Copyright Preemption Checklist: Subject Matter, Equivalence, Extra Elements, and Claim-by-Claim Screening

By Casey Scott McKay · 2024-02-29

This checklist screens every state-law count in a copying case before the complaint is filed, and attacks one that was filed without the analysis. It runs the two-prong test count by count, including the subject matter prong's reach into unprotectable elements that defeats the instinctive "they only took the idea" argument. It identifies the extra element and tests whether it is qualitatively different rather than merely additional, then drafts the surviving claims properly - contract pleading the promise rather than the taking, implied contract with the circumstances, confidence with the relationship, trade secret with secrecy and improper means, and publicity framed around endorsement rather than reproduction. It covers removal on complete preemption, the registration precondition that makes state-only pleading attractive and fatal, motion structure, dismissal with prejudice, and the damages mapping that drives settlement.

IP and Technology > Copyright | Checklist | Published 29 February 2024 - Updated 27 March 2025 | Casey Scott McKay - marksy.us

Summary. This checklist screens every state-law count in a copying case before the complaint is filed, and attacks one that was filed without the analysis. It runs the two-prong test count by count, including the subject matter prong's reach into unprotectable elements that defeats the instinctive "they only took the idea" argument. It identifies the extra element and tests whether it is qualitatively different rather than merely additional, then drafts the surviving claims properly — contract pleading the promise rather than the taking, implied contract with the circumstances, confidence with the relationship, trade secret with secrecy and improper means, and publicity framed around endorsement rather than reproduction. It covers removal on complete preemption, the registration precondition that makes state-only pleading attractive and fatal, motion structure, dismissal with prejudice, and the damages mapping that drives settlement.

Keywords: two prong worksheet · subject matter reach · fixation · extra element identification · qualitative difference · contract pleading · implied contract circumstances · breach of confidence · trade secret elements · publicity framing · misrepresentation separation · count drop list · complete preemption removal · registration precondition · supplemental jurisdiction · early motion practice · dismissal with prejudice · discovery narrowing · submission release · damages mapping

How to use this checklist

| Phase | What it covers | |---|---| | 1 | The worksheet | | 2 | Prong one: subject matter | | 3 | Prong two: general scope | | 4 | The extra element test | | 5 | The claim-by-claim table | | 6 | Drafting the contract count | | 7 | Drafting implied contract | | 8 | Confidence and trade secret | | 9 | Framing the publicity count | | 10 | Separating the misrepresentation | | 11 | The drop list | | 12 | Registration position | | 13 | Removal assessment | | 14 | Motion structure | | 15 | Dismissal with prejudice | | 16 | Discovery narrowing | | 17 | Opposing the motion | | 18 | Constitutional preemption | | 19 | Damages mapping | | 20 | Submission release programme | | 21 | Terms and data arrangements | | 22 | The matter template |

Boxes marked [Gate] must clear before the complaint is circulated for review, or before a motion is filed.

The matter. A furniture designer's instinct was seven counts against a former manufacturing partner. The analysis produced four, no preemption motion, and discovery scoped to the agreement rather than to a defence of five doomed claims.

Phase 1. The worksheet

[ ] [Gate] Complete it per count, before drafting. Twenty minutes.
[ ] Describe the work as a thing, not as a claim.
[ ] Describe the conduct complained of in one sentence, without characterization.
[ ] Answer prong one and prong two for each count.
[ ] Record the conclusion: preempted, survives, or survives only if specific facts are pleaded.
- Why. The third answer is the most useful, because it tells the drafter what has to go into the complaint.
[ ] Keep it in the matter file as the record that the analysis was done.

Phase 2. Prong one: subject matter

[ ] Is the work fixed in a tangible medium?
- Outside: a live improvised performance, an unrecorded conversation, a persona or name as such.
[ ] Does it come within 17 U.S.C. § 102 or 17 U.S.C. § 103?
[ ] [Gate] Remember the prong reaches unprotectable elements within copyrightable works.
- Trap. "They only took the idea" does not defeat the prong — it confirms it, because Congress chose not to protect ideas and a state claim protecting them is displaced for that reason.
[ ] Where prong one fails, run the constitutional doctrine instead — Bonito Boats v. Thunder Craft Boats and Sears, Roebuck v. Stiffel.
[ ] Note that prong one is satisfied in nearly every copying case, so the analysis turns on prong two.

