`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`
`
`
` :
`
` :
`
`
`
` :
`
`Civil Action No. GLR-20-2478
`
`
`PACESETTER HOMES, INC.,
`
`
`
`
`v.
`
`
`GBL CUSTOM HOME DESIGN, INC., :
`et al.,
`
`
`
`
` :
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`
`
`THIS MATTER is before the Court on Defendant CRH Contracting, LLC’s
`
`MEMORANDUM OPINION
`
`(“CRH”) Motion Pursuant to Fed. R. Civ. P. 12(b)(6) to Dismiss Complaint Count II’s
`
`Request for Statutory Damages and Attorneys’ Fees and Counts III and IV in Their Entirety
`
`or, in the Alternative, for Partial Summary Judgment on Count II’s Request for Statutory
`
`Damages and Attorneys’ Fees (ECF No. 15); Defendant GBL Custom Home Design, Inc.’s
`
`(“GBL”) Motion to Dismiss Plaintiff’s Claims for Statutory Damages and Attorney’s Fees,
`
`or in the Alternative, Motion for Partial Summary Judgment (ECF No. 16); and Defendant
`
`Garceau Realty Inc.’s (“Garceau”) Motion to Dismiss Complaint Count V’s Request for
`
`Statutory Damages and Attorneys’ Fees and Counts VI and VII in Their Entirety or, in the
`
`Alternative, for Partial Summary Judgment on Count V’s Request for Statutory Damages
`
`and Attorneys’ Fees (ECF No. 19). The Motions are ripe for disposition, and no hearing is
`
`necessary. See Local Rule 105.6 (D.Md. 2021). For the reasons outlined below, the Court
`
`will deny GBL’s Motion and grant in part and deny in part CRH’s and Garceau’s Motions.
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 2 of 18
`
`I.
`
`BACKGROUND1
`
`A.
`
`Factual Background
`
`Plaintiff Pacesetter Homes, Inc. (“Pacesetter”) is a corporation engaged in the
`
`design and construction of residential homes. (Compl. ¶¶ 1, 14). Like Pacesetter, Defendant
`
`CRH is in the business of home design and construction. (Id. ¶ 75). Defendant GBL
`
`provides custom home design services. (Id. ¶ 54). Finally, Defendant Garceau is a realty
`
`company that provides real estate services. (Id. ¶ 81).
`
`In 2017, Pacesetter completed architectural plans for a work entitled “Pacesetter
`
`Homes Charlotte Model” (the “Charlotte Model”). (Id. ¶ 11). Pacesetter subsequently filed
`
`the architectural plans for the Charlotte Model with the Baltimore County Building Plans
`
`Review in preparation to construct a residence at 4112 Baltimore Street in Baltimore,
`
`Maryland. (Id. ¶ 12). Pacesetter also listed the Charlotte Model on a Multiple Listing
`
`Website (“MLS”) on December 7, 2017 (the “2017 Listing”). (Id. ¶ 13).
`
`In December 2019, Pacesetter became aware of an MLS listing for a house under
`
`construction at 2808 New York Avenue in Baltimore that showed “substantially the same”
`
`plans as the Charlotte Model, as well as unauthorized copies of a floorplan and photographs
`
`of interior rooms that had appeared in Pacesetter’s 2017 Listing. (Id. ¶¶ 16–17). According
`
`to the MLS listing, CRH was the owner of the property and Garceau was the “listing
`
`office.” (Id. ¶ 16).
`
`
`1 Unless otherwise noted, the Court takes the following facts from Pacesetter’s
`Complaint and accepts them as true. See Erickson v. Pardus, 551 U.S. 89, 94 (2007) (citing
`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555–56 (2007)).
`
`2
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 3 of 18
`
`In January 2020, Pacesetter discovered listings for houses located at 5415 W. North
`
`Avenue and 5411 W. North Avenue in Baltimore that once again showed “substantially
`
`the same” plans as the Charlotte Model and included unauthorized copies of a floorplan
`
`and photographs that had appeared in Pacesetter’s 2017 Listing. (Id. ¶¶ 18–19, 20–21).
`
`Once again, CRH was identified as the owner of the properties and Garceau was identified
`
`as the “listing office.” (Id. ¶¶ 19, 21).
