United States District Court, W.D. North Carolina, Charlotte Division
C. Mullen, United States District Judge
MATTER is before the Court upon Defendant's
Motion to Dismiss Count II of Plaintiff's First Amended
Verified Complaint (Doc. No. 16), alleging that Defendant
violated the North Carolina Unfair and Deceptive Trade
Practices Act (“UDTPA”).
Baronius Press, Ltd., is a corporation organized and existing
under the laws of the Isle of Man, British Isles and is a
publisher of Catholic books and Bibles. Defendant, Saint
Benedict Press, LLC is also a publisher of traditional
Catholic books with its principal place of business in
Charlotte, North Carolina. Plaintiff alleges it acquired the
exclusive rights to publish the English translation of a
German book titled the Fundamentals of Catholic
Dogma (“the Work”) in 2009 and obtained
valid United States copyright registrations in 2014. (Doc.
No. 16 at ¶¶ 17-24). Prior to Plaintiff's
acquisition of publishing rights, the Work was in the public
domain and Defendant sporadically published the Work between
the years of 1974 and 2011. (Id. at ¶¶
25-27). In March 2013, Plaintiff discovered that Defendant
was advertising release of the Work under its own name.
(Id. at ¶ 36). On April 26, 2013, Plaintiff
served upon Defendant a Notice of Intent to Enforce its
exclusive publishing rights. (Id. at ¶ 29)
After receipt of the Notice, Defendant continued to advertise
sales of the Work and began publishing it on March 17, 2014.
(Id. at ¶¶ 38, 40).
civil action was filed on September 29, 2016. Plaintiff
alleges two claims, a willful violation of the United States
Copyright Act of 1976 (the “Copyright Act”), 17
U.S.C. §101 (Count I) and a violation of the North
Carolina UDTPA, N.C. Gen. Stat. §75.1 (Count II).
Defendant has filed a Motion to Dismiss Plaintiff's UDTPA
claim on the basis that it is preempted by the Copyright Act.
(Doc. No. 19).
the Copyright Act, 17 U.S.C. § 301(a),
All legal or equitable rights that are the equivalent to any
of the exclusive rights within the general scope of
copyright… are governed exclusively by this title.
Thereafter, no person is entitled to any such rights or
equivalent right in any such work under the common law or
statutes of any State.
the Copyright Act has the power to completely preempt a state
law claim. Rosciszewski v. Arete Assoc., 1 F.3d 225,
232 (4th Cir. 1993). When deciding if a state law claim is
preempted by the Copyright Act, the court determines whether:
(1) the work is “within the scope of the subject-matter
of copyright…” and (2) whether “the rights
granted under state law are equivalent to any exclusive
rights within the scope of federal
copyright….”Id. at 229 (internal
citations omitted). In this case, the first prong is clearly
met considering the case arises out of a copyright
infringement dispute over a literary work (i.e., “a
work of authorship fixed in a tangible medium of
expression”). U.S.C. 17 § 102(a). Thus,
Defendant's Motion to Dismiss turns on whether the rights
protected by Plaintiff's UDTPA claim are equivalent to
any of the exclusive rights protected by the Copyright Act.
See Bell v. E. Davis Int'l, Inc., 197 F.Supp.2d
449, 463 (W.D. N.C. 2002).
the Copyright Act, an owner of a copyright has the exclusive
right to (1) reproduce the work, (2) prepare derivative works
based on the work, (3) distribute copies of the work, (4)
perform the work publicly, (5) display the work publicly and
(6) in the case of sound recordings, perform the work
publicly by means of digital audio transmission. Rutledge
v. High Point Reg'l Health Sys., 558 F.Supp.2d 611,
617 (M.D. N.C. 2008). These specified protected rights define
the scope of the second prong of the pre-emption test. In
contrast, the UDTPA's protected rights are less clearly
defined, requiring only that a Plaintiff demonstrate: (1) the
defendant engaged in conduct that was unfair or deceptive;
(2) the complained of acts were in and affecting commerce;
and (3) the acts injured the plaintiff. N.C. Gen. Stat.
broad scope of the UDTPA often allows for claims that seek
protection of rights exclusively protected by the Copyright
Act. In such cases, to avoid preemption the Fourth Circuit
requires that the Plaintiff allege an “extra
element” beyond those required of a copyright
infringement claim such that the “extra element”
makes the UDTPA claim qualitatively different.
Rosciszewski, 1 F.3d at 229-30. Because the UDTPA
does not explicitly require elements beyond those required of
a copyright infringement claim, but rather is intended to
include a broad range of deceptive and unfair conduct, North
Carolina courts will often look to the facts underlying the
UDTPA claim to determine whether it is qualitatively
different. Pan-American Prods. & Holdings, LLC v. R.T.G.
Furniture Corp., 825 F.Supp.2d 664, 698 (M.D. N.C.
2011). Specifically, the UDTPA claim must be supported by
allegations that demonstrate “misconduct separate from,
and not controlled by, the Copyright Act, ” including
“misrepresentation, deception, abuse of a confidential
relationship, or palming off.” Id. at 698;
Innovative Med. Prods. v. Felmet, 472 F.Supp.2d 678,
683 (M.D. N.C. 2006).
UDTPA claim rests entirely on Defendant's alleged
copying, advertising, publishing, and selling of
Plaintiff's work, which is the crux of a copyright
infringement claim and does not sufficiently allege an
“extra element.” Old S. Home Co. v. Keystone
Realty Grp., 233 F.Supp.2d 734, 737 (M.D.N.C 2002)
(holding that allegations that defendant infringed
plaintiff's copyrights in order to unfairly compete were
insufficient to overcome preemption by the Copyright Act);
Rutledge, 558 F.2d at 620 (holding that
plaintiff's UDTPA claim was preempted because no
free-standing cause of action for misrepresentation was
asserted, and the acts upon which the UDTPA claim was
predicated are not different from those giving rise to the
Copyright Act); 1-1 Nimmer on Copyright § 1.01
Count II of Plaintiff's First Amended Verified Complaint,
Baronius does not allege any additional facts to support its
UDTPA claim but instead merely references the allegations
contained in its claim for copyright infringement. (Doc. No.
16 at ¶¶ 59, 61). Paragraph 61 of the First Amended
Verified Complaint states:
The actions of Defendant as described in this Complaint were
unfair in that Defendant used Plaintiff's copyrights in
order to deceptively gain something of value from Plaintiff,
and unfairly compete against Plaintiff …[b]y
participating in the unauthorized copying and selling of
Plaintiff's copyrights to unfairly and deceptively
compete with Plaintiff…[b]y participating in the
allegations alleged in the First Claim For Relief of ...