KITCHEN AND BATH CONCEPTS OF PITTSBURGH, LLC v. EDDY HOMES, INC.
Filing
30
MEMORANDUM OPINION indicating that, for reasons more fully stated within, the Court grants Defendant Eddy Homes, Inc.'s Motion to Dismiss Plaintiff's First Amended Complaint Pursuant to Federal Rule of Civil Procedure 12(b)(6) 9 . Plaintiff's claim for copyright infringement is dismissed, with prejudice, and Plaintiff's claim for unfair competition is dismissed, without prejudice. An appropriate Order follows. Signed by Judge Nora Barry Fischer on 12/22/16. (jg)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
KITCHEN AND BATH CONCEPTS OF
PITTSBURGH, LLC,
Plaintiff,
v.
EDDY HOMES, INC.,
Defendant.
)
)
)
)
)
)
)
)
)
)
Civil Action No. 16-589
Hon. Nora Barry Fischer
MEMORANDUM OPINION
I.
Introduction
Pending before the Court in this matter is a Motion to Dismiss Plaintiff’s First Amended
Complaint Pursuant to Federal Rule of Civil Procedure 12(b)(6) filed by Defendant Eddy
Homes, Inc. (Docket No. 9). Having considered Plaintiff’s First Amended Complaint, (Docket
No. 6); Defendant’s motion to dismiss and supporting briefing, (Docket Nos. 9, 10); Plaintiff’s
response in opposition, (Docket No. 13); Defendant’s reply, (Docket No. 15); the parties’
supplemental briefing, (Docket Nos. 17, 18); and oral argument presented by the parties on
October 28, 2016, (Docket No. 20),1 Defendant Eddy Homes, Inc.’s motion to dismiss is
GRANTED. Plaintiff’s claim for copyright infringement will be dismissed with prejudice, and
Plaintiff’s claim for unfair competition will be dismissed without prejudice. However, the Court
will decline to exercise its supplemental jurisdiction over Plaintiff’s claim for unfair competition.
1
The parties did not request a transcript of the oral argument. (Id.).
1
II.
Background
This copyright infringement case arises out of Defendant’s promotional activities in
electronic and print media. The following facts are alleged in the First Amended Complaint,
which the Court will accept as true for the sole purpose of deciding the pending motion.
Plaintiff operates a kitchen and bath design business, and Defendant is a residential home
builder. (Docket No. 6 at ¶¶ 1-2). In April 2013, Mr. and Mrs. Sterling (“the Sterlings”) hired
Plaintiff and Defendant to construct their home in McMurray, Pennsylvania. (Id. at ¶¶ 3-4).
Defendant constructed the exterior and interior walls, and installed the plumbing and electrical
systems. (Id. at ¶ 3). After Defendant completed the exterior construction, Plaintiff designed
and installed, without any assistance from Defendant, all interior spaces of the home. (Id. at ¶¶
4-5). The interior spaces included the master bathroom, the basement bathroom, the basement
bar, the basement fireplace, the powder room, the laundry room, the bedroom closets, the
kitchen, and the mudroom. (Id. at ¶ 4). Plaintiff is the owner of the copyright in the design of
the interior of the Sterlings’ home. (Id. at ¶ 6).
In October 2015, photographs of the interior of the Sterlings’ home, which were
published in the Kitchen and Bath Design News periodical, credited Defendant and its design
coordinator, Cristinia Palamides, for the work.
(Id. at ¶ 7).
Plaintiff also discovered the
photographs on Defendant’s website and on several social media websites. (Id. at ¶ 8). In
January 2016, the photographs were published in Whirl Magazine. (Id. at ¶ 10). Plaintiff was
not given design credit on the websites or in the periodicals in which the photographs were
published. (Id. at ¶ 9-10).
Plaintiff registered a copyright for the design of the interior of the Sterlings’ home on
March 2, 2016. (Id. at ¶ 11). After the photographs were published in the March/April 2016
2
edition of Housetrends Magazine, Defendant received a Builders Association of Metropolitan
Pittsburgh Award. (Id. at ¶ 12). Defendant has refused to remove the photographs from its
website or, in the alternative, to credit Plaintiff for the design and construction of the interior
designs depicted. (Id. at ¶ 13).
Plaintiff filed this action on May 11, 2016. (Docket No 1). In its First Amended
Complaint, filed on June 22, 2016, Plaintiff asserts claims against Defendant for copyright
infringement and for unfair competition.
