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Copyright Infringement Preemption-Revisited by Joel L. Hecker As you know, the Copyright Act is a Federal statute which preempts state law claims that fall under its provisions. In other words, one cannot sue for a claim under a different theory if it in fact constitutes simply a claim for copyright infringement. A recent case had an occasion to revisit this principle. The case, Coles v. Wu-Tang Productions, Inc., brought in the Supreme Court of the State of New York, New York County, involved a songwriter who sued for a share of revenue generated by distribution of his music. The complaint alleged causes of action for breach of contract, unjust enrichment (defendant obtaining a benefit without proper compensation being made to plaintiff), breach of fiduciary duty, and failure to provide an accounting. The defenses raised included that the claims were preempted by the Copyright Act. The Court, on a motion to dismiss, permitted all the claims to proceed except for unjust enrichment, which was found to be preempted. The Court explained that since unjust enrichment claims are not qualitatively different from a copyright infringement claim, unjust enrichment cannot stand separate and apart from infringement. UNJUST ENRICHMENT CLAIMS The Court further explained that a state law claim is allowable if it includes any extra elements that make it quantitatively different from a copyright infringement action. Unjust enrichment claims have consistently been held not to have any of these extra elements. Accordingly, those claims were dismissed by the Court. USE WITHOUT PAYMENT 
Although this case involved music and not photography, the principle of law is
the same and affects photographers in the same way. Breach of contract claims
can be brought along with copyright infringement claims arising out of the same
facts and circumstances, where there are additional elements. One example would
be where a fee for an assignment was not paid, but the infringement claim was
for uses beyond the scope of the license granted. This is permitted since the
initial fee would not be part of the infringement claim and would therefore constitute
a separate and distinct element. On the other hand, the contract claim would be
preempted if the infringement was for use of the image without payment. Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com. |