Defendant argues that this Court "lacks subject matter jurisdiction" because "patents and the appropriate substance thereof are governed by federal law, rules and regulations, which preempt any attempted state regulation of patents or their substance." This argument fundamentally misconstrues Plaintiff's claim and the nature of federal preemption.
Plaintiff's claim under NY Civil Rights Law Sections 50-51 does not challenge any patent, question any patent's validity, seek to modify any patent prosecution procedure, or attempt to regulate any aspect of the patent system. The claim is that Defendant used Plaintiff's name — without consent — for commercial purposes. The statutory text is unambiguous: it prohibits the use of "the name, portrait or picture of any living person" for "advertising purposes, or for the purposes of trade" without written consent. NY Civ. Rights Law Section 51.
The medium on which the unauthorized name appears is incidental to the claim. Had Defendant placed Plaintiff's name on a billboard, a business card, a letterhead, or a television advertisement, the cause of action would be identical. That Defendant chose to place Plaintiff's name on patent filings and a law firm website does not transmute a state privacy claim into a federal patent dispute.
Federal preemption of state law arises in only two circumstances: (1) where Congress has expressly preempted state regulation, or (2) where federal law so thoroughly occupies a field that no room remains for state supplementation. See Gibbons v. Ogden, 22 U.S. 1 (1824); Rice v. Santa Fe Elevator Corp., 331 U.S. 218, 230 (1947).
Neither condition is met here. Congress has never purported to occupy the field of personal name and identity rights. The Patent Act, 35 U.S.C. Sections 1-390, governs the granting, prosecution, and validity of patents. It does not address — and has never addressed — whether an attorney's name may be commercially exploited without consent. State right-of-publicity laws coexist with federal intellectual property law in every jurisdiction in the United States. Courts routinely adjudicate Sections 50-51 claims involving names that also appear in federally regulated contexts — on products bearing trademarks, in federally licensed broadcasts, and on documents filed with federal agencies — without any preemption barrier.
The Supreme Court has expressly recognized the legitimacy of state right-of-publicity claims even where they intersect with federal intellectual property regimes. See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 573 (1977) (holding that the First Amendment does not bar a state right-of-publicity claim, and recognizing the state's legitimate interest in protecting individuals' names and identities).
Defendant admits in his Answer (Paragraph 32) that Plaintiff's name appeared on the NGM website in addition to patent documents. The firm website — nathlaw.com — is not a patent. It is not filed with the USPTO. It is a commercial advertisement for legal services. Yet the name use on the website and the name use on patent filings arise from the same course of conduct: Defendant's decision to continue exploiting Plaintiff's professional identity for commercial gain after Plaintiff departed the firm. Defendant cannot credibly argue that this Court has jurisdiction over the website claims but not the patent claims when both arise from identical conduct by the same actor for the same commercial purpose.
Plaintiff's original complaint in the Eastern District of New York included a NY Civil Rights Law Sections 50-51 claim (Count 2) alongside federal Lanham Act claims. The federal court did not dismiss the state-law claim on preemption grounds — because there is no preemption. If the Patent Act preempted Sections 50-51 claims involving patent documents, the EDNY would have been obligated to dismiss on that basis. It did not.
Defendant's counsel, Connell Foley LLP, has appeared in this action, filed an Answer with affirmative defenses, served discovery demands, and participated in a preliminary conference before this Court. If Defendant genuinely believed this Court lacked subject matter jurisdiction, counsel's professional obligation would have been to move for dismissal under CPLR 3211(a)(2) at the earliest opportunity — not to litigate the merits for months before raising preemption as one of ten boilerplate affirmative defenses. Defendant's sustained participation in this litigation is a practical concession that this Court has jurisdiction.
Defendant's federal preemption defense is meritless. Sections 50-51 regulate the unauthorized commercial use of a person's name. They do not regulate patents. The Patent Act does not occupy the field of personal identity rights. No court has ever held that a state right-of-publicity claim is preempted merely because the plaintiff's name appeared on a document filed with a federal agency. This defense should be rejected.