(Docket No. 6 at ¶¶ 17-43).
On July 1, 2016,
Defendant filed a motion to dismiss and supporting briefing. (Docket Nos. 9, 10). After Plaintiff
filed a response, (Docket No. 13), Defendant filed a reply, (Docket No. 15). Pursuant to the
Court’s October 14, 2016 Order, the parties filed supplemental briefs to address the impact of
Landrau v. Solis-Betancourt, 554 F. Supp. 2d 102 (D.P.R. 2007). (Docket Nos. 16, 17, 18). The
parties argued their positions at a hearing held on October 28, 2016. (Docket No. 20). On
November 14, 2016, the Court stayed this matter pending the disposition of a settlement
conference before Magistrate Judge Lisa Pupo Lenihan. (Docket No. 24). After the parties were
unable to resolve the case, the Court lifted the stay on December 15, 2016. (Docket Nos. 28, 29).
This matter is now ripe for disposition.
III.
Legal Standard
When reviewing a motion to dismiss pursuant to Federal Rule of Civil Procedure
12(b)(6), the court must “‘accept all factual allegations as true, construe the complaint in the
light most favorable to the plaintiff, and determine whether, under any reasonable reading of the
complaint, the plaintiff may be entitled to relief.’” Eid v. Thompson, 740 F.3d 118, 122 (3d Cir.
2014) (quoting Phillips v. County of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008)). To survive a
3
Rule 12(b)(6) challenge, the plaintiff’s “‘[f]actual allegations must be enough to raise a right to
relief above the speculative level.’” Id. (quoting Twombly, 550 U.S. at 555 (2007). “Thus, ‘only
a complaint that states a plausible claim for relief survives a motion to dismiss.’” Id. (quoting
Iqbal, 556 U.S. at 679).
Although the Court must accept the allegations in the complaint as true, “‘[it is] not
compelled to accept unsupported conclusions and unwarranted inferences, or a legal conclusion
couched as a factual allegation.’” Morrow v. Balaski, 719 F.3d 160, 165 (3d Cir. 2013) (quoting
Baraka v. McGreevey, 481 F.3d 187, 195 (3d Cir. 2007)). “Threadbare recitals of the elements
of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S.
at 678 (citing Twombly, 550 U.S. at 555). Instead, the plaintiff must plead facts which permit the
court to make a reasonable inference that the defendant is liable. Twombly, 550 U.S. at 556-57;
Iqbal, 556 U.S. at 678.
Consistent with these principles, the Third Circuit Court of Appeals has prescribed a
three-step analysis for purposes of determining whether a claim is plausible. First, the court
should “outline the elements a plaintiff must plead to a state a claim for relief.” Bistrian v. Levi,
696 F.3d 352, 365 (3d Cir. 2012). Second, the court should “peel away” legal conclusions that
are not entitled to the assumption of truth. Id.; see also Iqbal, 556 U.S. at 679 (“While legal
conclusions can provide the framework of a complaint, they must be supported by factual
allegations.”). Third, the court should assume the veracity of all well-pled factual allegations
and then “‘determine whether they plausibly give rise to an entitlement to relief.’” Bistrian, 696
F.3d at 365 (quoting Iqbal, 556 U.S. at 679). This third step of the analysis is “‘a contextspecific task that requires the reviewing court to draw on its judicial experience and common
sense.’” Id. (quoting Iqbal, 556 U.S. at 679).
4
IV.
Discussion
In its motion to dismiss, Defendant seeks the dismissal of Plaintiff’s claims for copyright
infringement and for unfair competition. (Docket No. 10 at 3-8). The Court will separately
address Plaintiff’s claims.
a. Plaintiff’s Claim for Copyright Infringement
Defendant argues that the copyright at issue in this matter is an “architectural works”
copyright. (Id. at 3). Citing 17 U.S.C. § 120, Defendant contends that Plaintiff’s copyright
infringement claim must be dismissed because it is solely based upon another party’s publication
and dissemination of photographs of an architectural work. (Id.). Defendant maintains that
accepting Plaintiff’s theory of copyright infringement would prevent builders from marketing
their work product and would result in the potential liability of real estate professionals who
publish exterior and interior photographs of residences that are listed on the market. (Id. at 4).
In response, Plaintiff argues that 17 U.S.C. § 120 is inapplicable because the Sterlings’
home is located on private property in a residential neighborhood, which is not a public place.
