when are state law unfair competition claims preempted?

Duer v. Bensussen Deutsch & Associates, Inc., 2015 WL
11256568, No. 14-CV-01589 (N.D. Ga. Jul. 8, 2015)
Very broad preemption finding makes me blog this older case
that popped out of Westlaw.  Duer makes
medicine dosage adherence tools suitable for affixing to pill bottles. The
product has seven slides, each representing a day of the week, and a user moves
a slide each day she takes a pill.  Duer claimed
rights in the trademark “Take-n-Slide”; a utility patent; and copyright in the
insert sheet packaged with her product.  Defendants allegedly copied Duer’s product and
package insert sheet, which she discovered when one of their customers
contacted her, believing that they’d received her product.
Duer properly alleged non-functionality by identifying  several non-functional elements, including
the particular shape of the product, the vertical arrangement of the days of
the week, and the chosen color scheme. “The existence of a utility patent which
contains claims that may include the above elements does not change the
analysis.” The utility patent was strong but not conclusive evidence of
functionality; she was entitled to try to meet her “heavy” burden of showing
nonfunctionality. Duer also properly pled secondary meaning, with details about
her ad expenditures, how long she’d advertised, and at least one instance of
actual confusion as well as intentional copying.
However, the court dismissed Duer’s claims for false
advertising and unfair competition. 
False advertising: the product insert allegedly actually displayed Duer’s
product.  However, this wasn’t “commercial
advertising or promotion,” because it wasn’t disseminated to influence
consumers to buy defendants’ goods.  “A
product insert cannot influence a consumer’s purchasing decision because the
public would only see a product insert after purchasing the product.”
Duer’s unfair competition/passing off claim failed because
she failed to allege that defendants weren’t the actual, physical origin of the
products it sold.  This seems quite
wrong: her argument was that defendants sold products that were falsely
attributed to her; the fact that they
are the origin is kind of the point.
More plausibly, but still interestingly, the court held that
Duer’s Georgia Uniform Deceptive Trade Practice Act and her tortious
interference with contract claim were preempted by the patent/copyright laws
because they relied on the same conduct alleged in her patent, copyright, and
trade dress infringement claims.  [Sloppiness
here: there’s no preemption based on the trade dress-related claims, on these
facts.]  Duer was essentially arguing
reverse passing off—that defendants were claiming her design as their own—which
courts routinely find to be preempted.

Duer argued that her GUDTPA claim had an “extra element” of
a deceptive act, but reverse passing off implicitly contains a deceitful act or
misrepresentation.  “The fact that the
defendants were selling the allegedly infringing works under their own
names—and, hence, implicitly misrepresenting the origin of the works or causing
confusion in the consuming public cannot alter the finding of preemption.” 

from Blogger http://ift.tt/2cOhSf3

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