State law can’t protect uncopyrightable design for useful article

Ultraflo Corp. v. Pelican Tank Parts, Inc., No. 15-20084
(5th Cir. Jan. 11, 2017)
A nice citation for the proposition that §301 preemption
covers both copyrightable and uncopyrightable matter. Ultraflo argued that
Pelican engaged in unfair competition by misappropriation claim by stealing
Ultraflo’s drawings showing how to design valves and then used them to make
duplicate valves. Ultraflo argued that its claim escaped preemption because its
valve design, when separated from the drawing itself, was uncopyrightable. But
“copyright preemption prohibits state interference with Congress’s decision not
to grant copyright protection just as much as it protects a decision to provide
The drawings of the valves were copyrightable; they were the
basis of a copyright infringement claim rejected by the jury below. But the misappropriation
claim was based on copying the valve design, not copying the drawings. The
valve design was either a useful article or an idea, and not copyrightable, but
preemption covers more than copyrightable works; §301 preempts state protection
for works within copyright’s subject matter, including useful articles, whether
or not they are copyrightable. “[S]cope and protection are not synonyms.” The
court noted that “the exclusion of useful articles from copyright protection is
a corollary of the idea-expression dichotomy”; allowing state-law protection
for useful articles would undermine their deliberate exclusion from the federal
Was plaintiff claiming a right equivalent to that granted by
copyright?  The Copyright Act doesn’t
grant the owner of a drawing of a useful article to control the making of the
useful article—but preemption is more general than just what would infringe
copyright.  “The question is not whether
state law provides a right identical to federal copyright law, but whether state
law provides a right akin to those ‘within
the general scope of copyright as specified by section 106’” (emphasis added).  And the exclusive rights generally include
the right to make derivative works. 
Indeed, §113(b), by making clear that the owner of the copyright in
technical drawings can’t prevent making the articles, “recognizes that such
derivative use may otherwise be protected by the copyright laws.”  The key issue was not the rights Congress
actually provided but “the type of rights it has the power to confer.
Withholding a particular right is part of the balance Congress struck between
the need for copyright incentives and the value in public access to ideas.”  The exclusion also protected the
patent/copyright line.

Unfair competition by misappropriation lacked the necessary
extra element to escape preemption. 
Sweat equity, use against a competitor, and intent don’t count as extra

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