Phase 3. Prong two: general scope

[ ] Identify the conduct: reproduction, adaptation, distribution, performance, or display under 17 U.S.C. § 106 — or something else.
[ ] Identify what the state claim requires that copyright does not.
[ ] [Gate] Ask the operative question: would proving the copyright claim automatically prove the state claim?
[ ] If yes, the right is equivalent whatever the count is called.
[ ] Check 17 U.S.C. § 301(b) and name which limb of the savings clause is invoked, if any.

Phase 4. The extra element test

[ ] Apply Computer Associates International v. Altai: an element required instead of or in addition to reproduction, performance, distribution, or display takes the right outside the general scope.
[ ] [Gate] Test qualitative difference, not mere addition.
[ ] Qualitatively different: a promise; a confidential relationship; secrecy plus improper means; a misrepresentation separate from the copying; an interest in a persona rather than a fixed work.
[ ] Merely additional, and therefore fatal: scienter; commercial purpose; bad faith; competitive intent.
- Trap. Adding "and defendant acted willfully and for commercial gain" saves nothing.
[ ] Name the element in the pleading, with facts. A conclusory assertion is not an extra element.

Phase 5. The claim-by-claim table

[ ] Conversion — preempted, unless the defendant took and kept a physical original.
[ ] Unfair competition based on copying — preempted, unless a separate misrepresentation about source or sponsorship is pleaded with facts.
[ ] Misappropriation — preempted, unless the five hot-news elements of National Basketball Association v. Motorola are met.
[ ] Unjust enrichment — preempted where the enrichment is the copying, per Briarpatch v. Phoenix Pictures and Ultra-Precision Manufacturing v. Ford Motor.
[ ] Breach of contract — survives, per ProCD v. Zeidenberg.
[ ] Implied-in-fact contract — survives, per Montz v. Pilgrim Films & Television.
[ ] Breach of confidence — survives.
[ ] Trade secret — survives, per Kewanee Oil v. Bicron.
[ ] Fraud — survives where the misrepresentation is separate.
[ ] Right of publicity — depends entirely on framing.
[ ] Tortious interference — survives where the interference is with a contract; preempted where it is competing copying.
[ ] Civil conspiracy and accounting — follow the underlying claim.

Phase 6. Drafting the contract count

[ ] [Gate] Plead the promise, not the taking.
- Fails: "Defendant used plaintiff's work without authorization."
- Works: "Defendant agreed not to use the material for any purpose other than evaluating the manufacturing relationship, and used it to build a competing product."
[ ] Identify the agreement — parties, date, operative section, and how it was accepted.
[ ] Identify the breach as a breach of that term, not as copying.
[ ] Plead damages flowing from the breach, which may differ from copyright damages.
[ ] Plead the acceptance mechanics.
- Why. Vault v. Quaid Software preempted a state statute deeming terms enforceable, and the further the assent is from an actual bargain, the more available that argument becomes.
[ ] Note the reach. Bowers v. Baystate Technologies upheld a contractual reverse engineering ban — contract reaches conduct copyright does not.

Phase 7. Drafting implied contract

[ ] Plead the pre-disclosure statement — what was said before the material was shared.
[ ] Plead the absence of objection and the request to continue.
[ ] Plead industry custom that concepts disclosed in such circumstances are paid for if used.
[ ] Plead the use.
[ ] [Gate] Plead implied in fact, expressly.
- Trap. An implied-in-law theory is no promise at all and is preempted.
[ ] Authority: Montz v. Pilgrim Films & Television, Forest Park Pictures v. Universal Television, and Desny v. Wilder.
[ ] Anticipate the defences: unsolicited submission, a release, or public disclosure.

Phase 8. Confidence and trade secret

[ ] Breach of confidence: plead the relationship, the circumstances imposing the obligation, and the disclosure in breach.
[ ] Plead it in the alternative to contract, since it does not depend on the agreement's enforceability.
[ ] Trade secret: plead secrecy, value from secrecy, reasonable measures, and acquisition or use by improper means or in breach of a duty, per 18 U.S.C. § 1839 and 18 U.S.C. § 1836.
[ ] [Gate] Identify what was secret with particularity, and distinguish it from anything published.
- Trap. A "trade secret" that is a published work looks like a copying claim and fails its own elements.
[ ] Note the remedial advantage — different injunctive terms, and in some cases exemplary damages and fees.