`
`Pacesetter registered its copyright of the Charlotte Model on January 28, 2020. (Id.
`
`¶ 8; see also Copyright Documents at 2, ECF No. 1-2).2 On or about January 29, 2020,
`
`Pacesetter’s counsel prepared and sent CRH a letter instructing it to cease and desist from
`
`infringing activities, including construction of the house at 2808 New York Avenue.
`
`(Compl. ¶ 22). Pacesetter did not receive a response. (Id. ¶ 23).
`
`In July 2020, Pacesetter went to the offices of the Baltimore County Building Plans
`
`Review to inspect the original building plan filing for the 2808 New York Avenue property
`
`(the “New York Avenue Plans”). (Id. ¶ 24). The New York Avenue Plans were dated July
`
`2019 and identified GBL as the designer. (Id. ¶ 26). According to Pacesetter, the New York
`
`Avenue Plans are “substantially the same” as the Charlotte Model. (Id. ¶ 27).
`
`At some point thereafter, Pacesetter discovered a listing for a house located at 1827
`
`Woodside Avenue in Lansdowne, Maryland, which once again showed “substantial
`
`similarities” to Pacesetter’s Charlotte Model. (Id. ¶¶ 28–30). The listing indicated that the
`
`property was currently under construction, and once again identified the builder as CRH
`
`
`2 Page references to the Copyright Documentation refer to the numbers assigned by
`the Court’s Case Management/Electronic Case Filing system.
`
`3
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 4 of 18
`
`and the listing office as Garceau. (Id. ¶ 29). Pacesetter later discovered that the property
`
`plans for 1827 Woodside Avenue were the same as the New York Avenue Plans. (Id. ¶ 32).
`
`Indeed, according to Pacesetter, “CRH had requested that the New York Avenue [P]lans
`
`be made ‘Permanent Plans’ which could be used for future houses embodying the same
`
`plans without the necessity of having the proposed plans further reviewed and approved.”
`
`(Id.).
`
`Pacesetter alleges that GBL “copied” and “substantially reproduced” the Charlotte
`
`Model to create the New York Avenue Plans and the plans for 1827 Woodside Avenue.
`
`(Id. ¶ 34). Pacesetter also alleges that CRH submitted these “copied” plans to the Baltimore
`
`County Building Plans Review for approval and that Garceau caused the homes to be listed
`
`on an MLS website. (Id. ¶¶ 40–43, 48–50). Pacesetter also alleges that CRH and Garceau
`
`used the Charlotte Model and photos that appeared in the 2017 Listing in the listings for
`
`the properties at 5411 W. North Avenue and 5415 W. North Avenue. (Id. ¶¶ 44–47, 51–
`
`52).
`
`B.
`
`Procedural History
`
`
`
`Pacesetter commenced this action against CRH, GBL, and Garceau on August 27,
`
`2020. (ECF No. 1). Pacesetter’s seven-count Complaint alleges: copyright infringement in
`
`violation of the federal Copyright Act, 17 U.S.C. § 101 et seq., against all Defendants
`
`(Counts I, II, V); violation of the Maryland Deceptive Trade Practices Act (“MDTPA”),
`
`Md. Code Ann., Comm. L. [“CL”] § 13-301 et seq., against Defendants CRH and Garceau
`
`(Counts III and VI); and unfair competition against Defendants CRH and Garceau (Counts
`
`4
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 5 of 18
`
`IV, VII). (Compl. ¶¶ 89–136). Pacesetter seeks injunctive relief, actual damages, and
`
`statutory damages. (See, e.g., ¶¶ 95–99).
`
`
`
`CRH and GBL filed their Motions on October 26, 2020. (ECF Nos. 15, 16). Garceau
`
`filed its Motion on November 5, 2020. (ECF No. 19). Pacesetter filed its Oppositions to
`
`CRH’s and GBL’s Motions on November 9, 2020, (ECF Nos. 20, 21), followed by its
`
`Opposition to Garceau’s Motion on November 19, 2020, (ECF No. 22). CRH and GBL
`
`filed their Replies on November 23, 2020. (ECF No. 23, 24). Garceau filed its Reply on
`
`December 7, 2020. (ECF No. 28).
