Legal Memorandum: Unfair Competition Law and Trademark Claims

Issue: In California, is an unfair competition law claim preempted by a trademark claim based on the same facts?

Area of Law: Antitrust & Trade Regulation, Intellectual Property Law
Keywords: Unfair Competition Law Claim; Preemption circumstances; Trademark Claim
Jurisdiction: California
Cited Cases: None
Cited Statutes: None
Date: 11/01/2005

This issue was addressed by the court in Butler v. Target Corp. (C.D. Cal. 2004) 323 F. Supp. 2d 1052, 1057.  In that case, the plaintiffs, a singing group, recorded a song that the defendant, Target, incorporated into a commercial, allegedly without the plaintiffs’ permission.  The plaintiffs sued, alleging, inter alia, unfair competition law violations.  When defendant Target moved to dismiss on the ground of copyright preemption, the plaintiff contended that the claim was not preempted because the defendant “confus[ed] Plaintiff’s fans into believing that [plaintiffs] endorsed Target and consented to the use of their voices, music, lyric and ‘signature song.'”  Id. at 1057.  The court rejected the argument succinctly, holding, “Plaintiffs appear to be asserting a right ‘which is infringed by the mere act of reproduction, performance, distribution or display.’  Therefore, this claim is preempted insofar as it is based on Defendants’ use of the Recording in the Commercials.”  Id. 


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