IP Law Daily, COPYRIGHT—M.D. Fla.: Copyright claim proceeds despite arguments that gun grip designs were not original, (Jun 24, 2022)

By Patricia K. Ruiz, J.D.

The court noted that only a modicum of creativity is required to make a design original.

The Middle District of Florida denied a motion to dismiss a copyright infringement claim by a gun grip manufacturer against a competitor but granted the motion as to common law unfair competition and Florida Deceptive and Unfair Trade Practices Act (FDUTPA) claims. The court held that the complaint alleges a prima facie case of copyright infringement but that the Copyright Act preempted the remaining claims, as the causes of action require no extra element for recovery making the action qualitatively different from a copyright infringement claim (Wicked Grips LLC v. Badaan, June 22, 2022, Mizelle, K.).

Alleged infringement. Wicked Grips, LLC, a Michigan-based company that designs and manufactures handgun grips and accessories, uses designs that are meticulously creative and often involve original, hand-drawn designs. While the grips feature common imagery, such as tarot cards, American flags, and spartan helmets, Wicked reimagined the designs to feature “unique backdrops, with unique artwork.” The gun grips are featured on Wicked’s website, which it registered with the U.S. Copyright Office. Wicked also registered its design for the “Death Tarot Card” grip.

Despite the copyrights, Cander Trade LLC, Big Cat Gear LLC, and HB Arms Inc. created exact likenesses of Wicked’s grip designs and sold them online on various websites. On one occasion, the owner of one of the defendant companies ordered a set of Wicked’s AR-15 rail covers and began selling duplicate rail covers months later. The reproductions include nuances specific to Wicked’s designs, and Wicked’s complaint attaches sets of side-by-side images to show the similarity between Wicked’s designs and those sold by the defendant companies.

Lawsuit. After discovering the alleged infringement, Wicked sent the defendant companies cease and desist letters, but the companies continued offering the infringing articles for sale. Wicked sued, alleging that the defendant companies used and sold its gun grip designs in violation of copyright law, common law unfair competition, and Florida’s Deceptive and Unfair Trade Practices Act (FDUTPA). The defendant companies moved to dismiss, arguing that Count I, copyright infringement, fails to state a claim; that Counts II through V are preempted or fail to state a claim.

Copyright infringement allegations. As to Count I, a prima facie case of copyright infringement requires (1) ownership of a valid copyright, and (2) copying of a protected element of the work, but the court noted that the second element was not at issue. The first element additionally requires a plaintiff to allege that it complied with statutory formalities, such as registration, and that the work is original. The defendant companies argue that Count I must be dismissed, as Wicked failed to allege that it owns the website or the grip designs that the companies allegedly infringed and failed to allege valid copyrights. However, the court found that Wicked adequately alleged it owns a valid and original copyright on the grips design, as the complaint describes that Wicked’s designer created the grip designs as an employee and includes details surrounding the transfer of all rights and ownership of the website’s copyright to Wicked. The court also found that the allegations and accompanying registration certificates included with Wicked’s complaint satisfy the prerequisites for filing suit. Finally, the court held that the inclusion of elements not original to Wicked does not render the designs unoriginal and that Wicked satisfied the requirement of originality, noting that a modicum of creativity is enough for the work to be copyrightable.

Preemption. As to Counts II through V, the court wrote that the exclusive rights under the Copyright Act include the right to reproduce the copyrighted work, to prepare derivative works, and to distribute copies to the public. In the Eleventh Circuit, a claim falling within the subject matter of copyright is preempted unless it requires an extra element for recovery, making the action qualitatively different from a copyright infringement claim. Applying that standard, the court found that Wicked’s claims of common law unfair competition and violation of the FDUTPA require no such extra element and granted the defendant companies’ motion to dismiss.

The Case is No 8:21-cv-02131-KKM-SPF.

Attorneys: J. Carlton Mitchell (Older Lundy & Alvarez) for Wicked Grips LLC. Brittany J. Maxey-Fisher (Maxey-Fisher, PLLC) for Cander Trade LLC and Henry Badaan.

Companies: Wicked Grips LLC; Cander Trade LLC

Cases: Copyright FloridaNews