`
`II. DISCUSSION
`
`A.
`
`Standard of Review
`
`
`
`The purpose of a Rule 12(b)(6) motion is to “test[ ] the sufficiency of a complaint,”
`
`not to “resolve contests surrounding the facts, the merits of a claim, or the applicability of
`
`defenses.” King v. Rubenstein, 825 F.3d 206, 214 (4th Cir. 2016) (quoting Edwards v. City
`
`of Goldsboro, 178 F.3d 231, 243 (4th Cir. 1999)). A complaint fails to state a claim if it
`
`does not contain “a short and plain statement of the claim showing that the pleader is
`
`entitled to relief,” Fed.R.Civ.P. 8(a)(2), or does not “state a claim to relief that is plausible
`
`on its face,” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v.
`
`Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible “when the plaintiff
`
`pleads factual content that allows the court to draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556).
`
`“Threadbare recitals of the elements of a cause of action, supported by mere conclusory
`
`statements, do not suffice.” Id. (citing Twombly, 550 U.S. at 555). Though the plaintiff is
`
`5
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 6 of 18
`
`not required to forecast evidence to prove the elements of the claim, the complaint must
`
`allege sufficient facts to establish each element. Goss v. Bank of Am., N.A., 917 F.Supp.2d
`
`445, 449 (D.Md. 2013) (quoting Walters v. McMahen, 684 F.3d 435, 439 (4th Cir. 2012)),
`
`aff’d, 546 F.App’x 165 (4th Cir. 2013).
`
`In considering a Rule 12(b)(6) motion, a court must examine the complaint as a
`
`whole, consider the factual allegations in the complaint as true, and construe the factual
`
`allegations in the light most favorable to the plaintiff. Albright v. Oliver, 510 U.S. 266, 268
`
`(1994); Lambeth v. Bd. of Comm’rs of Davidson Cnty., 407 F.3d 266, 268 (4th Cir. 2005)
`
`(citing Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)). But, the Court need not accept
`
`unsupported or conclusory factual allegations devoid of any reference to actual events,
`
`United Black Firefighters v. Hirst, 604 F.2d 844, 847 (4th Cir. 1979), or legal conclusions
`
`couched as factual allegations, Iqbal, 556 U.S. at 678.
`
`B.
`
`Analysis
`
`1.
`
`Statutory Damages & Attorneys’ Fees (Counts I, II, and V)
`
`Defendants move to dismiss—or, alternatively, for judgment in their favor on—
`
`Pacesetter’s request for statutory damages and attorneys’ fees in Counts I, II, and V of its
`
`Complaint. Pacesetter responds that its requests for statutory damages and attorneys’ fees
`
`are permissible at this stage. For the reasons explained below, the Court agrees with
`
`Pacesetter.
`
`The Copyright Act permits a copyright owner to elect, before final judgment, “to
`
`recover, instead of actual damages and profits, an award of statutory damages” for
`
`infringement. 17 U.S.C. § 504(c)(1). Increased statutory damages may be available in the
`
`6
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 7 of 18
`
`case of willful infringement, if proven. Id. § 504(c)(2). Section 505 grants the Court
`
`discretion to “allow the recovery of full costs,” including “a reasonable attorney’s fee,” to
`
`the prevailing party in a copyright infringement action. 17 U.S.C. § 505. But statutory
`
`damages and attorneys’ fees are not available in all cases. Rather, under the Act’s plain
`
`terms:
`
`[N]o award of statutory damages or of attorney’s fees, as
`provided by sections 504 and 505, shall be made for—
`
`(1) any infringement of copyright in an unpublished work
`commenced before the effective date of its registration; or
`
`(2) any infringement of copyright commenced after first
`publication of the work and before the effective date of its
`registration, unless such registration is made within three
`months after the first publication of the work.
`
`17 U.S.C. § 412. In other words, for published works, statutory damages and attorneys’
`
`fees are prohibited where a plaintiff does not register its copyright prior to the alleged
`
`infringement or within three months of first publication. See LTVN Holdings, LLC v.
`
`Odeh, No. CCB-09-789, 2010 WL 2612690, at *3 (D.Md. June 25, 2010) (citing 17 U.S.C.
`
`§ 412).
