Curtis v. Herb Chambers I-95, Inc.
458 Mass. 674
| Mass. | 2011Background
- Curtis, executrix of Harold Curtis’s estate, filed a Superior Court complaint against Chambers defendants and Globe Specialty for four claims including common-law trade dress and 93A violations.
- A federal judge dismissed federal claims; the Appeals Court partially affirmed and remanded; Massachusetts Supreme Judicial Court granted further appellate review.
- Curtis designed and sold distinctive automobile dealership promotional materials; Globe Specialty later printed/distributed materials substantially similar to Curtis’s work for Chambers, causing Curtis to lose clients.
- Curtis alleged Globe and Chambers copied his designs after contracts ended, harming his business opportunities in several marketing areas.
- Under § 301 preemption, state-law claims are preempted if they seek rights equivalent to exclusive copyright rights; this case hinges on whether Curtis held a copyright-like right.
- The court also addressed collateral estoppel from the federal suit’ finding that Curtis’s materials had not acquired secondary meaning.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does § 301 preempt all state claims? | Curtis contends state claims are distinct rights not equivalent to copyright. | Defendants argue all four state claims are equivalent to copyright rights and preempted. | Yes; all claims preempted under § 301. |
| Are any state claims qualitatively different from copyright infringement? | Curtis asserts rights beyond mere copying exist under state law. | Equivalency requirement shows no qualitative difference if rights mirror copyright. | No; none are qualitatively different; preempted. |
| Does collateral estoppel apply to secondary meaning? | Secondary meaning could sustain reverse passing off claims. | Federal court found no secondary meaning; collateral estoppel applies. | Yes; collateral estoppel requires dismissal on secondary meaning. |
| Is Globe Specialty liable for breach of implied covenant when no contract with Curtis is alleged? | Implied covenant could bind Globe Specialty to refrain from copying post-termination. | No contract with Globe Specialty; implied covenant cannot create rights against Globe. | Yes for Globe; claims dismissed due to lack of contractual relationship; however, preemption already screens remaining claims. |
| Do state claims about unfair/deceptive practices survive preemption if misrepresentation is involved? | Misrepresentation could survive if it were separate from copyright. | In this case, misrepresentation is tied to reverse passing off and preempted. | No; misrepresentation claim not saved from preemption; remaining claim preempted. |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) (reverse passing off analyzed for preemption purposes)
- Altai, Inc. v. Inte., 982 F.2d 693 (2d Cir. 1992) (equivalency test for preemption)
- Datacomm Interface, Inc. v. Computerworld, Inc., 396 Mass. 760 (Mass. 1986) (unfairness standard for 93A claims; preemption guidance)
- Curtis v. Herb Chambers I-95, Inc., 75 Mass. App. Ct. 662 (Mass. App. Ct. 2009) (Appeals Court on preemption and secondary meaning)
- Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 (U.S. 1985) (qualitative difference considerations in preemption)
- Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001) (implied-in-law/contract interference preemption discussion)
- Tingley Sys., Inc. v. CSC Consulting, Inc., 152 F. Supp. 2d 95 (D. Mass. 2001) (preemption justification for contract-based claims)
- John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26 (1st Cir. 2003) (93A and preemption discussion in Massachusetts context)