(Docket No. 13 at 3-4).
Emphasizing that Defendant photographed and disseminated its
intellectual property, and took credit for the work, Plaintiff contends that it has stated a claim for
copyright infringement. (Id. at 5). In its reply, Defendant counters that 17 U.S.C. § 120 applies
because the Sterlings’ home is in a public place. (Docket No. 15 at 2). In support of its
argument, Defendant asserts that “[i]f residential homes on public streets are not exempted from
the copyright statute, then Google Street View would constitute copyright infringement of every
single house in the county.” (Id.). Defendant further argues that 17 U.S.C. § 120 does not apply
5
only to the exterior of architectural works because such a reading of the statute would prohibit
the dissemination of photographs depicting the exterior of buildings. (Id. at 3).
Under the Copyright Act, an infringer is “[a]nyone who violates any of the exclusive
rights of the copyright owner as provided by sections 106 through 122.” 17 U.S.C. § 501(a). In
pertinent part, a copyright owner has “exclusive rights” to do and to authorize any of the
following: “(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare
derivative works based upon the copyrighted work; [and] (3) to distribute copies or phonorecords
of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease,
or lending.”
Id. § 106(1)-(3).
When a copyright infringement claim involves a pictorial
representation of an architectural work, the Copyright Act provides the following:
§ 120. Scope of exclusive rights in architectural works
(a) Pictorial representations permitted. The copyright in an architectural work
that has been constructed does not include the right to prevent the making,
distributing, or public display of pictures, paintings, photographs, or other
pictorial representations of the work, if the building in which the work is
embodied is located in or ordinarily visible from a public place.
Id. § 120(a). The term “architectural work” is defined as “the design of a building as embodied
in any tangible medium of expression, including a building, architectural plans, or drawings.
The work includes the overall form as well as the arrangement and composition of spaces and
elements in the design, but does not include individual standard features.” Id. § 101. The
applicable regulation defines “buildings” as “humanly habitable structures that are intended to be
both permanent and stationary, such as houses and office buildings, and other permanent and
stationary structures designed for human occupancy, including but not limited to churches,
museums, gazebos, and garden pavilions.” 37 C.F.R. § 202.11(b)(2).
6
Initially, the Court finds that the Sterlings’ home is a “building” under 17 U.S.C. § 120(a)
because it is a “humanly habitable structure[ ] . . . such as [a] house[ ]” under 37 C.F.R. §
202.11(b)(2). As discussed above, Plaintiff disputes Defendant’s assertion that the Sterlings’
home is located in a public place. While the Copyright Act does not define “public place,” wellsettled law provides that residential homes are located in a public place. As Defendant has
pointed out, one such decision arises out of this Court’s jurisdiction. In Morgan v. Hawthorne
Homes, Inc., No. 2:04-CV-1809, 2009 U.S. Dist. LEXIS 31456 (W.D. Pa. Apr. 14, 2009), the
plaintiff asserted a claim for copyright infringement against the defendants after they copied his
work on their website. Id. at *7-9, 11. The defendants argued that the plaintiff’s claim was
meritless because the buildings that were depicted on the website were “houses [that] are
ordinarily visible from a public place.” Id. at *33. The plaintiff admitted that the houses were
visible from a public place but argued that his drawings were not architectural works. Id. The
court concluded that 17 U.S.C. § 120(a) applied and dismissed the plaintiff’s claim. Id. at *34.
In an attempt to distinguish Morgan, Plaintiff argues that the decision is inapplicable
because the designs at issue were “technical drawings” and “works for hire” that depicted the
home’s exterior, which was visible from a public place. (Docket No. 13 at 4). Plaintiff’s
argument, however, is unpersuasive because the plain language of 17 U.S.C. § 120 includes
“photographs,” which are at issue here, as “[p]ictorial representations” that are permitted. Id. §
120(a). The Court must also reject Plaintiff’s argument that 17 U.S.C. § 120 applies only to the
exterior of a building because 17 U.S.C. § 120 provides that it applies to “the building in which
the work is embodied.” Id. (emphasis added). The plain language of “embodied” includes
interior elements within the building. Moreover, the definition of “architectural work” as “the
overall form as well as the arrangement and composition of spaces and elements in the design”
7
plainly includes the interior spaces — the master bathroom, the basement bathroom, the
basement bar, the basement fireplace, the powder room, the laundry room, the bedroom closets,
the kitchen, and the mudroom — at issue here. Indeed, courts applying the plain language of 17
U.S.C. § 120 have concluded that interior elements of a house constitute “architectural works.”