Phase 9. Framing the publicity count

[ ] [Gate] Ask what the defendant did.
[ ] Preempted framing: "Defendant reproduced and distributed the photograph." Targets a fixed work — Laws v. Sony Music Entertainment and Maloney v. T3Media.
[ ] Surviving framing: "Defendant used plaintiff's image in advertising in a manner implying she endorsed the product." Targets the persona — Toney v. L'Oreal USA.
[ ] Plead the commercial context, the audience, and the implied association.
[ ] Do not treat trademark as an alternative. Dastar v. Twentieth Century Fox forecloses an attribution right under 15 U.S.C. § 1125 for communicative works.

Phase 10. Separating the misrepresentation

[ ] For unfair competition or deceptive practices, identify a statement.
[ ] Plead the statement, the audience, and the falsity.
[ ] Confirm it is separate from the copying.
- Trap. "Defendant sold a copy and thereby implied it was authorized" is the copying, restated.
[ ] For fraud, the same test: the misrepresentation must exist independently of the use of the work.
[ ] Where no separate statement exists, drop the count.

Phase 11. The drop list

[ ] Conversion for copying. The most reliably dismissed count in this area.
[ ] Unfair competition with no separate misrepresentation.
[ ] Misappropriation not meeting all five hot-news elements.
[ ] Unjust enrichment premised on use of the work.
[ ] Deceptive practices premised on the copying itself.
[ ] [Gate] Write one sentence per dropped count explaining why, and keep it in the file.
[ ] Understand the benefit. A complaint with four supported counts survives; one with nine invites a motion, loses five, and reads as reflexive — which affects how a judge approaches what remains.

Phase 12. Registration position

[ ] [Gate] Confirm registration before filing. 17 U.S.C. § 411 makes it a precondition to suit.
[ ] Check timeliness, which determines availability of statutory damages under 17 U.S.C. § 504 and fees under 17 U.S.C. § 505.
[ ] Recognize the trap. A plaintiff pleading state-only to avoid the precondition is exactly the plaintiff preemption defeats.
[ ] Where registration is late or absent, the realistic choice is federal court with a copyright count or a complaint that will be removed and gutted.

Phase 13. Removal assessment

[ ] [Gate] Diary the removal deadline on service. It is short and runs from service, not from when the file reaches the right lawyer.
[ ] Read the complaint for substance, not captions.
[ ] Assess complete preemption, which creates federal jurisdiction despite no federal claim on the face of the pleading.
[ ] Then ask whether removal helps — forum speed, the judge, and whether the surviving counts are better tried elsewhere.
[ ] Plan the sequence: remove, move on the state counts, address the copyright count separately.
[ ] Expect supplemental jurisdiction over surviving contract and confidence counts under 28 U.S.C. § 1367, so the realistic outcome is a narrower case rather than a dismissal.

Phase 14. Motion structure

[ ] Introduction, two paragraphs — what is alleged, and that five of seven counts vindicate the same interest by the same conduct.
[ ] The standard, half a page — 17 U.S.C. § 301(a), the two prongs, and the qualitative difference point stated expressly.
[ ] Prong one, once, for all counts, addressing the "only an idea" argument pre-emptively.
[ ] [Gate] Prong two, count by count, quoting the plaintiff's own allegations.
[ ] State the counts not moved on, in one sentence each. Conceding the contract count buys credibility.
[ ] Keep it to twelve to eighteen pages.

Phase 15. Dismissal with prejudice

[ ] [Gate] Ask for it on the incurable counts — conversion premised on copying, unfair competition premised on the same conduct.
[ ] Explain why: the defect is in the theory, not in the drafting, so no amendment cures it.
[ ] Ask without prejudice where a fact could cure, which preserves credibility on the rest.
[ ] Why it matters. Otherwise an amended complaint arrives with the same counts and more adjectives, and the motion is made twice.

Phase 16. Discovery narrowing

[ ] Quantify it in the motion's introduction.
[ ] Unjust enrichment removed — no accounting.
[ ] Conversion removed — no valuation of the thing taken.
[ ] State counts removed — financial discovery narrowed from the whole business to the accused conduct.
[ ] State what remains, so the court sees a proportionate case rather than a request to shrink the plaintiff's claim.
[ ] Recognize this is frequently worth more than the counts themselves.