`
`Here, Pacesetter alleges that the home at 4112 Baltimore Street, which was
`
`constructed using the Charlotte Model, was sold on or about January 20, 2019. (Compl.
`
`¶ 14). Under the Copyright Act, “publication” is defined as “the distribution of
`
`copies . . . of a work to the public by sale or other transfer of ownership.” 17 U.S.C. § 101.
`
`Thus, Pacesetter first published the Charlotte Model on or about January 20, 2019. (See
`
`Mem. Opp’n Mot. Pursuant Fed.R.Civ.P. 12(b)(6) Dismiss Compl. Count II’s Req.
`
`7
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 8 of 18
`
`Statutory Damages & Att’ys’ Fees & Counts III & IV Their Entirety Alt. Partial Summ. J.
`
`Count II’s Req. Statutory Damages & Att’ys’ Fees [“Opp’n to CRH Mot.”] at 2, ECF No.
`
`21 (confirming “the publication date [for the Charlotte Model] was already provided in
`
`Complaint ¶ 14”)). Pacesetter also alleges that its copyright registration for the Charlotte
`
`Model has an effective date of January 28, 2020. (Compl. ¶ 8; see also Copyright
`
`Documentation at 2). Thus, because Pacesetter did not copyright the Charlotte Model
`
`within three months of the date of its first publication, statutory damages and attorneys’
`
`fees are prohibited for any infringements that took place before the effective copyright
`
`date.
`
`The question remains, however, whether Pacesetter may recover statutory damages
`
`and attorneys’ fees for the acts of infringement that took place after the effective copyright
`
`registration date. On this subject, many courts have held that Section 412(2) should be read
`
`to bar statutory damages for post-registration infringement “when the same defendant
`
`infringe[s] the same work in the same fashion before and after registration.” S.
`
`Credentialing Support Servs., L.L.C. v. Hammond Surgical Hosp., L.L.C., 946 F.3d 780,
`
`785 (5th Cir. 2020) (citation omitted); see also Johnson v. Jones, 149 F.3d 494, 506 (6th
`
`Cir. 1998) (compiling cases finding that infringement “commences” for the purposes of
`
`Section 412 when the first act in a series of acts constituting continuing infringement
`
`occurs). The United States Court of Appeals for the Fourth Circuit has adopted this
`
`approach, noting that “[t]his interpretation makes sense because it would be peculiar if not
`
`inaccurate to use the word ‘commenced’ to describe a single act rather than the first in a
`
`group of acts.” Bouchat v. Bon-Ton Dep’t Stores, Inc., 506 F.3d 315, 330 (4th Cir. 2007)
`
`8
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 9 of 18
`
`(internal quotation marks and citations omitted). Accordingly, the Fourth Circuit has
`
`upheld a district court’s denial of statutory damages for post-registration infringement
`
`where the acts of infringement commenced prior to the effective copyright registration
`
`date. See id. at 332. In doing so, the court explained that allowing a copyright holder to
`
`obtain the extraordinary remedy of statutory damages for acts that occurred after he
`
`registered his copyright would discourage, rather than promote, the swift registration of
`
`creative works. Id. at 331–32.
`
`Consistent with this holding, Defendants assert that Pacesetter is not entitled to
`
`statutory damages or attorneys’ fees for the alleged post-registration acts because they are
`
`part of a “continuing infringement” that commenced prior to the effective copyright
`
`registration date. (See Mem. Law Supp. Mot. Pursuant Fed.R.Civ.P. 12(b)(6) Dismiss
`
`Compl. Count II’s Req. Statutory Damages & Att’ys’ Fees & Counts III & IV Their
`
`Entirety Alt. Partial Summ. J. Count II’s Req. Statutory Damages & Att’ys’ Fees [“CRH
`
`Mot.”] at 8, ECF No. 15-1). Defendants contend that, according to the Complaint, the
`
`infringement began in July 2019 when CRH submitted the New York Avenue Plans to the
`
`Baltimore County Building Plans Review. (Id. (citing Compl. ¶¶ 24–27, 40, 67)).