See, e.g., Nason Homes v. Billy’s Constr., Inc., No. 3:14-CV-566, 2015 U.S. Dist. LEXIS
150467, at *10-11 (M.D. Tenn. Nov. 5, 2015) (concluding that the “distinctive arrangement of
bedrooms, interior walls, bathrooms, windows, and doors” constituted “architectural work”);
Design Basics, L.L.C. v. DeShano Cos., Inc., No. 10-CV-14419, 2012 U.S. Dist. LEXIS 135387,
at *17-18 (E.D. Mich. Sept. 21, 2012) (finding that the “arrangement of interior walls, bedrooms,
kitchens, bathrooms, windows, doors, laundry-rooms, porches, stairways, and corridors:
constituted “architectural work” because it “produces a compilation of component parts that is
original and unique”); Landrau, 554 F. Supp. 2d at 107, 113 (in a case involving an article that
included seven interior photographs emphasizing the design of a house, the court dismissed the
plaintiffs’ copyright infringement claims under 17 U.S.C. § 120).
In applying Morgan and the plain language of 17 U.S.C. § 120, courts within other
jurisdictions have concluded that pictorial representations of constructed work that is located
within a building visible from a public place do not constitute copyright infringement. In
Sorenson v. Wolfson, 96 F. Supp. 3d 347 (S.D.N.Y. 2015), the plaintiff executed purchase
agreements to acquire three unfinished units in a condominium building and provided the
floorplan for Unit 7A to the sponsor of the residential condominium development. Id. at 352.
After his fell through, the plaintiff discovered a pictorial depiction of the plan for Unit 7A on a
website created by the building’s sales agent. Id. at 352, 357. The court found that Unit 7A was
“located in a building that was visible from a public place (the street).” Id. at 366. After
8
explaining that “creating a ‘pictorial representation’ of a constructed work that is located in a
building visible from a public place is not an act of infringement,” the court held that posting the
plans on the website did not constitute copyright infringement. Id. at 365-66.
Plaintiff’s attempts to distinguish Sorenson are similarly unavailing, as Plaintiff merely
argues that it did not give Defendant permission to place the photographs on its website.
(Docket No. 13 at 4-5). Indeed, while Plaintiff repeatedly makes the conclusory statement that
the Sterlings’ home was not in a public place, it cites to no authority in support of its position.
(See id. at 2-5). Significantly, several decisions, in addition to Morgan and Sorenson, do not
support Plaintiff’s position. See, e.g., Builders Mut. Ins. Co. v. Donald A. Gardner Architects,
Inc., 856 F. Supp. 2d 773, 776 n.1, 777 (D.S.C. 2012) (noting that “the house in the photograph
was clearly visible from a public place and that the visibility is not at issue” and holding that “the
§ 120 exemption protects photographs of copyrighted architectural works, such as the website
photograph in this case, from being actionable regardless of whether the copyright holder has a
copyright in the structure itself or in the technical drawings”); Landrau, 554 F. Supp. 2d at 107,
113 (D.P.R. 2007) (in a case involving an article that included seven interior photographs
emphasizing the design of a house, the court rejected “[the plaintiffs’] only argument . . . that the
project is not normally visible from a public area and that the pictures were not taken from a
public area” and dismissed the plaintiffs’ copyright infringement claims). Because the Court has
not located any authority holding that a residential home is not in a public place, it must reject
Plaintiff’s conclusory argument.
In a final effort to avoid the dismissal of its claim, Plaintiff argues that the Court must
consider the legislative history of 17 U.S.C. § 120. (Docket No. 13 at 3-4). As discussed above,
however, the statute’s plain language is clear and unambiguous. It is well settled that “[w]here
9
the statutory language is unambiguous, the court should not consider statutory purpose or
legislative history.” In re Phila. Newspapers, LLC, 599 F.3d 298, 304 (3d Cir. 2010). See also
Byrd v. Shannon, 715 F.3d 117 (3d Cir. 2013) (“Statutory purpose and legislative history may be
referenced only if the statutory language is without a plain meaning, i.e., if the statutory language
is ambiguous.”). Accordingly, the Court must reject Plaintiff’s argument and grant Defendant’s
motion to dismiss Plaintiff’s claim for copyright infringement.
