TITAN SPORTS, INC., etc., Plaintiff, -vs- TURNER
BROADCASTING SYSTEMS, INC., et al, Defendants.
Civil No. 3:96cv1139 (PCD)
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT
981 F. Supp. 65; 1997 U.S. Dist. LEXIS 16440; 44
U.S.P.Q.2D (BNA) 1654
October 8, 1997, Decided
October 14, 1997, Filed
RULING ON MOTION FOR RECONSIDERATION
Plaintiff Titan Sports, Inc., etc. ("Plaintiff") moves for reconsideration
[**2] of the July 10, 1997 Ruling granting a dismissal of Plaintiff's claims
for tortious interference with contract. Counts VII (tortious interference with
contractual relations between Plaintiff and Scott Hall) and VIII (tortious
interference with contractual relations between Plaintiff and Kevin Nash) of
Plaintiff's complaint were dismissed as preempted by the Copyright Act. The
motion for reconsideration [doc. # 136] is GRANTED. However, for the following
reasons, the prior ruling is adhered to.
I. DISCUSSION
A. Breach of Contract vs. Tortious Interference
Plaintiff merges breach of contract claims with tortious interference with
contract claims and asserts that since "tortious interference with the contract
claims rests in part on the same elements as the breach of contract claim plus
additional elements," there is no basis upon which to hold that the former is
preempted while the latter is not when the claims arise out of the same set of
facts. Plaintiff's Memorandum of Law in Support of Motion for Reconsideration (
"Memo. Supp."), p. 5. The July 10, 1997 Ruling did not address preemption of a
breach of contract claim because Plaintiff did not assert a breach [**3] of
contract claim in its complaint. Nevertheless, this argument is foreclosed by
Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 201 (2d Cir.
1983), rev'd on other grounds, 471 U.S. 539, 85 L. Ed. 2d 588, 105 S. Ct. 2218
(1985), in which the Second Circuit held that a tortious interference claim was
preempted by the Copyright Act. That a "promise" is an element of a tortious
interference claim, like a breach of contract claim, did not shield the
plaintiff's tortious interference cause of action from preemption. n1
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n1 Moreover, under the Harper, "qualitatively different" test, some breach of
contract claims may be preempted by the Copyright Act. Although "pre-empton
should be denied, to the extent that a breach of contract cause of action
alleges more than reproduction, adaptation, etc. simpliciter of a copyrighted
work," 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT, § 1.01[B][1][a]
(1997) (emphasis in original), if a breach of contract claim rests solely on the
defendant's reproduction etc. of the work, such claim seemingly would be
preempted.
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[*73] B. Copyrightability
Plaintiff also seems to argue that the copyrightability of the characters at
issue is relevant to the preemption analysis. Memo. Supp., p. 3. The question is
not whether the work is copyrightable, but instead, the question is whether the
work is "within the ambit of copyright protection." Harper, 723 F.2d at 200:
"'As long as a work fits within one of the general subject matter
categories of sections 102 and 103, the bill prevents the States from
protecting it even if it fails to achieve Federal statutory copyright
because it is too minimal or lacking in originality to qualify, or
because it has fallen into the public domain.'"
National Basketball Ass'n. v. Motorola, Inc., 105 F.3d 841, 849 (2d Cir. 1997)
(citing H.R. No. 94-1476 at 131 reprinted in 1976 U.S.C.C.A.N. at 5747 and
Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n., 805 F.2d 663,
676 (7th Cir. 1986), cert. denied, 480 U.S. 941, 94 L. Ed. 2d 782, 107 S. Ct.
1593 (1987)). n2
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n2 In its reply brief Plaintiff apparently asserts that it is not challenging
the subject matter prong of the preemption analysis. In its motion for
reconsideration, however, Plaintiff made this argument in defense of its claim.
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C. Equivalent to Exclusive Rights Protected by Copyright
Plaintiff does propound, on reconsideration, a strong argument that its
tortious interference claim is not preempted because the act which constitutes
the alleged copyright infringement is not the act that constitutes the tortious
interference. Plaintiff contends that the distinction is whether "the
unauthorized publication alone of a work protected by the Copyright Act was
asserted to be the intentional interference." Memo. Supp., p. 8 (emphasis in
original). The Second Circuit has not explicitly addressed this issue.