`
`Defendants further argue that Pacesetter’s claims amount to a “continuing infringement”
`
`because Defendants used a single set of architectural plans to build multiple, similar houses
`
`over a relatively short period of time. (Id. (citing Compl. ¶¶ 60–69, 101–03)). Thus,
`
`because infringement “commences” for purposes of Section 412 “‘when the first act in a
`
`series of acts constituting continuing infringement occurs,’” Bouchat, 506 F.3d at 330
`
`(quoting Johnson, 149 F.3d at 506), the infringement here commenced before the effective
`
`9
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 10 of 18
`
`copyright registration date on January 28, 2020, and Pacesetter cannot recover statutory
`
`damages or attorneys’ fees for any post-registration acts.
`
`Pacesetter responds that its Complaint does not intend to state a claim for
`
`“continuing infringement,” but rather expressly alleges that “[e]ach infringement of
`
`Plaintiff’s rights in and to the [Charlotte Model] constitutes a separate and distinct act of
`
`infringement.” (Compl. ¶ 105). Pacesetter also explains that courts have found that gaps in
`
`infringing acts, changes in the nature of the infringement, or some other indicator of a
`
`conscious decision to start infringement anew will produce separate infringements that
`
`“commence” at different times for the purpose of Section 412. For example, in Rosen v.
`
`NetFronts, Inc., No. CV 12-658 CAS, 2013 WL 3467205 (C.D.Cal. July 9, 2013), the court
`
`found that the doctrine of continuing infringement did not cover a subsequent act of
`
`infringement where the infringer ceased displaying certain copied photos on his website
`
`before rebuilding his website and displaying the copied photos again, with copyright
`
`registration occurring in the interim. Id. at *2–3. Pacesetter argues that, like the
`
`infringements in Rosen, the construction of each house is a distinct project that could be
`
`considered a separate act of infringement for the purposes of Section 412.
`
`At bottom, the question of whether Defendants’ acts form a single act of continuing
`
`infringement or constitute separate acts of infringement cannot be answered without facts
`
`that the parties will develop during discovery. See Bouchat, 506 F.3d at 324 (analyzing
`
`whether infringement “commenced” under Section 412 on summary judgment); Johnson,
`
`149 F.3d at 496 (same). As such, it would be inappropriate at this time to foreclose
`
`Pacesetter’s request for statutory damages and attorneys’ fees based upon a finding that the
`
`10
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 11 of 18
`
`infringement was a “continuing infringement” that commenced before the effective
`
`copyright registration date. Accordingly, the Court declines to treat Defendants’ Motions
`
`as partial motions for summary judgment on the issue of statutory damages and attorneys’
`
`fees. Additionally, Defendants’ request to dismiss Pacesetter’s claims for statutory
`
`damages and attorneys’ fees will be denied.
`
`2. Maryland Deceptive Trade Practices Act (Counts III & VI)
`
`Defendants CRH and Garceau argue that Pacesetter’s MDTPA claims should be
`
`dismissed because Pacesetter is not a consumer under the statute. For the reasons explained
`
`below, the Court agrees.
`
`The MDTPA provides: “A person may not engage in any unfair or deceptive trade
`
`practice . . . in . . . [t]he sale, lease, rental, loan, or bailment of any consumer goods,
`
`consumer realty, or consumer services.” CL § 13-303. Although the MDTPA authorizes
`
`private causes of action against violators, id. § 13-408(a), its remedies are limited to
`
`“consumers” purchasing “consumer” goods or services, see Fare Deals Ltd. v. World
`
`Choice Travel.Com, Inc., 180 F.Supp.2d 678, 692 (D.Md. 2001) (citing Boatel Indus., Inc.
`
`v. Hester, 550 A.2d 389, 399 (Md.Ct.Spec.App. 1988)). The term “consumer” is defined
`
`as “an actual or prospective purchaser, lessee, or recipient of consumer goods, consumer
`
`services, consumer realty, or consumer credit.” CL § 13-101(c)(1). “Consumer goods” are
`
`goods that are “primarily for personal, household, family, or agricultural purposes.” Id.
`
`§ 13-101(d)(1).
`
`Pacesetter does not provide any facts suggesting it meets the definition of a
`
`“consumer” for the purposes of the MDTPA. Pacesetter is a corporate entity that designs
`
`11
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 12 of 18
`
`and constructs homes. (See Compl. ¶¶ 1, 8–15). Pacesetter does not allege that it is a
`
`“purchaser, lessee, or recipient” of any “personal, household, family, or agricultural” good.
