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BanxCorp v. Costco Wholesale Corp.

Citations: 723 F. Supp. 2d 596; 97 U.S.P.Q. 2d (BNA) 1198; 2010 U.S. Dist. LEXIS 70380; 2010 WL 2802153Docket: Case 09-CV-1783 (KMK)

Court: District Court, S.D. New York; July 14, 2010; Federal District Court

Narrative Opinion Summary

In this case, the plaintiffs, operating under the business name BanxQuote, brought multiple claims against defendants, including Costco Wholesale Corporation and Capital One Financial Corporation. The claims involve copyright infringement, misappropriation, fraud, breach of contract, and unfair competition related to the unauthorized use of BanxQuote's financial indices. The plaintiffs allege that Capital One breached a licensing agreement by redistributing these indices to Costco without proper disclosure. The defendants filed a motion to dismiss, which led the court to examine various legal principles, including copyright infringement requirements and the DMCA. The court found that the copyright infringement and DMCA claims were plausible, denying the motion to dismiss these counts. However, it dismissed the claims for unfair competition and unjust enrichment, ruling them preempted by the Copyright Act. The fraud claim was deemed duplicative of the breach of contract claim and was also dismissed. The court allowed the breach of contract claim to proceed, noting that the license agreement constituted an 'extra element' preventing preemption. Ultimately, punitive damages were struck from the plaintiffs' demands, and Mehl was dismissed for lack of standing, leaving BanxCorp to continue the suit.

Legal Issues Addressed

Breach of Contract and Preemption

Application: The court found that a valid license agreement represents an 'extra element' that can prevent preemption under the Copyright Act.

Reasoning: The court concludes that breach of contract actions are generally not preempted by the Copyright Act, particularly in the case of license agreements.

Copyright Infringement Requirements

Application: The plaintiffs must demonstrate ownership of a valid copyright and unauthorized copying of the copyrighted work.

Reasoning: To establish copyright infringement, a plaintiff must demonstrate ownership of a valid copyright and unauthorized copying of the copyrighted work, as outlined in various cases.

Digital Millennium Copyright Act Violation

Application: The plaintiffs claim that defendants intentionally altered CMI without authority and distributed the altered BanxQuote Indices.

Reasoning: Plaintiffs must allege three elements to establish a violation of the DMCA: (1) the existence of copyright management information (CMI) on the BanxQuote Indices; (2) the intentional removal or alteration of that information; and (3) that this removal or alteration was intentional.

Fraud Claim Duplicative of Breach of Contract

Application: The fraud claim was dismissed as duplicative of the breach of contract claim because it was based on the same facts and did not establish a separate legal duty.

Reasoning: A fraud claim cannot be pursued based on misrepresentations regarding acts or intentions tied to a contract unless a distinct legal duty exists apart from the contractual obligations.

Hot News Misappropriation under New York Law

Application: The plaintiffs allege that the defendants engaged in unauthorized reproduction and distribution of the BanxQuote Indices, constituting hot news misappropriation.

Reasoning: A viable cause of action for misappropriation of hot news exists under New York law, as affirmed by the Second Circuit, which determined it is not preempted by federal law.

Preemption of State Law Claims under the Copyright Act

Application: The court determined that the state law claims for unfair competition and unjust enrichment were preempted as they were based solely on copying protected expression.

Reasoning: The Second Circuit has held that if the actions constituting unjust enrichment infringe rights protected by the Copyright Act, the claim is preempted.