Although a tortious interference claim requires elements not present in a
copyright action, an "extra element" does not protect a state claim from
preemption unless that extra element establishes "qualitatively different
conduct on the part of the infringing party. . . ." Id. at 201 (emphasis added).
Only "to the extent that contract interference emerges from activity other than
unauthorized reproduction, distribution, performances, etc, then the elements
are distinct and pre-emption should not lie." NIMMER § 1.01[B][1][a] n. 73.1
(emphasis added) (citing General Mills, [**6] Inc. v. Filmtel Int'l Corp.,
178 A.D.2d 296, 577 N.Y.S.2d 384 (N.Y.A.D. 1 Dept., 1991)).
In Harper, the Second Circuit held that the extra elements of awareness and
intentional interference did not establish the requisite "qualitatively
different conduct . . ." to save the intentional interference claim from
preemption. Harper, 723 F.2d at 201. In Harper, it was the act of publication of
the work that the plaintiff alleged caused the interference. Here, Plaintiff
contends that there was additional conduct -- "the act of inducing, encouraging
or forcing Hall and Nash to breach an express promise" which constitutes the
interference. Memo. Supp., p. 10. n3 That distinction does not save Plaintiff's
claim from preemption under the current law.
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n3 These allegations do not appear in the complaint.
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General Mills, 178 A.D.2d 296, 577 N.Y.S.2d 384, illustrates the distinction
in the type of conduct that may protect a tortious interference claim from
preemption. In that case, the plaintiff and the [**7] defendant entered into a
contract conveying to the plaintiff rights in Defendant's copyright. Thereafter,
the plaintiff began negotiating with a third party to exhibit the work. The
defendant threatened both the plaintiff and the third party with legal action if
they went through with the deal. The plaintiff sued the defendant for tortious
interference with contract. The state court held that the claim was not
preempted as it did not arise out of rights granted under the Copyright Act. The
defendant's wrongful conduct that induced the breach in no way involved a
violation of the Copyright Act. No unauthorized reproduction, [*74]
publication, etc., was alleged -- it was purely a matter of contract law, which
only tangentially involved copyrights.
Here, Plaintiff's tortious interference claim emerges from the unauthorized
reproduction, distribution, performance, etc., of Plaintiff's copyrighted work.
Plaintiff alleges that its contracts with Hall and Nash "were intended to
reserve to Titan the exclusive ownership of, and right to portray, the character
RAZOR RAMON in perpetuity" and "to reserve to Titan, in perpetuity, the
exclusive ownership of, and right to portray, the character Diesel." [**8]
Amended Complaint PP 24, 38. The right that Plaintiff's contracts with Hall and
Nash seeks to protect is Plaintiff's exclusive ownership right in its
copyrighted material -- precisely what the Copyright Act seeks to protect.
Plaintiff claims that Defendants tortiously interfered with Plaintiff's
contractual relationships by causing Hall and Nash to portray the copyrighted
characters for Defendants; Plaintiff is suing Defendants for copyright
infringement for those acts. Plaintiff alleges the breach of the contracts
occurred when Defendants infringed Plaintiff's copyrights in the characters
Razor Ramon and Diesel. The inducement allegedly giving rise to the tortious
interference claim is the inducement by Defendants to Hall and Nash to portray
Razor Ramon and Diesel, the same inducement alleged to constitute the copyright
violation.
However Plaintiff attempts to frame its tortious interference claim,
Plaintiff's claim alleges a violation of Plaintiff's rights that are the
equivalent to the exclusive rights within the general scope of copyright. The
"additional conduct" alleged by Plaintiff is not sufficient to remove its claim
from the preemption arena. n4
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n4 Plaintiff argues at length in its motion for reconsideration that footnote 3
of the July 10, 1997 Ruling mischaracterized dicta in Architectronics, Inc. v.
Control Sys., Inc., 935 F. Supp. 425 (S.D.N.Y. 1996). Plaintiff is correct that
the quoted language from Architectronics, related to copyright claims, not
tortious interference claims. That conclusion, however, has no impact on the
resolution of Plaintiff's tortious interference claim. Under Second Circuit
authority Plaintiff's claim is preempted.
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[**9]
II. CONCLUSION
For the foregoing reasons, Plaintiff's motion for reconsideration [doc. #
136] is GRANTED. However, the prior ruling is adhered to.
SO ORDERED
Dated at New Haven, Connecticut, October 8, 1997.
Peter C. Dorsey
Chief United States District Judge