Phase 17. Opposing the motion

[ ] Lead with the extra element, stated concretely, and the sentence "proving the copyright claim would not prove this count, because ___."
- Trap. If that sentence is hard to write, concede the count and preserve credibility on the others.
[ ] Frame the interest as different, not as an additional fact.
[ ] Check prong one — not fixed, or subject matter outside copyright — before conceding anything.
[ ] Name the savings clause limb if invoking 17 U.S.C. § 301(b).
[ ] Do not argue willfulness, policy difference, or that dismissal leaves no remedy.
[ ] Concede selectively in the first paragraph, which produces better outcomes on the counts that matter.

Phase 18. Constitutional preemption

[ ] Run it where prong one fails, because the result is frequently the same.
[ ] Sears, Roebuck v. Stiffel and Compco v. Day-Brite Lighting — a state may not forbid copying of an unpatented article.
[ ] Bonito Boats v. Thunder Craft Boats — no patent-like state protection for unpatented designs.
[ ] Kewanee Oil v. Bicron — trade secret law is compatible, because it targets improper acquisition.
[ ] Note it applies independently of 17 U.S.C. § 301, so a claim outside the statute is not thereby safe.

Phase 19. Damages mapping

[ ] [Gate] Model both outcomes — motion granted and denied — before the first settlement conversation.
[ ] Record what each surviving count recovers that the others do not.
[ ] Plead contract damages specifically — a lost relationship, a foreclosed market, reliance costs — rather than in copyright's shape.
[ ] Check contract fee provisions, which operate independently of 17 U.S.C. § 505 and can be worth more than the copyright count.
[ ] Time the settlement deliberately. A plaintiff with weak state counts should consider resolving before they are dismissed; a defendant confident of the motion should say so internally rather than negotiating against an exposure it expects to eliminate.

Phase 20. Submission release programme

[ ] [Gate] Nothing unsolicited is read by a decision-maker until a release is signed.
[ ] The release should say: the submission is voluntary and unsolicited; no confidential relationship is created; the recipient may be developing similar material independently; no obligation of payment or credit arises from review; and the submitter retains its rights.
[ ] It should not purport to assign rights, which turns a defensive document into one people refuse to sign.
[ ] Operational design: one intake address; a coordinator who is not a decision-maker; a standard response with the release; nothing forwarded until signed; unreturned submissions destroyed with a record.
[ ] Train for the side channel — an executive's personal address, a mutual acquaintance, a conference — because that is how these claims actually arise.
[ ] Keep the release, the date, and the routing log.

Phase 21. Terms and data arrangements

[ ] Use contract to reach what copyright does not — reverse engineering, benchmarking, automated access, competitive use of output.
[ ] [Gate] Make the assent record load-bearing, since the fallback claims are the ones preemption removes. See the Online Terms Enforceability Checklist.
[ ] For databases, remember facts are not copyrightable — protection is contract plus a technical access theory.
[ ] Recite the intent that a use restriction operates as a contractual obligation between the parties rather than as a right against the world. One sentence, and it frames the ProCD argument later.

Phase 22. The matter template

[ ] The work — described, fixed, within subject matter, registered and when.
[ ] The conduct — one sentence, no characterization.
[ ] Per count — claim, extra element asserted, qualitatively different, pleaded with facts, conclusion.
[ ] Registration position and its consequences for remedies and for suit.
[ ] Forum note — whether the state counts are preemption-proof.
[ ] Damages map.
[ ] The drop list with reasons.
[ ] [Gate] Complete it before the draft is circulated for review.

Outcome. The instinct was seven counts. Copyright in the registered technical drawings survived and unlocked statutory damages, though it reached only copying of the drawings rather than manufacture of the chair. Breach of contract survived and was the count that reached the product, because the non-disclosure agreement restricted use to evaluating the manufacturing relationship. Trade secret survived on the tolerances and joinery method, pleaded with the reasonable measures identified. Breach of confidence was pleaded in the alternative. Conversion was dropped because the prototype was returned; unfair competition was dropped because the partner never represented the chair as the designer's work; and unjust enrichment was dropped as pleaded and preserved only in a form tied to the breached promise. The discipline bought no preemption motion, discovery scoped to the agreement and the development records rather than to a defence of five doomed counts, and a complaint that read as considered.

