On June 8, 2015, the New York County Supreme Court dismissed with prejudice eight of twelve state law claims brought by a producer seeking damages for the purportedly unauthorized use of his music in a world-wide production of Peter Pan. Craig Barna and Bronsand Music Inc. v. Cathy Rigby, Tom McCoy, McCoy Rigby Entertainment, and Keith Levinson, No. 156405/2013 (N.Y. Sup. Ct. 2015). Plaintiffs, Craig Barna and Bronsand Music, Inc., contracted with Defendants for a license to use Barna’s music during the first North American tour of the play. The contract compensated Barna for the use of his music during the first tour and required defendants to negotiate an agreement with Barna for any subsequent use of his music. Prior to a second Peter Pan tour, defendants attempted to negotiate a deal with Barna for such use. When they could not come to an agreement, the defendants hired a third party, Keith Levinson, to write music for the second tour.
Plaintiffs sued, bringing a variety of state law claims centering around one idea: the defendants used Barna’s music without his consent and without paying him for it. The Complaint included causes of action sounding in: (1) breach of contract; (2) quantum meruit; (3) fraudulent misrepresentation; (4) specific performance; (5) violations of the Lanham Act; (6) conversion; (7) misappropriation; (8) violations of New York General Business Law; (9) and (10) tortious interference with contract; (11) palming off; and (12) accounting. Defendants moved to dismiss ten of the counts, but notably did not argue that plaintiffs’ claims should be preempted by the federal Copyright Act.
The Court underscored the gravity of defendants’ oversight, explaining that plaintiff’s claims were “in reality, copyright infringement claims dressed up as state law causes of action” which she classified as “classic copyright infringement.” The Court went on to note that copyright infringement claims may only be asserted in federal court, and that it is “well settled that state law claims that effectively seek redress for copyright violations are preempted by the Copyright Act.” In its opinion, the Court highlighted the fact that any claim seeking to vindicate a legal or equitable right equivalent to one of the bundle of rights already protected by copyright law are exclusively governed by the Copyright Act.
Although the Court addressed the merits of the defendants’ arguments and noted that some of the claims should be dismissed for reasons in addition to preemption, the crux of the opinion discussed a plaintiff’s inability to disguise a copyright claim as a state law violation. In such circumstances, a defendant should move to dismiss on the basis of federal preemption (indeed the Judge in the Barna case found it “inexplciabl[e]” that defendants did not raise this defense). And a plaintiff attempting to circumvent a federal filing should beware that state court judges can and will independently raise federal preemption in copyright cases even if the defendant does not.