b. Plaintiff’s Claim for Unfair Competition
Defendant argues that Plaintiff’s claim for unfair competition is barred by federal
preemption. (Docket No. 10 at 6-8). Specifically, Defendant contends that because Plaintiff’s
claim is based upon a “reverse passing off” theory, rather than a traditional “passing off” claim,
it is preempted by the Copyright Act. (Id. at 6-7). Defendant requests that Plaintiff’s claim be
dismissed with prejudice because it does not incorporate elements that are qualitatively different
from those required to prove a claim for copyright infringement. (Id. at 8).
In response, Plaintiff argues that its claim is not based upon a “reverse passing off”
theory because Defendant has not sold any merchandise resembling the depictions of the
Sterlings’ home. (Docket No. 13 at 6). Noting that Defendant has created confusion by its
affirmative claim of attribution and design, Plaintiff asserts that its claim is not preempted by the
Copyright Act because it contains additional elements that are not equivalent to the elements of
its claim for copyright infringement. (Id.). In the alternative, Plaintiff maintains that preemption
does not “automatically” apply to claims based upon a “reverse passing off” theory because such
a determination is premature.
(Id. at 6-7).
In reply, Defendant argues that there is no
requirement that a copyrighted expression must constitute merchandise before a claim is
10
considered a “reverse passing off” claim. (Docket No. 15 at 4). Defendant further contends that
Plaintiff’s allegation that Defendant took credit for the design is insufficient to differentiate the
unfair competition claim from the copyright infringement claim. (Id. at 4-5).
The Copyright Act “exclusively” governs “all legal or equitable rights that are equivalent
to any of the exclusive rights within the general scope of copyright.” 17 U.S.C. § 301(a).
Therefore, “no person is entitled to any such right or equivalent right in any such work under the
common law or statutes of any State.” Id. The Copyright Act further provides, however, that the
preemption provision does not apply if the “subject matter . . . does not come within the subject
matter of copyright as specified by sections 102 and 103.” Id. § 301(b)(1). Thus, “if a state
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.” Dun & Bradstreet Software Servs. v. Grace Consulting, Inc., 307 F.3d 197, 217
(3d Cir. 2002) (internal quotations omitted).
In its Amended Complaint, Plaintiff alleges that Defendant published depictions of
Plaintiff’s work product on its website and in the Kitchen and Bath Design News periodical but
failed to credit Plaintiff. (Docket No. 6 at ¶¶ 37-39). Plaintiff further avers that Defendant “goes
so far as to affirmatively take credit for the design and construction of the interiors depicted.”
(Id. at ¶¶ 40). Plaintiff states that its claim is not preempted by the Copyright Act because “[t]he
element of ‘passing off’ your rival’s work is not a required element of copyright infringement.”
(Id. at ¶¶ 36).
“Passing off (or palming off, as it is sometimes called) occurs when a producer
misrepresents his own goods or services as someone else’s.” Dastar Corp. v. Twentieth Century
11
Fox Film Corp., 539 U.S. 23, 27 n.1 (2003). Stated differently, “‘A’ sells ‘A’s’ product under
‘B’s’ name.” Daley v. Firetree, Ltd., No. 4:04-CV-2213, 2006 U.S. Dist. LEXIS 4061, at *10
(M.D. Pa. Jan. 19, 2006); see also Fun-Damental Too, Ltd. v. Universal Music Grp., Inc., No.
97-CV-1595, 1997 U.S. Dist. LEXIS 9597, at *13, 15 (E.D. Pa. July 8, 1997) (explaining that
“passing off” is “the selling of a good of one’s own creation under the name or trademark of
another” and occurs when “the wrongdoer sells its products as the plaintiff’s”) (internal
quotations omitted). “A state law unfair competition claim alleging the tort of ‘passing off’ is
not preempted, because it does ‘not entail the assertion of rights equivalent to those protected by
federal copyright law.’”
Daley, 2006 U.S. Dist. LEXIS 4061, at *10 (quoting Lone Wolf
McQuade Assocs. v. CBS Inc., 961 F. Supp. 587, 599 (S.D.N.Y. 1997)); see also Fun-Damental
Too, Ltd., 1997 U.S. Dist. LEXIS 9597, at *15 (“A state law unfair competition claim that
alleges the tort of ‘passing off’ is not preempted because such a claim alleges an extra element of
deception or misrepresentation that is not necessary for a cause of action for copyright.”).
