                                                                                   [PUBLISH]

                  IN THE UNITED STATES COURT OF APPEALS

                            FOR THE ELEVENTH CIRCUIT                            FILED
                                 _______________                      U.S. COURT OF APPEALS
                                                                        ELEVENTH CIRCUIT
                                    No. 99-14123                            MAY 02, 2001
                                  _______________                        THOMAS K. KAHN
                                                                              CLERK
                    D. C. Docket No. 96-00175-CIV-ORL-3ABF-18

TIM FOLEY, individually, CONNIE
FOLEY, individually, et al.,

                                                    Defendants-Cross-
                                                    Claimants-Appellees,


       versus


MAHALEEL LEE LUSTER, individually, d.b.a.
Go Diamond Productions, d.b.a. Lustervision,

                                                    Defendant-Cross-
                                                    Defendant-Appellant.

                          ______________________________

                      Appeal from the United States District Court
                          for the Middle District of Florida
                        ______________________________
                                    (May 2, 2001)


Before BIRCH and HULL, Circuit Judges, and TIDWELL*, District Judge.
_____________________
* Honorable G. Ernest Tidwell, U.S. District Judge for the Northern District of Georgia, sitting
by designation.
BIRCH, Circuit Judge:

       In this opinion, we decide whether a state common law claim for

indemnification is preempted by the Copyright Act, whether a jury instruction was

confusing, and whether the claimants in an indemnity action were required to

apportion damages among defendant Luster and others that potentially played a

role in the copyright infringement. The district court denied judgment as a matter

of law on all three issues and we AFFIRM.

                                  I. BACKGROUND

       The Amway Corporation (“Amway”) is a multi-level distributorship of

products. Distributors are paid based on the products they sell and, more

importantly, the sales of any distributors they recruit (their “down-line”).

Therefore, the larger the down-line, the more money a distributor makes. In order

to recruit a down-line distributor, high-level distributors hold promotional events

(“functions”) where they show videotapes of promotional materials, including

portraits of the lifestyle of high-level distributors.

       The defendants in the original consolidated cases were a group of high-level

Amway distributors (“distributors”) and Luster, a videographer who made videos




                                            2
for their functions. When Luster made these videos,1 he included copyrighted

songs without permission from the copyright owners. A group of recording

industry companies sued the distributors and Luster, and settled the case before

trial. At the same time, one group of defendants filed a cross-claim against Luster

for indemnification, on the ground that he was solely responsible for the copyright

infringement. This indemnification case went to trial, and the jury found that

Luster had to indemnify some of the distributors for their share of the settlement

fund and attorneys’ fees.2 Luster filed a motion for judgment as a matter of law,

claiming that the Copyright Act, 17 U.S.C. §§ 101. et seq. (“the Act”), preempted

the claim for indemnification under state common law, that the jury instructions

were confusing, and that the distributors failed to establish a prima facie case of

damages. The district court denied the motion, and Luster appeals.




                                      II. DISCUSSION

       1
          Luster argues that other videographers made some of the videos that were the subject of
the trial. However, we take the facts in the light most favorable to the non-movant, see
Montgomery v. Noga, 168 F.3d 1282, 1289 (11th Cir. 1999), which supports Luster’s
responsibility for all of the videos that are the subject of this appeal.
       2
        At the trial, cross-claimants included the Foleys, the Andersons, the Haugens, the
Gooches, and the Grabills. Luster successfully defended the claims brought by the Foleys and
the Gooches, so only the verdicts in favor of the Andersons, Haugens, and Grabills are at issue in
this appeal.

                                                3
      We review the denial of a motion for judgment as a matter of law de novo,

applying the same standards as the district court, and viewing the evidence and all

reasonable inferences in favor of the non-movant. Montgomery v. Noga, 168 F.3d

1282, 1289 (11th Cir. 1999).

A. Preemption

      Section 301 of the federal Copyright Act (“the Act”) preempts all state

causes of action based on a right found in the Act or an equivalent to such a right.

