IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 15-20084

ULTRAFLO CORPORATION, 

 Plaintiff - Appellant

v.

PELICAN TANK PARTS, INCORPORATED; THOMAS JOSEPH 

MUELLER; PELICAN WORLDWIDE, INCORPORATED, 

 Defendants - Appellees

Appeal from the United States District Court

for the Southern District of Texas

Before STEWART, Chief Judge, and OWEN and COSTA, Circuit Judges.

GREGG COSTA, Circuit Judge:

This appeal requires us to again consider the preemptive force of the 

Copyright Act. Plaintiff Ultraflo Corporation asserts an unfair competition by 

misappropriation claim under Texas law alleging that a competitor stole its 

drawings showing how to design valves and then used them to make duplicate 

valves. We have previously held that copyright preempts this Texas cause of 

action when the intellectual property at issue is within the subject matter of 

copyright. Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 785–89 (5th Cir. 

1999). Ultraflo contends that its claim escapes preemption because its valve

design, when separated from the drawing itself, is afforded no protection under 

the Copyright Act. Because copyright preemption prohibits state interference 

United States Court of Appeals

Fifth Circuit

FILED

January 11, 2017

Lyle W. Cayce

Clerk

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with Congress’s decision not to grant copyright protection just as much as it 

protects a decision to provide protection, the district court correctly found that 

the state claim is preempted. 

I.

Ultraflo manufactures butterfly valves used in the transportation 

industry. With the help of its employee Thomas Mueller, Ultraflo redesigned

its Model 390 butterfly valve. The new design was recorded in drawings that 

specify the valve’s features and measurements. 

Mueller ultimately left Ultraflo to work at Pelican—a competing valve 

manufacturer. Soon after, Pelican entered the market with a valve that

Ultraflo contends was strikingly similar to its own. 

Believing that Pelican hired Mueller to gain access to its design drawings 

and other intellectual property, Ultraflo sued Pelican and Mueller (jointly 

referred to as Pelican) in state court for conversion, civil conspiracy, unfair 

competition by misappropriation, and misappropriation of trade secrets. 

Pelican sought to remove the case to federal court, arguing that the state 

claims were preempted by the Copyright Act, but removal was untimely. Back 

in state court, Pelican won a motion to dismiss, which argued that the court 

lacked jurisdiction as the subject matter of the suit was subject to the copyright 

laws, because Ultraflo failed to respond.

Before the state suit was dismissed, Mueller registered valve drawings

with the U.S. Copyright Office and filed a complaint in federal court, seeking 

declaratory relief that the drawings (1) were copyrightable subject matter, (2) 

belonged to Mueller, and (3) were not “works for hire” under the Copyright Act. 

Mueller then voluntarily dismissed his suit in an attempt to encourage 

settlement.

After the settlement failed to materialize, Ultraflo filed this federal

action. It again asserted the state tort claims and also sought a declaratory 

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judgment that Mueller was using a copyright that did not belong to him. The 

district court sua sponte questioned whether Ultraflo’s state claims were 

preempted by the Copyright Act. It ordered Ultraflo to file a second amended 

complaint “avoiding allegations of state law claims that are clearly preempted 

by federal law.”

That pleading reasserts all of Ultraflo’s state claims and notes that they

arise from Pelican’s “use of Ultraflo’s [design] drawings to make actual valves.”

For example, it alleges that the “unauthorized activities by Mueller in 

retaining Ultraflo’s confidential drawings [and] the subsequent use of them by 

Pelican . . . to make competitive valves, constitutes misappropriation of

Ultraflo’s valuable trade secrets.” It further contends that Defendants engaged 

in unfair competition by misappropriating its “butterfly valves, valve features, 

and components.”

Pelican subsequently filed a motion to dismiss on preemption grounds. 

The district court agreed that all but Ultraflo’s trade secret claim were 

preempted by the copyright laws.1 

In response, Ultraflo filed a third amended complaint that removed the 

preempted state claims and added a claim of copyright infringement. Pelican 

filed yet another motion to dismiss, seeking dismissal of the new copyright 

claim. The district court denied the motion because Ultraflo alleged “that 

Defendants infringed the drawings, not by taking the physical drawings, but 

by taking their intangible intellectual property, using it to make their own 

drawings and butterfly valve, and thereby infringing on Ultraflo’s exclusive 

rights to reproduce its copyrighted work and to prepare derivative products 

based on the copyrighted work.”

 

1 The court’s ruling on the trade secret claim accords with our subsequent decision in 

GlobeRanger Corp. v. Software AG United States of Am., Inc., which held that a claim under 

Texas trade secret law is not preempted. 836 F.3d 477, 486–88 (5th Cir. 2016).

