2021 Ohio 2860
Ohio Ct. App.2021Background
- TruLogic, Inc. developed proprietary publishing software (TruView™) and licensed it to GEA and the U.S. Air Force under a click‑through EULA that restricted use, forbade reverse‑engineering, required preservation of trademarks/copyright notices, and declared the EULA the entire agreement.
- TruLogic alleges GEA repurposed and distributed derivative IETM products using TruLogic’s markup, removed TruLogic attribution/copyright notices, and distributed those products without the EULA, causing lost contracts and reputational harm.
- TruLogic sued GEA in Greene County Common Pleas Court asserting breach of the Software Licensing Agreement and unjust enrichment. GEA moved to dismiss under Civ.R. 12(B)(6), arguing federal copyright preemption (17 U.S.C. §301) and failure to state claims.
- The trial court dismissed both claims as preempted; TruLogic appealed. The appellate review was de novo, accepting complaint allegations and attached EULA as true.
- The appellate court held (1) the breach of contract claim survives preemption because the EULA’s substantive restrictions (e.g., prohibition on reverse engineering, use limitations, attribution obligations) supply the “extra element” that makes the claim qualitatively different from copyright infringement; and (2) the unjust enrichment claim was properly dismissed because an express, integrated written agreement governs the same subject matter (so no implied‑in‑law claim lies), and unjust enrichment is generally preempted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether breach of contract claim is preempted by federal copyright law | Breach not preempted: the EULA imposes extra elements (use restrictions, reverse‑engineering ban, attribution, control provisions) making the claim qualitatively different from mere copying | Preemption applies: plaintiff's contract theory merely repackages exclusive §106 rights (derivative works, reproduction) and thus is equivalent to a copyright claim | Breach claim not preempted: EULA restrictions supply the required “extra element”; dismissal reversed and remanded |
| Whether unjust enrichment claim survives despite the EULA and preemption | Unjust enrichment addresses additional harms (failure to attribute, omission of license) and may avoid preemption if based on material beyond copyright | Unjust enrichment is preempted and in any event cannot stand when an express integrated contract governs the same subject matter | Unjust enrichment dismissed: express integrated EULA bars quasi‑contract recovery; alternatively, unjust enrichment is generally preempted |
Key Cases Cited
- ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) (upheld shrinkwrap/clickwrap contracts and held contract enforcement generally not preempted by copyright)
- Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001) (contract claims that merely restate exclusive copyright rights are preempted; implied promise to pay can be an extra element avoiding preemption)
- State v. Perry, 83 Ohio St.3d 41 (Ohio 1998) (articulates §301 two‑part preemption test and discusses software licensing as potentially distinct from copyright claims)
- National Car Rental Sys., Inc. v. Computer Assocs. Internat., Inc., 991 F.2d 426 (8th Cir. 1993) (contracts affecting only parties may avoid §301 preemption; unjust enrichment may be evaluated as damages tied to contractual breach)
- Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979) (federal IP law does not bar enforcement of private promises to pay for use of intellectual property)
- Davidson & Assocs. v. Jung, 422 F.3d 630 (8th Cir. 2005) (EULA restrictions on reverse engineering constitute an "extra element" sufficient to avoid copyright preemption)