On the contrary, “reverse passing off” occurs when “[t]he producer misrepresents
someone else’s goods or services as his own.” Dastar Corp., 539 U.S. at 27 n.1. In other words,
“‘A’ copies ‘B’s’ work without permission and claims it as ‘A’s’ own.” Daley, 2006 U.S. Dist.
LEXIS 4061, at *10; see also Fun-Damental Too, Ltd., 1997 U.S. Dist. LEXIS 9597, at *15, 17
(E.D. Pa. July 8, 1997) (explaining that “reverse passing off” occurs when “the defendant copies
the plaintiff’s work and passes it off as defendant’s”) (internal quotations omitted). “Courts have
held that section 301 preempts state law claims for ‘reverse passing off’ that are based on the
alleged unauthorized copying and use of another’s copyrighted expression.” Fun-Damental Too,
Ltd., 1997 U.S. Dist. LEXIS 9597, at *10.
12
In this case, Plaintiff’s claim for unfair competition is best characterized as a “reverse
passing off” claim. Indeed, Plaintiff even alleges that Defendant has “[gone] so far as to
affirmatively take credit for the design and construction of the interiors depicted,” (Docket No. 6
¶ 40), which is akin to Defendant copying Plaintiff’s work and misrepresenting or claiming the
work as its own, Dastar Corp., 539 U.S. at 27 n.1; Daley, 2006 U.S. Dist. LEXIS 4061, at *10.
Plaintiff’s argument that its claim does not constitute a “reverse passing off” claim because
Defendant has not sold any “merchandise” is unconvincing, and Plaintiff has failed to cite to any
authority supporting its position. (Docket No. 13 at 5-6). Such conclusory arguments do not
transform Plaintiff’s claim for unfair competition as one that is “qualitatively different” from its
claim for copyright infringement. Rather, both of Plaintiff’s claims rest upon allegations that
Defendant used and disseminated Plaintiff’s work without crediting Plaintiff.
Because Plaintiff’s claim for unfair competition does not require “an extra element,” Dun
& Bradstreet Software Servs., 307 F.3d at 217, it is “equivalent” to Plaintiff’s claim for
copyright infringement and is, therefore, preempted by the Copyright Act. See, e.g., Quadratec,
Inc. v. Turn 5, Inc., No. 13-CV-6384, 2015 U.S. Dist. LEXIS 107071, at *31-34 (E.D. Pa. Aug.
13, 2015) (holding that the plaintiff’s unfair competition by misappropriation claim was
preempted because it was “nothing more than a claim for unauthorized copying,” which was not
“qualitatively different” from the plaintiff’s copyright infringement claims); Synygy, Inc. v. ZS
Assocs., No. 07-CV-3536, 2015 U.S. Dist. LEXIS 26006, at *115-17 (E.D. Pa. Feb. 11, 2015)
(finding that the plaintiff’s unfair competition claim, which was based upon allegations that the
defendants copied elements of the plaintiff’s report designs and passed them off as their own,
was preempted by the Copyright Act); Scranton Times, L.P. v. Wilkes-Barre Publ. Co., No. 3:08CV-2135, 2009 U.S. Dist. LEXIS 87261, at *18-19 (M.D. Pa. Sept. 23, 2009) (concluding that
13
an unfair competition claim, which was based upon allegations that the defendant copied
obituaries contained in the plaintiff’s publications and distributed them as their own work, was
preempted); Daley, 2006 U.S. Dist. LEXIS 4061, at *12-15 (determining that the plaintiff’s
unfair competition claim, which was based upon the illegal copying and unauthorized use of his
works, was a “reverse passing off” claim that was preempted); Schiffer Publ’g, Ltd. v. Chronicle
Books, LLC, 350 F. Supp. 2d 613, 619-20 (E.D. Pa. 2004) (holding that the plaintiffs’ unfair
competition claim was not “qualitatively different” from its federal claim for copyright
infringement); Fun-Damental Too, Ltd., 1997 U.S. Dist. LEXIS 9597, at *18-19 (finding that an
unfair competition claim, which was based upon the unauthorized copying and use of music, was
a “reverse passing off” claim that was preempted).
