Market Masters-Legal, A Resonance Company, Inc. v. Parker Waichman Alonso LLP

Filing 96

Judge Michael A. Ponsor: MEMORANDUM AND ORDER REGARDING COUNT 1 entered. As follows: in order to assist counsel in the preparation for trial, Count I of the complaint is hereby ordered DISMISSED. The case will go forward only on theCopyright Act clai m. It is understood that this ruling eliminates any claim for liquidated damages. Defendants recent memorandum (Dkt. No. 95 ) also addresses the separate question of whether certain short phrases and other elements enjoy copyright protection. This issue may be resolved through motions in limine. These are due by February 3, 2012, with oppositions by February 10,2012. See the attached memo and order for complete details. (Lindsay, Maurice)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
MARKET MASTERS-LEGAL,
A RESONANCE COMPANY, INC.,
Plaintiff
v.
PARKER WAICHMAN ALONSO, LLP.,
Defendant

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) C.A. 10-cv-40119-MAP
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MEMORANDUM AND ORDER REGARDING COUNT I
January 25, 2012
PONSOR, U.S.D.J.
Plaintiff has brought this action in two counts, the
first for breach of contract and the second for copyright
infringement.
order

On December 16, 2011, the court issued a short

regarding

Judgment.

the

parties’

Cross-motions

for

Summary

At that time, the court denied Defendant’s Motion

for Summary Judgment regarding the contract claim, without
prejudice, “finding that it was likely that this count was
preempted by the count alleging copyright infringement[,]” but
concluding that “this issue may be addressed later.” Dkt. No.
90 at 1.
Counsel appeared on January 12, 2012 for a final pretrial
conference and pointed out to the court that the lingering
issue of the viability of the breach of contract count was
creating complications with regard to preparation for trial,

which is slated to commence on February 21, 2012. Counsel for
Plaintiff filed a memorandum regarding preemption (Dkt. No.
94), and Defendant responded with its own memorandum (Dkt. No.
95).
Having now reviewed the authorities submitted by counsel,
the court must conclude that the overwhelming weight of
authority supports dismissal, on the grounds of preemption, of
the contract claim in this case.

It is true that the First

Circuit’s decision in Santa-Rosa v. Combo Records, 471 F.3d
224 (1st Cir. 2006), left open the question of whether “a
simple breach of contract action that only seeks damages would
be preempted by the Copyright Act.” 471 F.3d 224, 226 (1st
Cir. 2006) (footnote omitted).

However, the cases cited in

the

in

First

Circuit’s

footnote

Santa-Rosa

are

clearly

distinguishable from this case, and the authorities cited in
Plaintiff’s

memorandum

strongly

support

dismissal

of

a

contract claim in these circumstances.
For the foregoing reasons, in order to assist counsel in
the preparation for trial, Count I of the complaint is hereby
ordered DISMISSED.

The case will go forward only on the

Copyright Act claim.

It is understood that this ruling

eliminates any claim for liquidated damages.
Defendant’s

recent

memorandum

(Dkt.

No.

95)

also

addresses the separate question of whether certain “short
2

phrases” and other elements enjoy copyright protection.
issue may be resolved through motions in limine.
due by February 3, 2012, with

These are

oppositions by February 10,

2012.
It is So Ordered.
/s/ Michael A. Ponsor
MICHAEL A. PONSOR
United States District Judge

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This