Phase 23. The screening table

Complete this before the complaint is circulated. Every row is a decision, and the exceptions column is where the drafting effort goes.

| Claim | Usually | Why | The exception that saves it | |---|---|---|---| | Conversion | Preempted | Copying is not dominion over a chattel | Defendant took and kept the physical original | | Unfair competition (copying-based) | Preempted | Same interest, same conduct | A separate misrepresentation about source or sponsorship | | Misappropriation | Preempted | Equivalent to reproduction | The five National Basketball Association v. Motorola elements | | Unjust enrichment | Preempted | The enrichment is the copying | Enrichment from a breached promise | | Breach of contract | Survives | The promise is the extra element | A state statute imposing the term regardless of agreement | | Implied-in-fact contract | Survives | Promise implied from circumstances | An implied-in-law theory, which is no promise | | Breach of confidence | Survives | Requires a confidential relationship | None material | | Trade secret | Survives | Secrecy and improper means | Where the "secret" is a published work | | Fraud | Survives | Separate misrepresentation | Where the only misrepresentation is implicit in the copying | | Right of publicity | Depends | Persona is outside the subject matter | Preempted where the target is a fixed work | | Deceptive trade practices | Preempted | Where premised on copying | A distinct deceptive act | | Tortious interference | Depends | Survives where interference is with a contract | Preempted where it is competing copying | | Trespass to chattels | Depends | Survives for interference with a physical or computing resource | Preempted where the injury is the copying | | Civil conspiracy | Follows the predicate | No independent right | Survives only if the predicate does |

[ ] Draft the copyright count, then add only rows in the "survives" column for which the facts support the element.
[ ] Record the exception relied on for any "depends" row kept in.

Phase 24. Model pleading paragraphs

[ ] Contract.

On 14 March, Plaintiff and Defendant executed a Mutual Non-Disclosure Agreement. Section 3 provided that Confidential Information would be used "solely for the purpose of evaluating a potential manufacturing relationship" and for no other purpose. On 2 April, in reliance on that promise, Plaintiff delivered the Technical Drawings. Defendant did not proceed with the relationship and later used the Drawings to manufacture the Accused Chair, breaching Section 3.

[ ] Implied-in-fact contract.

Before disclosing the concept, Plaintiff stated that the material was shared for the purpose of a possible production deal and on the understanding that Plaintiff would be paid and credited if it were used. Defendant's representatives did not object, asked Plaintiff to continue, and requested written materials. It is the custom and practice in the industry that concepts presented in such circumstances are disclosed on the understanding that payment will follow use.

[ ] Breach of confidence.

The Technical Drawings were disclosed in confidence, in circumstances in which Defendant knew or should have known the material was provided for a limited purpose and was not to be used or disclosed otherwise. Defendant accepted the disclosure on that basis.

[ ] Right of publicity.

Defendant used Plaintiff's photograph in a nationwide advertising campaign for its products, without consent, in a manner implying that Plaintiff endorsed them.

[ ] Trade secret.

The Drawings disclosed tolerances and a joinery method not generally known and not readily ascertainable by proper means, deriving independent economic value from not being known. Plaintiff maintained secrecy by [measures]. Defendant acquired them under a duty to maintain secrecy and used them in breach of that duty.

[ ] [Gate] Check each against the test: would proving the copyright claim prove this count? If yes, the paragraph has not done its job.

Phase 25. Sector boxes

Run the base checklist, then the boxes for the sector.

Entertainment and media.

[ ] Idea submission is the dominant question; Montz v. Pilgrim Films & Television is litigated continuously.
[ ] Confirm whether a release exists, and produce it with any motion.
[ ] For a plaintiff, plead the meeting in detail — pre-disclosure statement, attendees, request to continue, industry custom.
[ ] Expect the defence to be an unsolicited-submission characterization; plead against it.

Software and technology.

[ ] Contract is the workhorse, reaching reverse engineering, benchmarking, automated access, and competitive use of output.
[ ] The assent record is the case. See the Online Terms Enforceability Checklist.
[ ] Anticipate the Vault v. Quaid Software argument where assent is thin.

Manufacturing and industrial design.

[ ] Note the recurring limit: copyright in a technical drawing does not prevent building the article depicted.
[ ] Contract and trade secret are the counts that reach the product.
[ ] Check whether the useful article itself is outside the subject matter, which moves the analysis to Phase 18.

Fashion and consumer products.

[ ] Frequently outside copyright's subject matter for the article, engaging Bonito Boats v. Thunder Craft Boats and trade dress instead.
[ ] Surface ornamentation may be separately protectable, which changes prong one for that element.

Advertising and talent.

[ ] Publicity framing decides everything; run Phase 9 first.
[ ] Confirm whether a licence covers the underlying work, which is what made Laws v. Sony Music Entertainment come out as it did.

