refused to "conclude that an allegation of misrepresentation based solely on an alleged infringer's act of displaying, selling, or promoting the infringing work as his or her own creation, is sufficient to remove a state based claim from the preemptive reach of . . . § 301(a)." FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334, 1361-62 (N.D. Ill. 1994). "The fact that the defendants were selling the allegedly infringing works under their own names — and, hence, implicitly misrepresenting the origin of the works or causing confusion in the consuming public — did not alter the analysis . . . this fact was not regarded as so qualitatively altering the nature of the underlying infringement as to take the state based claims out of the preemptive scope of copyright." Id. at 1363. Furthermore, although unfair competition claims premised on "passing off" are not preempted by the Act, unfair competition claims premised on "reverse passing off" are preempted. Id. at 1361-64. "Reverse passing off" occurs when a person "sells plaintiff's products as its own." Waldman Pub. Corp. v. Landoll, Inc., 848 F. Supp. 498, 500-01 (S.D.N.Y. 1994), vacated in part on other grounds, 43 F.3d 775 (2d Cir. 1994). Here, defendants' conduct is a form of "reverse passing off" and is thus preempted. Therefore, I will dismiss Count II..
Motion to Strike Affidavit of Richard Reinke
In ruling on the defendants' motion to dismiss, I did not rely in any way upon the affidavit of Richard Reinke. Now that I have ruled on the motion to dismiss, the motion to strike Reinke's affidavit is moot and therefore denied.
For the aforementioned reasons, defendants' Motion to Dismiss First Amended Complaint is DENIED as to Count I but GRANTED as to Count II and defendants' Motion to Strike Affidavit of Richard Reinke is DENIED as moot.