The Act states 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. . . . [N]o 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). A short list of specific exceptions is delineated in section

“(b)”, resulting in a generally broad scope of preemption. One of those exceptions

is for state common law or statutes “with respect to . . . (3) activities violating legal

or equitable rights that are not equivalent to any of the exclusive rights within the

general scope of copyright as specified by section 106.” 17 U.S.C. § 301(b)(3).

The result of this subsection is that the Act “preempts only those state law rights

that may be abridged by an act which, in and of itself, would infringe one of the


                                            4
exclusive rights provided by federal copyright law.” Computer Assoc. Int’l, Inc. v.

Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (quotations omitted).

      Section 301(b)(3) has led to the development of the “extra element” test,

which we adopted in Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1549 (11th Cir.

1996). Under this test, “if an extra element is required instead of or in addition to

the acts of reproduction, performance, distribution or display, in order to constitute

a state-created cause of action, then the right does not lie within the general scope

of copyright and there is no preemption.” Altai, 982 F.2d at 716 (quotations

omitted). Along these lines, “[a] state law claim is not preempted if the extra

element changes the nature of the action so that it is qualitatively different from a

copyright infringement claim.” Id. (quotations omitted). For example, awareness

and intent are not considered to be qualitatively different elements substantial

enough to serve as an “extra element.” See id. at 717. In Mnemonics, we applied

this test to Florida trade secret law, and recognized that the breach of duty essential

to a trade secret case is an extra element that qualitatively distinguishes those

claims from copyright claims. Mnemonics, 79 F.3d at 1549 (quoting Altai, 982

F.2d at 717). Accordingly, in Mnemonics, the plaintiff’s trade secret cause of

action based on alleged infringements of computer software and hardware

copyrights was not preempted.


                                           5
       It is important to understand why this extra element test is not applicable to

the case before us. The extra element test was developed to protect the “exclusive

rights” of copyright holders. See Altai, 982 F.3d at 716. The Act establishes a

comprehensive set of rights and remedies to protect copyrights, and preempts most

state actions so that the rights and remedies will be consistent for all copyright

holders. The indemnity case before us, however, does not concern the rights of a

copyright holder. Rather, it concerns the allocation of responsibility between

copyright infringers. Whether or not Luster indemnifies the distributors for their

share of the settlement fund and attorneys’ fees is “not equivalent to any of the

exclusive rights within the general scope of copyright as specified by section 106."

17 U.S.C. § 301(a). Because the question before us does not fall within this

provision of the Act, the exception found in § 301(b)(3) is irrelevant, and,

therefore, the extra element test does not apply.3 Instead, we apply general

preemption law to determine whether an indemnity case brought pursuant to

Florida common law is preempted by the Act.




       3
         This reasoning is consistent with that applied in the context of patent law. See Cover v.
Hydramatic Packing Co., 83 F.3d 1390, 1393-94 (Fed. Cir. 1996) (rejecting the argument that
patent law preempts an indemnity claim brought pursuant to a state statute, because once the
infringement litigation is settled, “patentee and the patent code are no longer in the picture,” and
the patent laws become “simply irrelevant.”).

                                                 6
      Under Article VI of the U.S. Constitution, federal law is the “supreme Law

of the Land,” and any state law that is in conflict with a federal law is preempted.

See Maryland v. Louisiana, 451 U.S. 725, 746, 101 S. Ct. 2114, 2128-29 (1981).

In an effort to explain preemption, the Supreme Court has clarified that

      Congress’ intent may be explicitly stated in the statute’s language or
      implicitly contained in its structure and purpose. In the absence of an
      express congressional command, state law is pre-empted if that law
      actually conflicts with federal law, or if federal law so thoroughly
      occupies a legislative field as to make reasonable inference that
      Congress left no room for the States to supplement it.

Cipollone v. Liggett Group, Inc., 505 U.S. 504, 516, 112 S. Ct. 2608, 2617 (1992)

(quotations and citations omitted). These bases for preemption are commonly

referred to as explicit preemption, conflict preemption, and field preemption.

When determining whether a state law is preempted under one of these bases, we

look to the intent of Congress in passing the federal law. Malone v. White Motor

Corp., 435 U.S. 497, 504, 98 S. Ct. 1185, 1190 (1978) (“‘The purpose of Congress

is the ultimate touchstone’” of preemption.) (quoting Retail Clerks v.