Data and information services.

[ ] Facts are not copyrightable; protection is contract plus a technical access theory.
[ ] Treat the hot-news claim as a pleading of last resort, not a first line.
[ ] See Running or Defending a Data Scraping Program.

Phase 26. Thirty-day plan

For a matter arriving with a copying complaint, either side.

[ ] Days 1-2. Read the complaint for substance. As defendant, diary the removal deadline.
[ ] Days 2-5. Complete the worksheet, count by count.
[ ] Days 3-7. Confirm the registration position — registered, timely, or neither — and what that permits.
[ ] Days 5-10. As plaintiff, redraft the surviving counts with the extra element pleaded factually, and write the drop list with reasons.
[ ] Days 5-12. As defendant, assess removal, decide, and file if removing.
[ ] Days 10-20. Motion drafted count by count, with the discovery narrowing quantified and the with-prejudice request identified.
[ ] Days 15-25. Damages mapping for both outcomes — motion granted and denied — before any settlement conversation.
[ ] Days 25-30. File, and diary the opposition and reply.

What is deliberately not done in thirty days. Merits investigation of the copyright count, which can wait. The preemption analysis is a paper exercise on the pleadings and it should not be delayed for facts it does not depend on.

Phase 27. Evidence and document requests

What the surviving counts need, assembled early because it differs from what the copyright count needs.

[ ] The agreement, executed, with the operative section and any amendments.
[ ] Acceptance evidence where the agreement is a click-through or a form — the flow, the version, the timestamp.
[ ] Correspondence surrounding the disclosure, which supplies the circumstances for confidence and implied contract.
[ ] Meeting records and calendars for any pitch or presentation, with attendees.
[ ] Industry custom evidence — trade association materials, expert declarations, prior dealings — for an implied contract count.
[ ] Reasonable measures documentation for the trade secret count: access controls, marking, confidentiality obligations, and distribution records.
[ ] The registration certificate and deposit, with the effective date.
[ ] Advertising and marketing materials for a publicity count, showing the commercial context and implied endorsement.
[ ] Any release the defendant will rely on, and the routing records showing when it was signed relative to review.
[ ] Development records on the defendant's side — independent creation evidence, which defeats copying but not breach.
[ ] Damages materials per surviving count, since contract damages may reach losses copyright would not compensate.

Why this belongs in the checklist. The copyright count needs access and similarity evidence; the surviving state counts need relationship and promise evidence, which sits in different files and with different people. A discovery plan built only for the copyright count under-serves the counts that actually reach the defendant's conduct.

Phase 28. Quarterly and programme metrics

For a firm or in-house team handling these matters regularly.

[ ] Complaints filed with a completed worksheet in the file, as a proportion. Target: all of them.
[ ] Counts pleaded per complaint, tracked over time. A falling number is the analysis working.
[ ] Preemption motions faced, and counts lost to them. Each loss is a worksheet that was not run or not believed.
[ ] Preemption motions brought, and counts dismissed. Track with-prejudice outcomes separately, since those are the ones that do not return.
[ ] Removals effected on complete preemption, and the outcome of the subsequent motion.
[ ] Submission releases obtained, as a proportion of unsolicited submissions received — for any client with an intake programme.
[ ] And one qualitative check: for each matter closed, whether the count that ultimately carried the case was the copyright count or a surviving state count. In this practice it is frequently the latter, and knowing that changes how the next complaint is drafted.

Phase 29. Three things to say to the client

[ ] When they want seven counts. "Five of these will be dismissed and the motion will cost us a month. The four that survive are stronger without them, and a complaint that looks considered is treated differently than one that looks reflexive."
[ ] When there is no written agreement. "Copyright will not reach what they actually did, because they took the concept rather than the words. The claim that reaches it is a promise — and whether one exists depends on what was said before you disclosed, who was in the room, and what the custom is in your industry. Tell me about that meeting in detail."
[ ] When they receive submissions. "Every unsolicited pitch read without a release is a potential claim that you used somebody's idea, and it survives preemption precisely because there was no paperwork. A one-page release, signed before anyone with authority reads anything, prevents the whole category."
[ ] And one thing to say to yourself before filing. Write the sentence "proving the copyright claim would not prove this count, because ___" for every state count. Any count where that sentence cannot be finished convincingly will be dismissed, and it is better to discover that at the drafting stage than in an order three months later.

