Oldcastle Precast, Inc., brought suit in the Western District against Granite Precasting & Concrete, Inc.
Oldcastle designs and manufactures precast concrete products, including vaults that typically house electrical or metering equipment. It registered a number of copyrights for drawings of its products. Oldcastle alleged that in 2006 it discovered that Granite was copying its drawings and using part numbers that corresponded to those used in Oldcastle’s catalog that serve no functional purpose.
Oldcastle alleged that in 2009 it bid on a project and discovered that Granite was still copying its drawings and using its part numbers. Oldcastle alleged that Granite has been awarded contracts by using some of Oldcastle’s designs and drawings, and that at least one of Oldcastle’s customers believed that Granite’s products were the same as Oldcastle’s and that Granite was an authorized reseller of Oldcastle’s goods.
Oldcastle asserted claims for copyright infringement as well as violation of the Lanham Act and Consumer Protection Act. Granite moved to dismiss the Lanham Act and CPA claims based on copyright preemption.
On June 1, Judge Marsha Pechman granted the motion as to Oldcastle’s CPA claim but denied it as to its Lanham Act claim.
“The CPA claim boils down to an allegation that Defendant marketed Plaintiff’s designs and drawing as its own, which is purportedly a violation of the CPA,” the court found. “The claim implicates all of Plaintiff’s alleged rights under the Copyright Act and lacks an extra element.”
By contrast, the court found Oldcastle’s Lanham Act claim “contains sufficiently distinct elements and allegations to avoid preemption by the Copyright Act. First, Plaintiff seeks the cost of corrective advertisement, which is a form of relief that is unavailable under the Copyright Act. Second, the nature of the claims is distinct. Plaintiff alleges Defendant intentionally used the same part numbering system with regard to precast items to confuse potential customers into thinking they were Plaintiff’s products. This is distinct from a claim of reproducing copyrighted material. Plaintiff states further that one of its customers was indeed confused as to whether Defendant was an authorized reseller of Plaintiff’s products. The facts supporting the two claims are thus distinguishable.”
The case cite is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., 2010 WL 2217910, No. 10-322 (W.D. Wash. June 1, 2010) (Pechman, J.).