Is It Copyright Infringement, or Is It Something Else?

by Lee Gesmer on August 1, 2012

One of the thorny issues that comes up in copyright cases is whether a dispute actually falls under federal copyright law.  What the plaintiff may claim to be copyright infringement the defendant may argue is a breach of contract, or vice versa. If copyright law does control, any state law claim based on rights that are the equivalent of those protected by the Copyright Act are preempted, and must be dismissed. A common example is breach of contract: if copyright law applies, a claim for breach of contract is likely to be preempted.

The consequences of a ruling one way or the other on this issue can have strategic consequences (whether the case proceeds in federal or state court) or substantive (the standard for liability, or the measure of damages). One context in which this issue arises involves idea submission – where the plaintiff pitches an idea idea hoping to persuade the recipient to purchase the idea for commercial development.  When the defendant allegedly uses the idea to create a copyrightable work, is the claim one of copyright infringement or breach of an “implied contract”?

This was the issue in Forest Park Pictures v. Universal Television Network, Inc., decided by the Second Circuit in June.   Actor Hayden Christensen had pitched Universal on a TV show about a concierge doctor to the rich and famous.  He claimed that Universal breached an “implied contract” when it created the series Royal Pains, and then refused to compensate him.   Universal argued that the dispute should be governed by copyright law, and therefore any state law claims (such as Christensen’s claim for breach of implied contract) were preempted.  The Second Circuit disagreed with Universal (and the trial court), holding that a breach of implied contract claim concerning an idea was not preempted by copyright law, and therefore the case could proceed on the state law theory of breach of an implied contract.

One strategic consequence, in the context of this case, is that it may be more difficult for a defendant to persuade a court to dismiss an implied contract case case before trial, than a copyright case. In this regard, see my recent post, noting that the courts are receptive to a motion to dismiss a copyright claim if a comparison of the original and alleged infringing works can resolve the question of substantial similarity.  Therefore the ruling in this case likely favors the plaintiff’s ability to avoid dismissal before trial.

Forest Park Pictures v. Universal Television Network, Inc.

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