USDC N.D. Indiana, May 22, 2009  

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  • District court holds that claim of reverse passing off (where a wrongdoer sells another’s product as its own) is preempted by the Copyright Act, while a claim of passing off (selling a product under the name or mark of another) is not preempted by the Copyright Act  

Plaintiff and defendants worked together on creating cartoon maps of several U.S. cities including Cheyenne, Wyoming, and Telluride, Colorado. Plaintiff filed suit against defendants alleging, inter alia, copyright infringement, breach of contract, and unfair competition under the Lanham Act and state law. Plaintiff claimed that defendants signed an agreement which provided that plaintiff retained the copyright to the maps the parties created; plaintiff filed suit against defendants when it discovered defendants were selling the maps at issue.

Defendants, who claimed that the signature on the purported written agreement was a forgery and that they were the rightful copyright owners of the maps, counter-claimed for, inter alia, unfair competition under the Lanham Act and state law. Plaintiff moved to dismiss defendants’ unfair competition claims as preempted by the Copyright Act, arguing that defendants were making a claim of reverse passing off. Defendants argued that they were making a claim of passing off.

The court confirmed that a claim of passing off (selling your own product under the name or mark of another) is not preempted by the Copyright Act (because it requires the element of deception) while a claim of reverse passing off (where a wrongdoer sells another’s product as its own) is preempted by the Copyright Act, citing Patriot Homes, Inc. v. Forest River Housing, Inc., 489 F.Supp.2d 865 (N.D. Ind. 2007). The court held that, notwithstanding defendants’ arguments in their response to plaintiff’s motion to dismiss, defendants’ amended counter-claim alleged that plaintiff was printing, distributing, and selling maps that contained substantially similar or identical material as their maps, and plaintiff placed its logo where defendants’ logo was once displayed. “As such, Ms. Maxwell’s counter-claim only makes a claim for reverse passing off, and is thus preempted.”