D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc.

Filing 18

ORDER denying 8 Motion to Dismiss for Failure to State a Claim. So Ordered by Judge Landya B. McCafferty.(gla)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE

D’Pergo Custom Guitars, Inc.
v.

Civil No. 17-cv-747-LM
Opinion No. 2018 DNH 089

Sweetwater Sound, Inc.
O R D E R
Plaintiff D’Pergo Custom Guitars, Inc. (“D’Pergo”) brings
suit against defendant Sweetwater Sound, Inc. (“Sweetwater”),
alleging claims for copyright infringement and violations of RSA
358-A, the New Hampshire Consumer Protection Act (“CPA”).
D’Pergo claims that Sweetwater used a copyrighted photograph of
D’Pergo’s custom guitar necks in order to promote and sell
Sweetwater products on its website.

Before the court is

Sweetwater’s motion to dismiss Counts II and III, the CPA claims
(doc. no. 8).

For the following reasons, Sweetwater’s motion is

denied.
STANDARD OF REVIEW
Under Rule 12(b)(6), the court must accept the factual
allegations in the complaint as true, construe reasonable
inferences in the plaintiff's favor, and “determine whether the
factual allegations in the plaintiff's complaint set forth a
plausible claim upon which relief may be granted.”

Foley v.

Wells Fargo Bank, N.A., 772 F.3d 63, 71 (1st Cir. 2014)
(internal quotation marks omitted).

A claim is facially

plausible “when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.”
662, 678 (2009).

Ashcroft v. Iqbal, 556 U.S.

In addition, “[e]xhibits attached to the

complaint are properly considered part of the pleading for all
purposes, including Rule 12(b)(6).”

Trans-Spec Truck Serv.,

Inc. v. Caterpillar Inc., 524 F.3d 315, 321 (1st Cir. 2008)
(internal quotation marks omitted).

BACKGROUND
The following facts are taken from D’Pergo’s complaint,
unless otherwise noted.
guitars.

D’Pergo manufactures and sells custom

In 2003, D’Pergo created a photograph showing a number

of its unique guitar necks, which it then published on its
website.
Sweetwater is a retailer that sells musical instruments,
including guitars, through its website.

D’Pergo alleges that it

recently discovered that Sweetwater had copied the photograph
and displayed it on Sweetwater’s website, specifically in an
“Electric Guitar Buying Guide.”

Doc. no. 1 at 18.

The

photograph appears in a section titled “Guitar necks explained.”
Id. at 21.

At the end of the buying guide are a number of
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guitars from various manufacturers for purchase, as well as what
appears to be a hyperlink labelled “Shop for Electric Guitars.”
Id. at 23-24.
D’Pergo brought this action in December 2017.

It raises a

claim for copyright infringement (Count I), an unfair
competition claim under the CPA (Count II), and a deceptive
business practices claim under the CPA (Count III).
In Count II, D’Pergo alleges that, by using the photograph
of D’Pergo guitar necks in the buying guide, Sweetwater passed
off the guitars it sells as D’Pergo guitars.

D’Pergo further

alleges that the use of the photograph has caused a “likelihood
of confusion as to the source, sponsorship, approval,
affiliation and association of [Sweetwater] goods with the goods
of [D’Pergo].”

Doc. no. 1 at 6.

Similarly, in Count III,

D’Pergo alleges that Sweetwater engaged in deceptive trade
practices because it used the D’Pergo photograph in a manner
that is likely to cause confusion regarding the source of
Sweetwater’s guitars and may lead consumers to believe that such
guitars are associated with D’Pergo.

Thus, reading the

complaint in the light most favorable to D’Pergo, D’Pergo
appears to allege that after seeing the photograph in
Sweetwater’s buying guide, a consumer may be led to believe that
the guitars Sweetwater has for purchase at the end of the buying

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guide and via the hyperlink are manufactured by or somehow
associated with D’Pergo.1
DISCUSSION
Sweetwater argues that D’Pergo’s CPA claims are preempted
by federal law because they are based solely on Sweetwater’s
alleged copying of D’Pergo’s photograph, which renders the CPA
claims substantively equivalent to a federal copyright claim.
D’Pergo responds that the CPA claims are sufficiently
distinguishable from a copyright claim to survive preemption.
The court agrees with D’Pergo.
This dispute is governed by 17 U.S.C. § 301(a), which
“precludes enforcement of any state cause of action which is
equivalent in substance to a federal copyright infringement
claim.”

Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d

1147, 1164 (1st Cir. 1994), abrogated on other grounds by Reed
Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); see also 17
U.S.C. § 301(b)(3) (stating that state causes of action are not
preempted to the extent that they involve the violation of
rights that are not equivalent to rights under federal copyright
law).

“Courts have developed a functional test to assess the

In its motion, Sweetwater only argues that the CPA claims
are preempted by federal law; it does not otherwise challenge
the viability of this theory. The court therefore limits its
analysis accordingly.
1

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question of equivalence.”

Data Gen. Corp., 36 F.3d at 1164.

If

a cause of action “requires an extra element, beyond mere
copying, preparation of derivative works, performance,
distribution or display, then the state cause of action is
qualitatively different from, and not subsumed within, a
copyright infringement claim and federal law will not preempt
the state action.”

Id. (quotation omitted).

As is relevant here, courts have held that “when unfair
competition and unfair and deceptive trade practices claims
require proof of an extra element such as likelihood of consumer
confusion, misrepresentation, or deception, the claims survive
preemption.”

Rubin v. Brooks/Cole Publ’g Co., 836 F. Supp. 909,

923 (D. Mass. 1993) (collecting cases).

Thus, an unfair

competition claim “of the ‘passing off’ variety” is not
preempted.

Beckwith Builders, Inc. v. Depietri, No. 04-CV-282-

SM, 2006 WL 2645188, at *6 (D.N.H. Sept. 15, 2006).

That is,

“[i]f A claims that B is selling B's products and representing
to the public that they are A's, that is passing off” and such a
claim is not preempted.

Id. (quotation omitted).

This is essentially what D’Pergo is alleging with respect
to its CPA claims: by using the photograph in connection with
the sale of its guitars, Sweetwater represented to the public
that the guitars it sells are somehow associated with or
connected to D’Pergo.

In order to prevail, D’Pergo will need to
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demonstrate more than that Sweetwater copied the photograph.

It

will need to prove that Sweetwater engaged in an unfair method
of competition or deceptive practice, which is defined under the
CPA to include “[p]assing off goods or services as those of
another” or “[c]ausing likelihood of confusion” as to the source
of the goods or as to the affiliation of the goods with another.
RSA 358-A:2, I-III.

As a result, there is an extra element that

makes the CPA claims qualitatively different from a federal
copyright infringement claim.

See McGuirk v. After the Stork,

Inc., No. CIV. 92-330-SD, 1994 WL 258793, at *3 (D.N.H. May 2,
1994); see also Colour & Design v. U.S. Vinyl Mfg. Corp., No.
04CIV8332MBM, 2005 WL 1337864, at *6-7 (S.D.N.Y. June 3, 2005).
Accordingly, the CPA claims are not preempted by § 301(a),
and the court will not dismiss Counts II and III on that basis.
CONCLUSION
For the foregoing reasons, Sweetwater’s motion to dismiss
(doc. no. 8) is denied.
SO ORDERED.
__________________________
Landya McCafferty
United States District Judge
May 1, 2018
cc:

Counsel of Record

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