`
`CL §§ 13-101(c)(1), (d)(1). For these reasons, Pacesetter is not entitled to any remedy
`
`under the MDTPA. See, e.g., JFJ Toys, Inc. v. Sears Holdings Corp., 237 F.Supp.3d 311,
`
`342 (D.Md. 2017) (dismissal of unfair trade practices claims where plaintiff was “corporate
`
`commercial entity”); Fare Deals, 180 F.Supp.2d at 692 (holding trademark owner, seeking
`
`relief for misuse of its name, was not a “consumer” under Maryland law); Boatel, 550 A.2d
`
`at 399 (finding party was not a “consumer” because he purchased boat for commercial
`
`purposes).
`
`In addition, Pacesetter admits that CRH is its “direct competitor[ ] in the field of
`
`home design and construction.” (Compl. ¶ 75). This Court has expressly held that corporate
`
`competitors like Pacesetter lack standing and cannot state a legally viable claim under the
`
`MDTPA because they do not qualify as “consumers.” Penn-Plax, Inc. v. L. Schultz, Inc.,
`
`988 F.Supp. 906, 909–11 (D.Md. 1997); see, e.g., Putt-Putt, LLC v. 416 Constant
`
`Friendship, LLC, 936 F.Supp.2d 648, 660 (D.Md. 2013) (dismissing MDTPA claim where
`
`plaintiff was “not a consumer” of defendant’s goods and services, but a competitor and
`
`therefore lacked standing); Custom Direct v. Wynwyn, Inc., No. RBD-09-2348, 2010 WL
`
`1794248, at *2 (D.Md. May 4, 2010) (dismissing MDTPA count in copyright action for
`
`competitor plaintiff’s lack of standing); see also Scotch Whisky Ass’n v. Majestic
`
`Distilling Co., 958 F.2d 594, 597 n.9 (4th Cir. 1992) (“readily” eliminating MDTPA claim
`
`because plaintiff, a trade association, did “not come within [the act’s] definition of
`
`consumer” (citations omitted)).
`
`12
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 13 of 18
`
`Pacesetter does not dispute that it lacks standing to bring a claim against CRH. Still,
`
`Pacesetter argues that its MDTCA claim against Garceau may proceed because Garceau is
`
`engaged in the sale of “commercial realty.” (See Mem. Opp’n Mot. Dismiss Compl. Count
`
`V’s Req. Statutory Damages & Att’ys’ Fees & Counts VI & VII Their Entirety Alt. Partial
`
`Summ. J. Count V’s Req. Statutory Damages & Att’ys’ Fees [“Opp’n to Garceau Mot.”]
`
`at 14–15, ECF No. 22). This argument fails for two reasons. First, the MDTCA does not
`
`apply to real estate brokers. See CL § 13-104 (“This title does not apply to: (1) . . . real
`
`estate broker[s], associate real estate broker[s], or real estate salesperson[s] . . . .”).
`
`Pacesetter plainly alleges that Garceau is a provider of real estate services that engages in
`
`the sale of real property. (See, e.g., Compl. ¶¶ 16, 19, 21, 81, 122). Thus, the MDTCA does
`
`not apply to Garceau. Second, even if Garceau were not exempted, Pacesetter’s claim
`
`would nonetheless fail because it does not allege that it is a “purchaser, lessee, or recipient”
`
`of consumer realty. See CL § 13-101(c)(1).
`
`In sum, the MDTCA exists “to provide minimum standards for the protection of
`
`consumers.” Id. § 13-103(a). Indeed, as the Maryland Court of Appeals has explained, the
`
`statute is “less concerned with protecting businessmen.” Boatel, 550 A.2d at 399.
`
`Pacesetter alleges that it is a corporate entity and does not provide any facts suggesting that
`
`it qualifies as a “consumer” under Maryland law. Accordingly, Pacesetter’s MDTCA
`
`claims must be dismissed.
`
`
`
`
`
`
`
`13
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 14 of 18
`
`3.