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The case proceeded to trial on the copyright and trade secret claims, both 

of which the jury rejected. After trial, Ultraflo moved under Rule 50(b) for

judgment as a matter of law, or, alternatively, a new trial, on the ground that

the unfair competition claim was not preempted. Finding that this was not the 

proper procedural vehicle to seek reconsideration of the pretrial dismissal of 

the unfair competition claim, the court treated the motion as one asserted 

under Rule 59. It declined to change its earlier ruling finding preemption.

II.

Ultraflo’s appeal does not challenge the jury’s rejection of its copyright 

and trade secret claims. It seeks only reversal of the pretrial dismissal of the 

unfair competition by misappropriation claim on preemption grounds. 

Pelican asserts that Ultraflo waived its right to challenge the pretrial 

preemption ruling by not raising the issue during trial in a number of ways. 

According to Pelican, Ultraflo needed to request a jury charge on the dismissed 

state law claims, introduce an offer of proof to show the evidence that 

supported them, and seek entry of judgment as a matter of law on the state 

claims under Rule 50(a) before the case was submitted to the jury. 

The delay and expense resulting from such futile measures is not 

required to preserve appellate review of a pretrial dismissal.2 The final 

judgment rule prevented Ultraflo from appealing the Rule 12 dismissal until 

now. See Dig. Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863, 868 (1994) 

(explaining that the rule provides that “a party is entitled to a single appeal, 

to be deferred until final judgment has been entered”). Indeed, Ultraflo 

 

2 Confusion may have arisen from Ultraflo filing a post-trial Rule 50(b) motion for 

judgment on the pleadings raising the preemption issue. The district court correctly noted 

that this was not a proper motion to challenge the pretrial dismissal of claims. As discussed 

infra, however, that is not because the same motion should have been asserted during trial. 

There was no need to do anything during or after trial to preserve appellate review of the 

Rule 12 dismissal. 

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followed the proper procedure by omitting the dismissed claims from its third 

amended complaint. Lincoln Gen. Ins. Co. v. U.S. Auto Ins. Servs., Inc., 787 

F.3d 716, 724 (5th Cir. 2015) (noting that requiring the repleading of claims 

dismissed with prejudice would be at odds with judicial efficiency and might 

be sanctionable). As those state claims were no longer part of the live pleading 

in the case, Ultraflo could not have taken any of the actions with respect to 

them during trial that Pelican urges. But it is still allowed to appeal a 

dismissal with prejudice of claims asserted in its earlier pleadings. Id. 

(explaining that when a pretrial dismissal of a claim is “on the merits or with 

prejudice, the plaintiff may appeal that ruling without needing to include the 

claim in a later amended complaint”).

III.

We thus may consider the merits of Ultraflo’s appeal: whether its unfair 

competition by misappropriation claim is preempted by the Copyright Act. 

We review this question de novo. GlobeRanger Corp. v. Software AG United 

States of Am., Inc., 691 F.3d 702, 705 (5th Cir. 2012).

Section 301 of the Copyright Act preempts state law claims that fall 

within the general scope of federal copyright law. Alcatel, 166 F.3d at 785. It 

provides that:

all legal or equitable rights that are equivalent to any of the 

exclusive rights within the general scope of copyright as specified 

by section 106 in works of authorship that are fixed in a tangible 

medium of expression and come within the subject matter of 

copyright as specified by sections 102 and 103 . . . are governed 

exclusively by this title. Thereafter, no person is entitled to any 

such right or equivalent right in any such work under the common 

law or statutes of any State.

17 U.S.C. § 301(a). This text is the source of the two-part test we use to 

determine if the Copyright Act preempts a state law cause of action. Alcatel, 

166 F.3d at 785–86. Courts first ask whether the intellectual property at issue 

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is within the subject matter of copyright. Id. If it is, then a state law claim is 

preempted if it protects rights in that property that are equivalent to any of 

the exclusive rights within the general scope of copyright. Id. 

 A.

The subject matter inquiry requires us to determine what intellectual 

property Ultraflo is seeking to protect. The design drawings themselves are 

undoubtedly within the scope of copyright protection;3 they were the basis for 

the copyright infringement claim Ultraflo took to trial. But the unfair 

competition claim is not based on Pelican’s copying the drawings. Ultraflo

instead alleges that Pelican used the drawings to make replica valves. Because 

the valve design—the work in which Ultraflo asserts a right—is what was 

allegedly misappropriated, Ultraflo argues that its claim does not seek 

protection for a work protected by the copyright laws.