Phase 30. Why the discipline pays

[ ] The outcome is determined at the drafting stage. Preemption is one of the few doctrines where a lawyer working alone with a worksheet, before any adversary is involved, decides how the case will go.
[ ] Counts lost to preemption are frequently lost permanently. Where the defect is in the theory rather than in the pleading — conversion premised on copying, unfair competition premised on the same conduct — no amendment cures it, and a dismissal with prejudice ends them.
[ ] The counts that survive are the ones that reach the defendant's conduct. Copyright in a drawing does not prevent building the article; the contract that restricted use does. The state counts are not decoration around a federal claim, they are frequently the case.
[ ] The asymmetry is the whole argument. Twenty minutes of analysis in advance, against a month of motion practice and a permanent loss of theories afterwards.
[ ] [Gate] Put the worksheet in the matter template, and require it completed before any copying complaint is circulated for review.

[ ] And one habit for the whole practice group. Circulate the drop list, not only the complaint. A one-line note on each count that was considered and not pleaded tells the reviewing partner that the analysis happened, and it becomes the institutional memory that stops the next associate pleading conversion for copying.

Key Authorities at a Glance

| Authority | Proposition | |---|---| | 17 U.S.C. § 301(a) | The two-prong test | | 17 U.S.C. § 301(b) | Savings clause | | 17 U.S.C. § 102 | Subject matter; idea-expression | | 17 U.S.C. § 103 | Compilations and derivative works | | 17 U.S.C. § 106 | Rights against which equivalence is measured | | 17 U.S.C. § 411 | Registration precondition | | 17 U.S.C. § 504 | Statutory damages | | 17 U.S.C. § 505 | Attorney fees | | 28 U.S.C. § 1367 | Supplemental jurisdiction | | Computer Associates International v. Altai | Extra element test | | Briarpatch v. Phoenix Pictures | Unjust enrichment preempted | | Ultra-Precision Manufacturing v. Ford Motor | Enrichment analysis | | ProCD v. Zeidenberg | Contract not preempted | | Bowers v. Baystate Technologies | Contractual reverse engineering ban | | Vault v. Quaid Software | State statute preempted | | Montz v. Pilgrim Films & Television | Implied-in-fact contract survives | | Forest Park Pictures v. Universal Television | Idea submission survives | | Desny v. Wilder | Origin of the claim | | Toney v. L'Oreal USA | Publicity not preempted | | Laws v. Sony Music Entertainment | Publicity preempted where a work is the target | | Maloney v. T3Media | Persona versus fixed work | | National Basketball Association v. Motorola | Hot news elements | | Kewanee Oil v. Bicron | Trade secret survives | | Bonito Boats v. Thunder Craft Boats | Constitutional preemption | | Sears, Roebuck v. Stiffel | No state bans on copying | | Compco v. Day-Brite Lighting | Companion holding | | Dastar v. Twentieth Century Fox | No trademark attribution right | | 18 U.S.C. § 1836 | Federal trade secret claim | | 18 U.S.C. § 1839 | Definitions and reasonable measures | | 15 U.S.C. § 1125 | False designation of origin |

The five things people get wrong

Pleading conversion for copying. It is the count most reliably dismissed in this entire area, because conversion protects possession of a chattel and copying dispossesses nobody. Including it makes the rest of the complaint look unconsidered, which affects how a judge approaches the counts that should survive.

Believing "they only took the idea" defeats preemption. The subject matter prong reaches unprotectable elements within copyrightable works. A state claim protecting ideas embodied in a fixed work is preempted because Congress chose not to protect them — the argument confirms the prong rather than defeating it.

Adding scienter and calling it an extra element. Willfulness, commercial purpose, and bad faith are additional facts describing the same right asserted more emphatically. The element must be qualitatively different: a promise, a confidential relationship, secrecy plus improper means, or a misrepresentation separate from the copying.

Framing a publicity claim as reproduction. "Defendant reproduced and distributed the photograph" targets a fixed work and is preempted under Laws v. Sony Music Entertainment. "Defendant used plaintiff's image in advertising implying endorsement" targets the persona and survives under Toney v. L'Oreal USA. The facts are identical; the framing decides it.

Pleading state-only to avoid the registration precondition. A plaintiff who has not registered, or registered late, sometimes pleads only state claims deliberately — and complete preemption permits removal followed by dismissal of exactly those counts, leaving the plaintiff worse off than if it had registered before filing.