Garrido v. Burger King Corp.

• Decision Date: 27 February 1990
• Docket Number: No. 88-483,88-483
• Parties: 1990 Copr.L.Dec. P 26,536, 15 U.S.P.Q.2d 1385, 15 Fla. L. Weekly D543 George L. GARRIDO, individually, and The Garrido Group Advertising, Inc., Appellants, v. BURGER KING CORPORATION, a Florida corporation, and Thomas Kupciunas, individually, Appellees.
• Court: Florida District Court of Appeals

Page 79

558 So.2d 79

1990 Copr.L.Dec. P 26,536, 15 U.S.P.Q.2d 1385,

15 Fla. L. Weekly D543

George L. GARRIDO, individually, and The Garrido Group Advertising, Inc., Appellants, v. BURGER KING CORPORATION, a Florida corporation, and Thomas Kupciunas, individually, Appellees.

No. 88-483.

District Court of Appeal of Florida Third District.

Feb. 27, 1990.

Bailey, Dawes & Hunt and Mercedes C. Busto, Miami, and Aldo Busot, Jr., Coral Gables, for appellants.

Adams, Hunter, Angones, Adams, Adams and McClure, Miami, Breed, Abbott & Morgan and Stephen R. Lang and Brian L. Sullivan and Howard S. Wolfson, New York City, for appellees.

Before NESBITT, FERGUSON and LEVY, JJ.

NESBITT, Judge.

George L. Garrido and his firm, The Garrido Group Advertising, Inc. [Garrido], appeal from a grant of summary final judgment in favor of the Burger King Corporation and Thomas Kupciunas [Burger King] entered on the ground of lack of subject matter jurisdiction. Garrido's complaint raised a number of legal theories based on Burger King's allegedly unauthorized and uncompensated use of ideas contained in a proposed advertising campaign. Based on the following rationale, we affirm the summary judgment inasmuch as it concerns the causes of action for conversion, theft and conspiracy. However, we reverse the summary judgment and remand for further proceedings on the claims for misappropriation, misrepresentation and implied contract.

Background Facts

In 1985, George Garrido, president of Garrido Group, an advertising company, telephoned defendant Thomas Kupciunas, Burger King's Vice President of Marketing, offering to make a presentation of a proposed advertising campaign. Burger King employees agreed to meet with Garrido representatives. At the subsequent meeting, which was the sole meeting between the parties, Garrido and two of his employees made their presentation to Kupciunas and two other Burger King employees. As part of the presentation, which focused on reaching the general fast food consumer market, and specifically, Hispanic consumers, the Garrido Group presented various written and visual materials, including a television storyboard, a series of slides, a demonstration tape of a musical jingle and a creative strategy statement. In the complaint, Garrido alleged that the proposed campaign was "to impress on the consumer's mind the specific notion that 'everywhere you go in America there is a Burger King town.' " As the presentation materials demonstrate and as the complaint alleges, the campaign themes were, "It's my Whopper, it's by Burger King" and "It's my town, it's my Burger King."

At the close of the presentation, Kupciunas told Garrido to contact him in seven weeks. Garrido called Kupciunas seven weeks later and several times after that, but was never able to speak with Kupciunas. Then, approximately nine months later, Burger King began an advertising campaign called "Burger King Town."

Garrido subsequently filed this suit, alleging the following causes of action against Burger King:

1) misrepresentation

2) breach of implied contract

3) misappropriation

4) conversion

5) theft pursuant to section 812.014(1), Fla.Stat. (1985)

6) conspiracy.

The misrepresentation, conversion, and conspiracy claims were also alleged against Kupciunas individually.

Defendants ultimately moved for summary judgment on the ground that all the claims were preempted by the Copyright Act of 1976, 17 U.S.C. section 301. Summary judgment was granted and this appeal ensued.

Conspiracy Claim

We first address the cause of action for conspiracy. We hold that based on the bare allegations alleged in the complaint, the trial court correctly judged there to be no genuine issue of material fact as to plaintiff's cause of action for conspiracy against Burger King and its employee, Kupciunas. See e.g., Green v. First Am. Bank and Trust, 511 So.2d 569, 573 (Fla. 4th DCA 1987), ("An appellate court will affirm an order of a trial court on appeal consistent with any theory revealed by the record, regardless of the reasons stated in the order under review."), review denied, 520 So.2d 584 (Fla.1988). According to the complaint, Kupciunas acted "within the scope of his employment" and "pursuant to his authority as employee and agent of Burger King." There was no allegation that Kupciunas acted in a personal capacity apart from his employee status. A corporation cannot conspire with its own directors, officers or employees. Hackett v. Metropolitan Gen. Hosp., 422 So.2d 986, 988 n. 2 (Fla. 2d DCA 1982); Buckner v. Lower Florida Keys Hosp. Dist., 403 So.2d 1025, 1029 (Fla. 3d DCA 1981), review denied, 412 So.2d 463 (Fla.1982).