As discussed above, Plaintiff argues in the alternative that its claim for unfair competition
should not be dismissed because, at this stage of the proceedings, it is “premature” to determine
whether the claim is preempted. (Docket No. 13 at 6-7). In support of its argument, Plaintiff
cites to one decision arising out of the Fourth Circuit. (Id. (citing Universal Furniture Int’l, Inc.
v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010)). The Court rejects as meritless
Plaintiff’s argument because the court in Universal Furniture Int’l, Inc. did not address the issue
of preemption. Moreover, well-settled law within the Third Circuit provides that a court may
dismiss a claim for unfair competition claim that is preempted by federal law at this stage of the
proceedings. See, e.g., Quadratec, Inc., 2015 U.S. Dist. LEXIS 107071, at *31-34 (granting a
motion to dismiss an unfair competition by misappropriation claim because it was preempted);
Scranton Times, L.P., 2009 U.S. Dist. LEXIS 87261, at *18-19 (M.D. Pa. Sept. 23, 2009)
(granting a motion for judgment on the pleadings because the plaintiff’s unfair competition claim
was preempted by the Copyright Act); Daley, 2006 U.S. Dist. LEXIS 4061, at *12-15 (same);
14
Fun-Damental Too, Ltd., 1997 U.S. Dist. LEXIS 9597, at *18-19 (granting a motion to dismiss
an unfair competition claim that was preempted by the Copyright Act). Accordingly, the Court
must reject Plaintiff’s argument and grant Defendant’s motion to dismiss Plaintiff’s claim for
unfair competition.
c. Leave to Amend
The Court’s final inquiry is whether the dismissal of Plaintiff’s First Amended Complaint
should be with prejudice or without prejudice, granting Plaintiff leave to amend her complaint
once again. Plaintiff previously exercised her right to file an amended complaint pursuant to
Federal Rule of Civil Procedure 15(a)(1)(B) but has not requested leave to amend a second time
in her responsive brief nor supplied the Court with a proposed Second Amended Complaint.
See, e.g., U.S. ex rel. Zizic v. Q2Administrators, LLC, 728 F.3d 228, 243 (3d Cir. 2013) (“[A]
‘bare request in an opposition to a motion to dismiss — without any indication of the particular
grounds on which amendment is sought . . . — does not constitute a motion within the
contemplation of Rule 15(a).’”) ((quoting Kowal v. MCI Commc’ns Corp., 16 F.3d 1271, 1280
(D.C. Cir. 1994)); McWreath v. Range Res. - Appalachia, LLC, No. 15-1371, 2016 U.S. App.
LEXIS 5755, at *5 (3d Cir. Mar. 29, 2016) (“[T]he failure to submit a draft amended complaint
‘is fatal to a request for leave to amend.’”) (quoting Zizic, 728 F.3d at 243). In any event, leave
to amend may be denied if an amendment would be futile. See Alvin v. Suzuki, 227 F.3d 107,
121 (3d Cir. 2000) (“An amendment is futile if the amended complaint would not survive a
motion to dismiss for failure to state a claim upon which relief could be granted.”); Centifanti v.
Nix, 865 F.2d 1422, 1431 (3d Cir. 1989) (“[A] district court may properly deny leave to amend
where the amendment would not withstand a motion to dismiss.”).
15
The Court concludes that amendment to Plaintiff’s claim for copyright infringement
would be futile because it is based on a legally unsupportable position that no set of facts could
overcome. Therefore, the claim will be dismissed, with prejudice. The Court declines to
exercise supplemental jurisdiction over Plaintiff’s state law claim for unfair competition. See 28
U.S.C. § 1367(c)(3) (“The district courts may decline to exercise supplemental jurisdiction over
a claim under subsection (a) if . . . (3) the district court has dismissed all claims over which it has
original jurisdiction.”). Thus, Plaintiff’s claim for unfair competition will be dismissed, without
prejudice.
V.
Conclusion
For the foregoing reasons, the Court GRANTS Defendant Eddy Homes, Inc.’s Motion to
Dismiss Plaintiff’s First Amended Complaint Pursuant to Federal Rule of Civil Procedure
12(b)(6).
Plaintiff’s claim for copyright infringement is dismissed, with prejudice, and
Plaintiff’s claim for unfair competition is dismissed, without prejudice.
An appropriate Order follows.
s/Nora Barry Fischer
Nora Barry Fischer
United States District Judge
cc/ecf: All counsel of record
16
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?