Ultraflo is correct that its valve design is not protected under the 

Copyright Act: it is either a useful article4 or an idea.5 Were the question

 

3 Section 102 of the Copyright Act provides that “[w]orks of authorship include . . . 

pictorial, graphic, and sculptural works.” 17 U.S.C. § 102. Section 101 defines “pictorial, 

graphic, and sculptural works” to include “technical drawings.” 17 U.S.C. § 101. And design 

drawings are considered copyrightable technical drawings. See Taquino v. Teledyne Monarch 

Rubber, 893 F.2d 1488, 1501 (5th Cir. 1990) (treating engineering drawings as 

copyrightable); M–I LLC v. Stelly, 733 F. Supp. 2d 759, 782 (S.D. Tex. 2010) (treating tool 

design drawings as copyrightable). 

4 A useful article is “an article having an intrinsic utilitarian function that is not 

merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. 

Section 101 further states that “the design of a useful article, as defined in this section, shall 

be considered a pictorial, graphic, or sculptural work [that is, copyrightable] only if, and only 

to the extent that, such design incorporates pictorial, graphic, or sculptural features that can 

be identified separately from, and are capable of existing independently of, the utilitarian 

aspects of the article.” Id. Neither party disputes that the Model 390 butterfly valve design 

includes only utilitarian features and thus is not subject to copyright protection. 5 “In no case does copyright protection for an original work of authorship extend to 

any idea [or] concept . . . regardless of the form in which it is described, explained, illustrated, 

or embodied in such work.” 17 U.S.C. § 102(b). 

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simply whether the work in which Ultraflo asserts a right is protected under 

the Copyright Act, its argument would carry the day. 

The preemption statute, however, sweeps more broadly. It preempts 

state protection of works that fall within the subject matter (that is, the scope)

of copyright, regardless whether the works are actually afforded protection

under the Copyright Act. Spear Mktg., Inc. v. BancorpSouth Bank, 791 F.3d

586, 596–97 (5th Cir. 2015). “[S]cope and protection are not synonyms.” Id. at 

596 (quoting U.S. ex rel. Berge v. Bd. of Trs. of the Univ. of Ala., 104 F.3d 1453, 

1463 (4th Cir. 1997)). As the Fourth Circuit put it, “the shadow actually cast

by the Act’s preemption is notably broader than the wing of its protection.” 

U.S. ex rel. Berge, 104 F.3d at 1463.

This distinction led us to hold in Spear Marketing that state claims based 

on ideas fixed in a tangible medium of expression fall within the subject matter 

of copyright even though copyright law does not protect the mere ideas. 791 

F.3d at 597. The parties disputed whether copyright preemption extended to 

state claims protecting the noncopyrightable material—ideas—contained in 

copyrightable works—a software program. Id. at 594. In finding that it did, 

we noted that to allow states to protect fixed ideas would intrude upon 

Congress’s exclusion in section 102(b) of ideas from federal copyright 

protection. Id. at 596 (citing 5 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER 

ON COPYRIGHT § 19D.03[A][2][b]).

The result should be no different for the valve design that Congress also 

chose to exclude from copyright protection.6 Indeed, the exclusion of useful 

articles from copyright protection is a corollary of the idea-expression 

 

6 A copyright treatise reaches the same conclusion in considering the preemption 

question for another type of subject matter that is excluded from copyright protection: 

typeface. HOWARD B. ABRAMS, THE LAW OF COPYRIGHT § 6:22 (2016) (concluding that if 

“Congress deliberately made certain classes of subject matter ineligible for federal copyright 

protection, as was clearly the case for typeface designs, then . . . the state law is preempted”). 

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dichotomy that Spear Marketing rejected as a basis for the dividing line of

when copyright preemption applies. See Mazer v. Stein, 347 U.S. 201, 217 

(1954); Durham Indus. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir. 1980) (“Just 

as copyright protection extends to expression but not ideas, copyright 

protection extends only to the artistic aspects, but not the mechanical or 

utilitarian features, of a protected work.”). Congress’s exercise of its power 

under the Copyright Clause to not provide protection for the embodiment of 

ideas in useful articles is entitled to preemptive force. Allowing state law to 

protect such works would undermine the “deliberate exclusion” of such subject 

matter from the federal copyright scheme. Spear Mktg., 791 F.3d at 596. 

B.

That the valve design is within the subject matter of copyright does not,

on its own, mean that the state claim is preempted. As mentioned at the 

outset, the state law must also seek to protect rights equivalent to those

“within the general scope of copyright.” 17 U.S.C. § 301. This is determined 

by the “extra elements” test, which looks at whether “one or more qualitatively 

different elements are required to constitute the state-created cause of action 

being asserted.” Alcatel, 166 F.3d at 787. If so, the state law protects rights 

different than those that the Copyright Act protects and there is no 

preemption. Id. 

