The latest court ruling in the Luchasaurus mask copyright case has been handed down.
The case centers around Composite Effects claiming copyright on the creation of the AEW stars mask and recently, Luchasaurus’ defense team had filed a motion to dismiss the lawsuit.
A judge ultimately ruled that Composite Effects had adequately pleaded its breach of contract and LUPTA claims, and copyright claims.
A. Copyright Violation
“To establish a claim for copyright infringement, a plaintiff must prove that: (1) he owns a
valid copyright and (2) the defendant copied constituent elements of plaintiff’s work that are
original.” Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 251 (5th Cir.2010)
(internal quotation marks and citations omitted). The second element requires both factual
copying and substantial similarity. Id. In their motion to dismiss this claim, Defendant argue only
that CFX has not plausibly alleged that the allegedly infringing works are substantially similar to
CFX’s Copyrighted Work.The touchstone of the “substantial similarity” analysis is a “side-by-side comparison . . .
between the original and the copy to determine whether a layman would view the two works as
substantially similar.” Nola Spice Designs, L.L.C. v. Haydel Enterp., Inc., 783 F.3d 527, 550 (5th
Cir. 2015) (citing Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir. 1997))
(internal quotation omitted). Accordingly, the Fifth Circuit has explained that “the question of
substantial similarity typically should be left to the factfinder[.]” Nola Spice, 783 F.3d at 550; see
also Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010)
(“[Q]uestions of non-infringement have traditionally been reserved for the trier of fact.”). Only
Case 2:22-cv-05351-EEF-MBN Document 30 Filed 05/16/23 Page 4 of 9
where the similarity between the two works concerns only non-copyrightable elements of the
plaintiff’s work, which no party asserts is the case here, or where no reasonable jury could find
that the two works are substantially similar should the Court resolve this issue without
submission to a factfinder. See Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d
57 (2d Cir. 2010) (citing Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 240 (2d Cir.
1983)).Here, CFX argues that it can easily be seen from the submitted photographs that the
Luchasaurus Masks are simply reproductions of the major components of the Copyrighted Work,
with some additional elements, such as horns, and some alterations, such as cutting out the
mouth hole. CFX points specifically to the “intricate scaling pattern[,]” which it asserts is the
“aesthetic focus of the design[,]” and remains essentially unchanged from the Copyrighted Work
to the Luchasaurus Masks. Given that that “the question of substantial similarity typically should
be left to the factfinder[,]” Nola Spice, 783 F.3d at 550, and given the evident visual similarity of
the works in question, the Court cannot find that no reasonable jury could find that Defendants
have violated CFX’s copyright. CFX’s claims are thus adequate to survive 12(b)(6) review.B. LUTPA
Defendants argue first that CFX’s LUTPA claim must be dismissed because CFX fails to
plausibly allege any copyright infringement. Because this Court has already held supra that CFX
has plausibly alleged that Defendants violated its copyright, the Court need not address this
argument a second time.
In the alternative, Defendants argue that CFX’s LUTPA claim is preempted by federal
copyright law. The Copyright Act preempts state law claims that fall within the ambit of federal
copyright law. 17 U.S.C. § 301(a). Courts in the Fifth Circuit employ a two-step test to
determine if a claim is preempted by the Copyright Act. “First, the cause of action is examined to
determine if it falls ‘within the subject matter of copyright.’ Second, the cause of action is
examined to determine if it protects rights that are ‘equivalent’ to any of the exclusive rights of a
federal copyright, as provided in 17 U.S.C. § 106.” Daboub v. Gibbons, 42 F.3d 285, 289 (5th
Cir.1995) (internal citations omitted). Because the parties agree that this cause of action falls
within the subject matter of copyright, the question of preemption depends on the second
element of the two-step test: whether the rights are “equivalent”, commonly called the “extra
element” test. First Am. Bankcard, Inc. v. Smart Bus. Tech., Inc., CV 15-638, 2016 WL
5869787, at *7 (E.D. La. Oct. 7, 2016) (citing Alcatel USA, Inc. v. DGI Technologies, Inc., 166
F.3d 772, 787 (5th Cir. 1999)). Under the extra element test, “[i]f one or more qualitatively
different elements are required to constitute the state-created cause of action being asserted, then
the right granted under state law does not lie within the general scope of copyright, and
preemption does not occur.” Id. (internal quotations and citations omitted).The Fifth Circuit has held that a LUTPA claim is not preempted by federal copyright law,
explaining that “[b]ecause a cause of action under the [LUTPA] requires proof of fraud,
misrepresentation or other unethical conduct . . . the relief it provides is not ‘equivalent’ to that
provided in the Copyright Act and, thus, it is not pre-empted.” Computer Mgmt. Assistance Co.
v. Robert F. DeCastro, Inc., 220 F.3d 396, 404–05 (5th Cir. 2000) (internal citations omitted).