Copyright Preemption

The Copyright Act applies to causes of action based on "works of authorship that are fixed in a tangible medium of expression." 17 U.S.C. § 301(b)(1) (1976). A work falls into the subject matter covered by the Copyright Act even if the work "fails to achieve Federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain." H.R.Rep. No. 1476, 94th Cong., 2d Sess. at 131, reprinted in 1976 U.S.Code Cong. & Admin.News at 5659, 5747. The act does not preclude others from using ideas or information revealed in an author's copyrighted work; instead it protects only the author's original written form of expression of his ideas and information. See Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 470-71, 98 L.Ed. 630 (1954); Suid v. Newsweek Magazine, 503 F.Supp. 146 (D.D.C.1980); 17 U.S.C. § 102(b). In other words, even though the ideas embodied in a copyrighted work are not themselves protected by copyright, they are preempted by the Copyright Act. U.S.C. 17 § 102(b). 17 U.S.C. section 102(b) states:

In no case does copyright for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained, illustrated, or embodied in such work.

It has been written that:

Section 102(b) is an embodiment of the idea-expression distinction in copyright law. The distinction between idea and expression, or the "idea-expression dichotomy" as it is often called, is the term of art used in copyright law to indicate the elements in a copyrighted work which the grant of the copyright monopoly does not take from the public. It differentiates those elements in a copyrighted work which are protected from those which may be freely copied and plagiarized by the public. It is a limit of the protection extended by the statutory monopoly of copyright to subject matter included under [the act], not a definition of excluded subject matter.

Abrams, Copyright, Misappropriation, and Preemption: Constitutional and Statutory Limits of State Law Protection, 1983 Sup.Ct.Rev. 509, 563 (footnotes omitted).

In this case, the written and visual advertising materials plaintiffs presented to Burger King were copyrightable; thus, the ideas portrayed in those materials fell into the subject matter preempted by the Copyright Act. See Flemming v. Ronson Corp., 107 N.J.Super. 311, 258 A.2d 153, 157 (1969), aff'd, 114 N.J.Super. 221, 275 A.2d 759 (1971).

Nevertheless, state law causes of action are not totally preempted by the federal act. Only those causes of action that involve rights equivalent to those protected by the act are preempted. 17 U.S.C. § 301(a) (1976). Section 106 of the act states that the rights within the general scope of copyright are those which prohibit reproduction, performance, distribution or display of a work. 17 U.S.C. § 106; 1 Nimmer on Copyright § 1.01[B] at 1-11 (1987). Therefore, those state law causes of action which contain an element qualitatively different from a copyright infringement claim may be maintained. 17 U.S.C. § 301; Nimmer, § 1.01[B] at 1-11 to 1-12.

As previously stated, the advertising materials which were the tangible expression of the plaintiff's ideas in the instant case fall within the subject matter of copyright. Consequently, protection of the ideas embodied in those materials is precluded according to the terms of the Copyright Act if plaintiff's causes of action are "equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106." Crow v. Wainwright, 720 F.2d 1224, 1225-26 (11th Cir.1983), cert. denied, 469 U.S. 819, 105 S.Ct. 89, 83 L.Ed.2d 35 (1984).

Application of the Copyright Act to Plaintiff's Claims

a. Conversion and Theft Claims

Plaintiff's claims for conversion and theft of the advertising campaign ideas conveyed to Burger King are preempted under section 301(a) of the act because the elements of those claims are equivalent to those protected and thus preempted by the act. The gravamen of these two claims is the unauthorized taking and/or use of the ideas embodied in Garrido's advertising materials. The elements required to prove each of these claims are not qualitatively different from those required to prove copyright infringement. See Ehat v. Tanner, 780 F.2d 876 (10th Cir.1985), cert. denied, 479 U.S. 820, 107 S.Ct. 86, 93 L.Ed.2d 39 (1986); Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985); Crow v. Wainwright, 720 F.2d at 1224.

b. Misappropriation Claim

The claim of misappropriation is not so easily disposed of. As stated in Nash v. CBS, Inc., 704 F.Supp. 823, 834 (N.D.Ill.1989) , "The 'goal' underlying copyright law is the same as that driving the tort of misappropriation: balancing the need to provide economic incentives for authorship against the preservation of the freedom to imitate." In passing the Copyright Act, Congress did not intend to eliminate totally any form of the tort of misappropriation. " 'Misappropriation' is not necessarily synonymous with copyright infringement and thus a cause of action labeled as 'misappropriati...