We have previously held that Texas’s unfair competition by 

misappropriation cause of action7 does not afford protection materially 

different from federal copyright law. Id. at 787–89. In doing so, we rejected 

Alcatel’s attempt to satisfy the extra elements test by pointing to the state 

 

7 The elements of Texas’s unfair competition by misappropriation are: (1) the creation 

by a plaintiff of a product through extensive time, labor, skill, and money; (2) the use of that 

product by defendant in competition with plaintiff; and (3) commercial damage to the 

plaintiff. U.S. Sporting Prods., Inc. v. Johnny Stewart Game Calls, Inc., 865 S.W.2d 214, 218 

(Tex. App.—Waco 1993, writ denied). 

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tort’s elements of sweat equity and use against a competitor. Id. With respect 

to the former, we concluded “the time, labor, skill, and money expended by the

author in creating the work are necessarily contemplated in [] copyright,” 

which requires independent creation. Id. at 789. As to the latter, we held that

reproduction or derivate use of a copyright by a competitor would suffice to 

show copyright infringement.8 Id. 

Ultraflo attempts to get around Alcatel by focusing on the special 

copyright status of drawings depicting useful articles. Although the Copyright 

Act provides the owner of such a drawing the exclusive right to reproduce the 

drawing itself, it does not grant the exclusive right to use the drawing to make 

the useful article depicted. See 17 U.S.C. § 113(b) (“This title does not afford, to 

the owner of copyright in a work that portrays a useful article as such, any greater 

or lesser rights with respect to the making, distribution, or display of the useful 

article so portrayed than those afforded to such works under the law . . . .”); 1 

NIMMER, supra, § 2A.12. At first blush, it thus appears that Ultraflo’s unfair 

competition by misappropriation claim protects a right that federal copyright 

does not: exclusive use of the copyrightable design drawings to make the 

depicted valves.

Again, however, the preemption inquiry operates on a more general 

level. The question is not whether state law provides a right identical to

federal copyright law, but whether state law provides a right akin to those

“within the general scope of copyright as specified by section 106.” 17 U.S.C. §

301 (emphasis added). Among the exclusive rights generally provided to 

 

8 Ultraflo also contends that unfair competition by misappropriation is qualitatively 

different because it requires intent to engage in dishonest conduct. That a state law requires 

scienter as a condition to liability, however, does not save the state law from preemption. See 

R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1148–49 (10th Cir. 2009) (holding that 

the addition of a scienter element did not render defendant’s unfair competition claim 

qualitatively different from copyright infringement). 

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copyright holders in section 106 is the right to make derivative use of 

copyrighted works. 17 U.S.C. § 106. State claims protecting against such use

by another thus are preempted by Section 301. See Alcatel, 166 F.3d at 789 

(holding that plaintiff’s unfair competition by misappropriation claim was 

preempted by the Copyright Act when plaintiff alleged defendant stole its 

software, used it to make microprocessors, and then distributed the 

microprocessors in competition with plaintiff); M–I LLC v. Stelly, 733 F. Supp. 

2d 759, 784–85 (S.D. Tex. 2010) (holding that plaintiff’s unfair competition by 

misappropriation claim, alleging defendant used, without permission, 

plaintiff’s tool design drawings to make a competing product, did not supply a 

qualitatively different element and thus was preempted). Indeed, section 

113(b), by carving out use of technical drawings to make useful articles from 

copyright protection, recognizes that such derivative use may otherwise be

protected by the copyright laws.

Similar to what we saw with the subject matter inquiry, the “equivalent 

rights” inquiry thus looks not at the rights Congress actually provided but at 

the type of rights it has the power to confer. Withholding a particular right is 

part of the balance Congress struck between the need for copyright incentives 

and the value in public access to ideas. See H.R. REP. NO. 94-1476, at 105

(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5720 (explaining that Congress, 

through section 113(b), reaffirmed the longstanding idea-expression 

dichotomy, which provides that ideas contained in copyrighted works are free

to the public unless otherwise protected by patent law). Section 113(b), as a 

particular application of the idea-expression dichotomy, also plays a role in 

demarcating the boundary between copyright and patent law. Id.; see generally 

Baker v. Selden, 101 U.S. 99 (1879). To allow state law protection in this area 

that Congress excluded from the ambit of copyright thus would run afoul of the 

“‘familiar doctrine’ that the federal policy ‘may not be set at naught, or its 

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benefits denied’ by the state law.” Sears, Roebuck & Co. v. Stiffel Company, 

376 U.S. 225, 228 (1964) (quoting Sola Elec. Co. v. Jefferson Elec. Co., 317 U.S. 

172, 176 (1942)).

* * *

The district court correctly held that the Copyright Act preempted 

Ultraflo’s unfair competition claim. The judgment is AFFIRMED.

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