Bella Builders, Inc. v. Joseph Minghenelli, 2008 WL 4569880 (M.D.Fla. 2008)

Summary: In the Middle District of Florida, plaintiff is not entitled to a cause of action for conversion of intellectual property in architectural plans under state law conversion, because U.S. copyright laws preempts such a claim for alleged derivative works.

According to JOHN E. STEELE, District Judge of the Middle District of Florida, “Section 301 of the Copyright Act provides in relevant part that: [o]n January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished are governed exclusively by this title.” No person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. 17 U.S.C. § 301(a). The "intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent in copyright and that extend to works coming within the scope of the Federal copyright law." Dunlap v. G & L Holding Group, Inc., 381 F.3d 1285, 1296 (11th Cir.2004) (internal citations omitted). In order to determine whether a state cause of action is preempted, the Court must determine whether: (1) the rights at issue fall within the "subject matter of copyright" set forth in sections 102 and 103; and (2) the rights at issue are equivalent to the exclusive rights of section 106. Dunlap, 381 F.3d at 1294; see also Crow v. Wainwright, 720 F.2d 1224, 1225-26 (11th Cir.1983).

Architectural plans are architectural works fixed in a tangible medium of expression, which are within the subject matter of copyright law; therefore, “the first part of the preemption analysis is satisfied….” See 17 U.S.C. § 102(a). The “owner of a copyright has the exclusive right to: (1) reproduce the copyrighted work; and (2) prepare derivative works based upon the copyrighted work. See 17 U.S.C. § 106. According to the court, the count of conversion of intellectual property alleges that the designs of the defendant’s architectural were derived from the plaintiff’s architectural works; therefore, pursuant to 17 U.S.C. § 106(2), the rights at issue are equivalent to one of the exclusive rights of section 106, namely an allegation that the designs are a derivative work of the plaintiff’s architectural plans. “Therefore, the Court finds … that both prongs of the preemption test have been met,” resulting in dismissal of the count alleging conversion of intellectual property, a state law claim.