792 F. Supp. 2d 933
S.D. Miss.2011Background
- St. John is a restaurateur and publisher; Harrell formed MSF and DDU for marketing food products and a TV pilot with Harrell controlling finances.
- No written operating agreements existed for MSF or DDU, and no binding contributions were guaranteed in writing.
- Harrell controlled banking and financial records; St. John lacked access to MSF records and claims most expenses were paid from Harrellco funds.
- Two MSF/RSJ ventures produced a TV pilot and planned product catalogs based on St. John’s recipes and private-label collaborations.
- MSF and RSJ.com marketed foods under Robert St. John and My South Foods labels; disagreements led to dissolution efforts and the creation of RSJ.com by St. John.
- Plaintiffs filed several state-law claims in Lamar County Chancery Court alleging misappropriation of intellectual properties; the case was removed to federal court and defendants moved for summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether state-law claims are preempted by the Copyright Act | Harrell argues state law protects non-copyrightable assets | St. John contends preemption applies to all claims | Preempted under §301(a) as equivalent to copyright rights |
| Whether Harrell/ plaintiffs own copyrights or trademarks in works created by others | Plaintiffs claim ownership of MSF/RSJ labels and works | Work-for-hire does not apply; creator owns rights | Ownership resides with the author/independent contractor; plaintiffs lack ownership rights in logos/trademarks |
| Whether recipes, product names, and catalogs are protectable rights | Recipes/names/catalogs are protectable intellectual property | Recipes are factual compilations or descriptive terms; not protected; catalogs are compilations | Recipes are not protected; product names are descriptive with no secondary meaning; catalogs are compilations; no enforceable IP rights held by plaintiffs |
| Whether defendants infringed MSF/DDU IP rights or misused the works | Defendants wrongfully used intellectual properties | No enforceable IP owned by plaintiffs; no infringement | No infringement; dismissible as to these claims; rights reside with others or non-existent |
Key Cases Cited
- Daboub v. Gibbons, 42 F.3d 285 (5th Cir.1995) (two-part preemption test; equivalency under §301(a))
- Publications International, Ltd. v. Meredith Corp., 88 F.3d 473 (7th Cir.1996) (compilation copyright; protects order, not necessarily ingredients)
- Barbour v. Head, 178 F. Supp. 2d 758 (S.D. Tex.2001) (recipes with literary expression may be protectable; otherwise not)
- Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772 (5th Cir.1999) (equivalency test; preemption when state rights align with copyright)
- McArdle v. Mattel Inc., 456 F. Supp. 2d 769 (E.D. Tex.2006) (misappropriation of author’s work preempted)
- Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488 (5th Cir.1990) (preemption of misappropriation of engineering drawings)
- Randolph v. Dimension Films, 630 F. Supp. 2d 741 (S.D. Tex.2009) (preemption of DTPA/unjust enrichment claims)
- Schuchart & Associates, Professional Engineers, Inc. v. Solo Serve Corp., 540 F. Supp. 928 (W.D. Tex.1982) (preemption of unfair competition/misappropriation claims)