`
`Unfair Competition (Counts IV & VII)
`
`Defendants CRH and Garceau next argue that Pacesetter’s unfair competition
`
`claims must be dismissed because they are preempted by Section 301(a) of the Copyright
`
`Act. For the reasons explained below, the Court agrees.
`
`The Fourth Circuit has articulated a two-part test for determining when state law
`
`claims are preempted by federal copyright law. See U.S. ex rel. Berge v. Bd. Trs. Univ.
`
`Ala., 104 F.3d 1453, 1463 (4th Cir. 1997). First, the work must fall “within the scope of
`
`the subject-matter of copyright as specified in 17 U.S.C. §§ 102, 103.” Id. (internal
`
`quotation marks and citation omitted). Here, there is no dispute that the Charlotte Model is
`
`an “original work[ ] of authorship fixed in any tangible medium of expression” that falls
`
`within the subject matter of copyright as specified in Sections 102 and 103.
`
`As for the second prong, for preemption to apply, “the rights granted under state law
`
`must be equivalent to any exclusive rights within the scope of federal copyright as set out
`
`in 17 U.S.C. § 106.” Berge, 104 F.3d at 1463 (internal quotation marks and citation
`
`omitted). Section 106 grants copyright owners the exclusive right to: “(1) reproduce the
`
`work; (2) prepare derivative works based on the work; (3) distribute copies of the work;
`
`(4) perform the work publicly; and (5) display the work publicly.” See Fischer v. Viacom
`
`Int’l, Inc., 115 F.Supp.2d 535, 541 n.4 (D.Md. 2000). Therefore, a state law right that is
`
`infringed by “the mere act of reproduction, performance, distribution, or display” will be
`
`preempted by the Copyright Act. See id. at 541 (quoting Balt. Orioles, Inc. v. Major League
`
`Baseball Players Ass’n, 805 F.2d 663, 677 (7th Cir. 1986)).
`
`14
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 15 of 18
`
`The Fourth Circuit has noted that a state law claim avoids preemption when it
`
`contains an “‘extra element’ that changes the nature of the state law action so that it is
`
`‘qualitatively different from a copyright infringement claim.’” Berge, 104 F.3d at 1463
`
`(quoting Rosciszewski v. Arete Assocs., Inc., 1 F.3d 225, 229–30 (4th Cir. 1993)).
`
`Consistent with this principle, in Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655 (4th
`
`Cir. 1993), the Fourth Circuit explained that state law actions which “incorporate elements
`
`beyond those necessary to prove copyright infringement” and “regulate conduct
`
`qualitatively different from the conduct governed by federal copyright law” are not
`
`preempted. Id. at 659 (citations omitted).
`
`For its part, Pacesetter correctly notes that state law claims for unfair competition
`
`are not per se preempted by the Copyright Act. See Lowry’s Reports, Inc. v. Legg Mason,
`
`Inc., 271 F.Supp.2d 737, 756 (D.Md. 2003) (“The Copyright Act may not preempt every
`
`state-law claim of unfair competition.”). However, as this Court has held:
`
`The distinction between those unfair competition claims that
`are not preempted and those that are is that “claims based upon
`breaches of confidential relationships, breaches of fiduciary
`duty and trade secrets have been held to satisfy the extra-
`element test, whereas claims of misappropriation and unfair
`competition based solely on the copying of the plaintiff’s
`protected expression fail that test.”
`
`Sinclair Broadcast Grp., Inc. v. Colour Basis, LLC, No. CCB-14-2614, 2016 WL 3541204,
`
`at *9 (D.Md. June 29, 2016) (quoting Costar Grp. Inc. v. Loopnet, Inc., 164 F.Supp.2d 688,
`
`713 (D.Md. 2001)). In other words, in order to find that an unfair competition claim
`
`contains an “extra element” beyond a federal copyright claim, there must typically be a
`
`factual allegation of deception based on the parties’ relationship that goes above and
`
`15
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 16 of 18
`
`beyond mere use of copyrighted work. See Sinclair, 2016 WL 3541204, at *8–9. For
`
`example, in Sinclair Broadcast Group, Inc. v. Colour Basis, LLC, No. CCB-14-2614, 2016
`
`WL 3541204 (D.Md. June 29, 2016), the Court found that an unfair competition claim was
`
`not preempted when it focused “not just on the alleged unauthorized copying and printing”
`
`of a work but also on deception “allegedly used [by the defendant] to persuade” the
`
`claimant to create the work in the first place. Id. at *9. Likewise, in Victor Stanley, Inc. v.
