Pleading Around Preemption: A Practitioner's Guide to the Extra Element, Contract Claims, and Removal Strategy
By Casey Scott McKay ·
This guide drafts a complaint that survives a preemption motion and attacks one that does not, working the two-prong analysis count by count before anything is filed. It specifies the subject matter prong including its reach into unprotectable elements, then the extra element test and the qualitative difference standard that decides most cases. It drafts the surviving claims properly - contract with the promise pleaded rather than the taking, implied contract with the circumstances, breach of confidence with the relationship, trade secret with secrecy and improper means, and publicity framed to target the persona rather than a fixed work. It then covers removal on complete preemption, the registration precondition that makes state-only pleading attractive and preemption fatal to it, early motion practice, and the discovery narrowing that is frequently worth more than the counts.
IP and Technology > Copyright | Guide | Published 3 October 2023 - Updated 3 January 2025 | Casey Scott McKay - marksy.us
Summary. This guide drafts a complaint that survives a preemption motion and attacks one that does not, working the two-prong analysis count by count before anything is filed. It specifies the subject matter prong including its reach into unprotectable elements, then the extra element test and the qualitative difference standard that decides most cases. It drafts the surviving claims properly — contract with the promise pleaded rather than the taking, implied contract with the circumstances, breach of confidence with the relationship, trade secret with secrecy and improper means, and publicity framed to target the persona rather than a fixed work. It then covers removal on complete preemption, the registration precondition that makes state-only pleading attractive and preemption fatal to it, early motion practice, and the discovery narrowing that is frequently worth more than the counts.
Keywords: two prong worksheet · subject matter analysis · extra element identification · qualitative difference test · contract claim drafting · implied contract facts · breach of confidence pleading · trade secret elements · publicity claim framing · misrepresentation separation · count selection · complete preemption removal · registration precondition · supplemental jurisdiction · early motion practice · discovery narrowing · submission release policy · terms of use restrictions · dismissal with prejudice · settlement effect
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