United States District Court, D. New Hampshire
D'Pergo Custom Guitars, Inc.
Sweetwater Sound, Inc.
McCafferty, United States District Judge.
D'Pergo Custom Guitars, Inc. (“D'Pergo”)
brings suit against defendant Sweetwater Sound, Inc.
(“Sweetwater”), alleging claims for copyright
infringement and violations of RSA 358-A, the New Hampshire
Consumer Protection Act (“CPA”). D'Pergo
claims that Sweetwater used a copyrighted photograph of
D'Pergo's custom guitar necks in order to promote and
sell Sweetwater products on its website. Before the court is
Sweetwater's motion to dismiss Counts II and III, the CPA
claims (doc. no. 8). For the following reasons,
Sweetwater's motion is denied.
Rule 12(b)(6), the court must accept the factual allegations
in the complaint as true, construe reasonable inferences in
the plaintiff's favor, and “determine whether the
factual allegations in the plaintiff's complaint set
forth a plausible claim upon which relief may be
granted.” Foley v. Wells Fargo Bank, N.A., 772 F.3d 63,
71 (1st Cir. 2014) (internal quotation marks omitted). A
claim is facially plausible “when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009). In addition, “[e]xhibits attached to the
complaint are properly considered part of the pleading for
all purposes, including Rule 12(b)(6).” Trans-Spec
Truck Serv., Inc. v. Caterpillar Inc., 524 F.3d 315, 321
(1st Cir. 2008) (internal quotation marks omitted).
following facts are taken from D'Pergo's complaint,
unless otherwise noted. D'Pergo manufactures and sells
custom guitars. In 2003, D'Pergo created a photograph
showing a number of its unique guitar necks, which it then
published on its website.
is a retailer that sells musical instruments, including
guitars, through its website. D'Pergo alleges that it
recently discovered that Sweetwater had copied the photograph
and displayed it on Sweetwater's website, specifically in
an “Electric Guitar Buying Guide.” Doc. no. 1 at
18. The photograph appears in a section titled “Guitar
necks explained.” Id. at 21. At the end of the
buying guide are a number of guitars from various
manufacturers for purchase, as well as what appears to be a
hyperlink labelled “Shop for Electric Guitars.”
Id. at 23-24.
brought this action in December 2017. It raises a claim for
copyright infringement (Count I), an unfair competition claim
under the CPA (Count II), and a deceptive business practices
claim under the CPA (Count III).
Count II, D'Pergo alleges that, by using the photograph
of D'Pergo guitar necks in the buying guide, Sweetwater
passed off the guitars it sells as D'Pergo guitars.
D'Pergo further alleges that the use of the photograph
has caused a “likelihood of confusion as to the source,
sponsorship, approval, affiliation and association of
[Sweetwater] goods with the goods of [D'Pergo].”
Doc. no. 1 at 6. Similarly, in Count III, D'Pergo alleges
that Sweetwater engaged in deceptive trade practices because
it used the D'Pergo photograph in a manner that is likely
to cause confusion regarding the source of Sweetwater's
guitars and may lead consumers to believe that such guitars
are associated with D'Pergo. Thus, reading the complaint
in the light most favorable to D'Pergo, D'Pergo
appears to allege that after seeing the photograph in
Sweetwater's buying guide, a consumer may be led to
believe that the guitars Sweetwater has for purchase at the
end of the buying guide and via the hyperlink are
manufactured by or somehow associated with
argues that D'Pergo's CPA claims are preempted by
federal law because they are based solely on Sweetwater's
alleged copying of D'Pergo's photograph, which
renders the CPA claims substantively equivalent to a federal
copyright claim. D'Pergo responds that the CPA claims are
sufficiently distinguishable from a copyright claim to
survive preemption. The court agrees with D'Pergo.
dispute is governed by 17 U.S.C. § 301(a), which
“precludes enforcement of any state cause of action
which is equivalent in substance to a federal copyright
infringement claim.” Data Gen. Corp. v. Grumman
Sys. Support Corp., 36 F.3d 1147, 1164 (1st Cir. 1994),
abrogated on other grounds by Reed Elsevier, Inc. v.
Muchnick, 559 U.S. 154 (2010); see also 17 U.S.C. §
301(b)(3) (stating that state causes of action are not
preempted to the extent that they involve the violation of
rights that are not equivalent to rights under federal
copyright law). “Courts have developed a functional
test to assess the question of equivalence.” Data Gen.
Corp., 36 F.3d at 1164. If a cause of action “requires
an extra element, beyond mere copying, preparation of
derivative works, performance, distribution or display, then
the state cause of action is qualitatively different from,
and not subsumed within, a copyright infringement claim and
federal law will not preempt the state action.”
Id. (quotation omitted).
relevant here, courts have held that “when unfair
competition and unfair and deceptive trade practices claims
require proof of an extra element such as likelihood of
consumer confusion, misrepresentation, or deception, the
claims survive preemption.” Rubin v. Brooks/Cole
Publ'g Co., 836 F.Supp. 909, 923 (D. Mass. 1993)
(collecting cases). Thus, an unfair competition claim
“of the ‘passing off' variety” is not
preempted. Beckwith Builders, Inc. v. Depietri, No.
04-CV-282-SM, 2006 WL 2645188, at *6 (D.N.H. Sept. 15, 2006).
That is, “[i]f A claims that B is selling B's
products and representing to the public that they are
A's, that is passing off” and such a claim is not
preempted. Id. (quotation omitted).
essentially what D'Pergo is alleging with respect to its
CPA claims: by using the photograph in connection with the
sale of its guitars, Sweetwater represented to the public
that the guitars it sells are somehow associated with or
connected to D'Pergo. In order to prevail, D'Pergo
will need to demonstrate more than that Sweetwater copied the
photograph. It will need to prove that Sweetwater engaged in
an unfair method of competition or deceptive practice, which
is defined under the CPA to include “[p]assing off
goods or services as those of another” or
“[c]ausing likelihood of confusion” as to the
source of the goods or as to the affiliation of the goods
with another. RSA 358-A:2, I-III. As a result, there is an
extra element that makes the CPA claims qualitatively
different from a federal copyright infringement claim. ...