Facts
- George L. Garrido, an advertising professional, developed and presented to Burger King a proposed advertising campaign using written and visual materials built around the concept “Burger King Town.”
- No contract or formal relationship resulted from the presentation, and Burger King did not respond with an agreement.
- About a year later, Burger King launched an advertising campaign titled “Burger King Town.”
- Garrido and his advertising firm sued Burger King and an employee, alleging state-law claims characterized as misrepresentation and misappropriation (with related theories such as unjust enrichment and breach of confidence) based on Burger King’s alleged use of the submitted concept and materials.
- The trial court entered summary final judgment for defendants for lack of subject-matter jurisdiction, reasoning the claims were preempted by the federal Copyright Act.
Issues
- Whether the plaintiffs’ state-law claims for misrepresentation, misappropriation, and related theories based on use of submitted advertising ideas and materials were preempted by the Copyright Act, depriving the state court of subject-matter jurisdiction.
Decision
- The appellate court reversed the summary final judgment and remanded.
- The court held the state-law claims were not preempted because they asserted rights qualitatively different from copyright infringement.
- Because the claims were not preempted, the trial court had subject-matter jurisdiction to adjudicate them.
Legal Principles
- A state-law claim is preempted by the Copyright Act when (1) the work falls within the subject matter of copyright and (2) the state-law right asserted is equivalent to the exclusive rights protected by 17 U.S.C. § 106.
- A state-law claim is not preempted if it requires proof of an “extra element” beyond copying that makes the claim qualitatively different from a copyright infringement claim.
- Allegations such as misrepresentation, inducement, reliance, breach of trust, or misuse of confidentially submitted ideas can constitute the required extra element, taking the claim outside copyright preemption.
Conclusion
The court held that misrepresentation- and idea-submission-based misappropriation claims alleging wrongful procurement and use of advertising concepts include extra elements beyond copying, are not preempted by federal copyright law, and therefore may proceed in state court.