September 22, 2011
Copyright Preempts State Tort Claims Over Loss of Control Over Website -- 78th Infantry Div. v. Oprendek
[Post by Venkat Balasubramani]
78th Infantry Division, WWII Living History Ass'n v. Oprendek, 11-165 (D.N.J.; Aug 4, 2011)
This is another web vendor dispute. Professor Goldman posted about one earlier this week. As in that case, here the parties did not heed his admonition (which cannot be repeated often enough):
Hey people, when you have vendors help run your website, PLEASE dot your i's and cross your t's. When the shit hits the fan and the contract isn't in place or clear enough, the resulting litigation fusillade can destroy your life.
The 78th Infantry Division, World War II Living History Association is a non-profit organization that provides World War II reenactments and educates the public about World War II. According to the facts as the court describes them, the Association registered the 78thinfantry.com domain name in 2003, and in 2006 Oprendek joined the Association "and volunteered to be the webmaster." He recommended that the Association transfer the domain name to him, "claiming that 'the website needed more space,' and that the website would be easier to maintain under his control." We all know what happens next.
In 2009, Oprendek resigned, and instead of transferring the domain name back to the Association, he allegedly cancelled it and registered the domain name in his own name. He also allegedly used "content from the Association's website" to create a competing organization which he formed with some former members of the Association. Oprendek then registered the website's contents with the copyright office.
The Association sued in state court, alleging conversion, trespass to chattels, breach of the duty of loyalty, tortious interference, and unjust enrichment. Oprendek removed the lawsuit to federal court, citing preemption. The Association moved to remand, and in a sweeping ruling, the court says that the lawsuit stays in federal court due to copyright preemption.
The court says that "the core" of the Association's conversion claim "is the unauthorized taking of a website domain and its contents." Conversion under state law is the exercise of control over property "without authorization," and the court says that this element is "conceptually indistinguishable from an unauthorized taking in the copyright context." The court finds that a trespass to chattels cause of action is similar to a conversion claim, and both of these claims are preempted.
For whatever reason, the court does not separate out the Association's claim for dispossession of the domain name and the contents of the website. Wrongfully taking control of someone's domain name can state a claim for conversion. Recently, the Ohio Court of Appeals found in Eysoldt v. Proscan that GoDaddy could be held liable for preventing a customer from accessing their domain name and transferring it. This is not the same as preventing someone from accessing or updating the contents of their website, and this difference should be enough to avoid preemption. Preventing someone from accessing the back-end of their website so they cannot update the site's contents is a somewhat closer question, but even this arguably does not fall squarely within the rights granted by the Copyright Act. The question in my mind is whether this overlaps with the right to modify and create derivative works as provided in the Copyright Act. There's also the issue that the ownership of the underlying contents is at issue, and this is sometimes resolved with reference to state law.
The Ground Zero Museum web-vendor dispute Eric posted about addressed almost exactly the same preemption issue, and the court in that case also conflates access to the server, access to the website, and control over the domain name. The court comes to the opposite conclusion in that case, finding the trespass claim not preempted:
Plaintiffs do not contend that Wilson reproduced the content of the website, prepared a derivative work, distributed copies of the website, or displayed it in an alternate public forum. Instead, one component of Plaintiffs' claim is that Wilson deprived them of access to or possession of their own website or specific webpages for a period of time. This does not overlap with the exclusive rights granted to copyright holders.
The discussions from both of these cases were somewhat confused (and confusing). As Eric mentioned, in looking at the issue, it's worth separating and analyzing separately: (1) the domain name, (2) the content of the website, (3) access to the content of the website (which in many cases probably can't form the basis for a claim that does not survive preemption), and (4) access to the physical server itself.
This is a messy dispute all the way around, and Eric's admonition with reference to the Ground Zero web dispute is probably the big takeaway: do not transfer your domain name to your web vendor without documentation in place. I also thought the court's conclusion on the preemption issue was worth flagging and worth contrasting with the GZM case.