`
`Creative Pipe, Inc., No. MJG-06-2662, 2011 WL 4596043 (D.Md. 2011), the Court found
`
`no preemption where, in addition to infringing plaintiff’s copyrighted site furnishing
`
`designs, defendants falsely claimed to represent plaintiff and sold the copies under a trade
`
`name designed as a purposeful and targeted insult to plaintiff. See id. at *1.
`
`The holding in Costar Group, Inc. v. Loopnet, Inc., 164 F.Supp.2d 688 (D.Md.
`
`2001), is also illustrative on this point. In that case, the plaintiff argued that its unfair
`
`competition claim was not preempted because the defendant “did not merely copy its
`
`photographs, but passed them off as its own photographs,” causing a “separate injury” in
`
`that users believed the defendant’s work was equal to that of plaintiff’s or that defendant
`
`had plaintiff’s authorization to use the images. Id. at 714. The Court rejected this argument,
`
`finding that, at its core, “the unauthorized copying of [plaintiff’s] photographs” was the
`
`basis for both the copyright infringement claim and unfair competition claim. Id.
`
`Accordingly, the Court found that the plaintiff’s unfair competition claim did not satisfy
`
`the “extra-element” test and was therefore preempted by the Copyright Act. Id.
`
`Turning to the present case, Pacesetter’s state law claims for unfair competition are
`
`premised on allegations that CRH and Garceau engaged “fraud, deceit, and trickery” by
`
`16
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 17 of 18
`
`“selling and offering to sell real property based upon [the Charlotte Model]” despite having
`
`“no legal rights therein.” (Compl. ¶¶ 117–118, 135–36). Further, Pacesetter alleges that
`
`CRH “falsely represent[ed]” the Charlotte Model “as its own,” which “unfairly usurped
`
`[Pacesetter’s] creativity.” (Id. ¶¶ 77, 117). Relatedly, Pacesetter alleges that the Charlotte
`
`Model was the result of Pacesetter’s “valued reputation” and “its own ingenuity and
`
`creativeness,” and that CRH “opportunistically” “cut corners” by copying it. (Id. ¶¶ 76–
`
`80).
`
`As a preliminary matter, a plaintiff cannot save an action from preemption by
`
`alleging elements like “awareness or intent” to deceive, “which alter ‘the action’s scope
`
`but not its nature.’” Rosciszewski, 1 F.3d at 230 (quoting Computer Assocs. Int’l, Inc. v.
`
`Altai, Inc., 982 F.2d 693, 717 (2d Cir. 1992)). And despite its vague complaints of fraud,
`
`deceit, and trickery, Pacesetter fails to allege any facts suggesting that CRH or Garceau
`
`actually engaged in any deceptive conduct above and beyond the allegations that make up
`
`its claim for copyright infringement. Setting aside these bare-bones allegations,
`
`Pacesetter’s unfair competition claims amount to nothing more than an assertion that CRH
`
`and Garceau copied, displayed, and used the Charlotte Model without the legal authority
`
`to do so. This is precisely the type of misconduct that copyright laws are designed to guard
`
`against. See Fischer, 115 F.Supp.2d at 541 n.4. Pacesetter’s unfair competition claims do
`
`not satisfy the “extra-element” test and are therefore preempted under the Copyright Act.
`
`Accordingly, the Court will dismiss Pacesetter’s claims for unfair competition.
`
`
`
`17
`
`
`
`Case 1:20-cv-02478-GLR Document 30 Filed 08/17/21 Page 18 of 18
`
`III. CONCLUSION
`
`For the foregoing reasons, the Court will deny GBL’s Motion (ECF No. 16) and
`
`grant in part and deny in part CRH’s and Garceau’s Motions (ECF Nos. 15, 19). A separate
`
`Order follows.
`
`Entered this 17th day of August, 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/
`
`George L. Russell, III
`United States District Judge
`
`
`
`
`
`
`
`
`
`
`
`
`
`18
`
`