Defendants seek to distinguish Computer Mgmt. by arguing that nothing like the allegations of
fraud, misrepresentation, or other unethical content which the Fifth Circuit found to provide the
“extra element” sufficient to overcome Copyright Act preemption in that case are present here.
But in addition to arguing violation of their copyright, CFX has pleaded that “Defendants
engaged in deceitful and unethical conduct by misrepresenting their intentions and intentionally
prolonging negotiations in a deceptive manner so [that they] could secure a third party to steal
CFX’s designs[.]” At the 12(b)(6) stage, the Court finds that this is adequate to plausibly plead
that CFX’s LUTPA claim is not preempted by federal copyright law.C. Breach of Contract
Finally, Matelson seeks dismissal of CFX’s breach of contract claim, arguing that CFX has
failed to plausibly allege the existence of a contract between them, or in the alternative because
the claim is preempted by the Copyright Act.Under Louisiana law, “[t]here must be a ‘meeting of the minds’ between the parties to make
a contract enforceable.” Express Lien, Inc. v. Nationwide Notice, Inc., 2016 WL 7097382, at *4
(E.D. La. Dec. 5, 2016) (citation omitted). CFX has pleaded that Matelson entered into a sales
contract with it pursuant to the terms and conditions regarding the licensing and usage of
intellectual property on its website by purchasing the masks. However, Matelson points to
Express Lien to argue that there was no meeting of the minds, and thus no contract formation,
because Plaintiff does not allege that Matelson ever agreed to or was even aware of those terms
and conditions, only that they were displayed on the CFX website.In Express Lien, the court dismissed the plaintiff’s beach of contract claim, finding that the
plaintiff’s allegation that by using plaintiff’s website the defendant had agreed to be bound by
the terms and conditions on that website was inadequate to plead contract formation. However,
Express Lien is easily distinguishable from this case: there, the plaintiff had accused the
defendant of copying material from the plaintiff’s website and presenting it as the defendant’s
own. The defendant was therefore alleged merely to have accessed and used the plaintiff’s website by copying it; there was no allegation that the defendant had purchased any good or
service from the plaintiff’s website which would have bound it to that website’s terms and
conditions. In this case, however, Matelson undeniably purchased masks from CFX, and is
therefore bound by the terms and conditions of that sale. Accordingly, CFX had adequately
pleaded the existence of a contract between itself and Matelson.In the alternative, Matelson argues that Plaintiff’s breach of contract claim is preempted by
the Copyright Act. As discussed supra, the Fifth Circuit employs a two-part test to determine
whether the Copyright Act preempts a state law claim: (1) whether the claim is within the subject
matter of copyright, and (2) whether the cause of action protects rights that are equivalent to any
of the exclusive rights of federal copyright. See Spear Mktg., Inc. v. Bancorpsouth Bank, 791
F.3d 586, 594 (5th Cir. 2015) (internal citations omitted). The parties again do not contest that
the contract claim is within the subject matter of copyright, but argue whether the rights CFX
asserts in this claim are equivalent to the exclusive rights of federal copyright.
“A right is equivalent if the mere act of reproduction, distribution, or display infringes it.”
Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488, 1501 (5th Cir. 1990). But where a beach
of contract claim involves an element in addition to mere reproduction, distribution, or display—
that is, where there was an alleged breach of a term of terms of the contract not limited to a
copyright violation—the claim is not preempted by federal copyright law. See id. Here, CFX has
alleged not just that Matelson breached the contract between the parties by violating CFX’s
copyright, but also breached other contractual provisions including the illicit manufacture and
sale of merchandise based of CFX’s products or designs. Accordingly, CFX has adequately
pleaded that its breach of contract claim is not preempted by the Copyright Act in order to
survive 12(b)(6) review.V. CONCLUSION
For the foregoing reasons, Defendants’ Motions to Dismiss, R. Docs. 24 and 25, are hereby DENIED
We will continue to update fans on this case as the news breaks.
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