Schermerhorn, 375 U.S. 96, 103, 84 S. Ct. 219, 223 (1963)). By applying each

basis for preemption to Luster’s argument, we find that an indemnity claim under

the common law of Florida is not preempted by the Act.



   1. Explicit Preemption

                                          7
       Explicit preemption is evident when “Congress' command is explicitly stated

in the statute's language or implicitly contained in its structure and purpose.” Jones

v. Rath Packing Co., 430 U.S. 519, 525, 97 S. Ct. 1305, 1309 (1977). Section 301

explicitly preempts all claims that are covered under § 106 of the Act, if they come

within the subject matter of §§ 102 and 103.4 These include violations of the

following rights:

       (1) to reproduce the copyrighted work in copies or phonorecords;
       (2) to prepare derivative works based upon the copyrighted work;
       (3) to distribute copies or phonorecords of the copyrighted work to the
       public by sale or other transfer of ownership, or by rental, lease, or
       lending;
       (4) in the case of literary, musical, dramatic, and choreographic works,
       pantomimes, and motion pictures and other audiovisual works, to
       perform the copyrighted work publicly;
       (5) in the case of literary, musical, dramatic, and choreographic works,
       pantomimes, and pictorial, graphic, or sculptural works, including the
       individual images of a motion picture or other audiovisual work, to
       display the copyrighted work publicly; and
       (6) in the case of sound recordings, to perform the copyrighted work
       publicly by means of a digital audio transmission.

17 U.S.C. § 106. It is evident that the congressional intent in § 106 was to protect

the rights of copyright holders, not to govern cases between infringers. Nothing in

the language of § 301 explicitly prohibits indemnity suits, nor is there a message in



       4
        Though not relevant to this discussion, § 102 lists the tangible mediums of expression
and works of authorship that are covered under the Act, and § 103 explains compilations and
derivative works.

                                                8
the structure of §§301 and 106 read together that implies a preemption of

indemnity suits. Therefore, such suits are not explicitly preempted by the Act.

   2. Conflict Preemption

       Conflict preemption “arises when compliance with both federal and state

regulations is a physical impossibility, or where state law stands as an obstacle to

the accomplishment and execution of the full purposes and objectives of

Congress.” Pacific Gas and Elec. Co. v. State Energy Res. Conservation and Dev.

Comm’n, 461 U.S. 190, 204, 103 S. Ct. 1713, 1722 (1983) (quotations and

citations omitted). Again, a suit for indemnity between defendants in a copyright

infringement case is not an obstacle to congressional intent, which was to protect

copyright holders in a comprehensive and uniform way that was consistent with

Article I, Section 8, clause 8 of the U.S. Constitution.5 Further, it is certainly

permissible for a plaintiff to sustain a copyright infringement suit while the

defendants litigate an indemnity suit as a cross-claim. Therefore, a state indemnity

suit is not barred by the principles of conflict preemption.




       5
        That clause is a limitation on, as well as a grant of, the copyright power. See Paul J.
Heald and Suzanna Sherry, “Implied Limits on the Legislative Power: the Intellectual Property
Clause as an Absolute Constraint on Congress,” 2000 U. ILL. L. REV. 1119 (2000).

                                                9
   3. Field Preemption

      Finally, preemption is evident where “[t]he scheme of federal regulation [is]

so pervasive as to make reasonable the inference that Congress left no room for the

States to supplement it.” Rice v. Santa Fe Elevator Corp., 331 U.S. 218, 230, 67 S.

Ct. 1146, 1152 (1946). In this situation, “the federal interest is so dominant that

the federal system will be assumed to preclude enforcement of state laws on the

same subject.” Id. If the distributors had brought any type of copyright claim

against Luster, this area of preemption may have precluded the suit. However, the

Act does not touch on the field of common law indemnity, and indemnity does not

intrude upon the field of rights guaranteed by the Act. Accordingly, the indemnity

claim is not preempted by any of the bases for federal preemption, and the district

court properly denied the motion for judgment as a matter of law on these grounds.

B. Jury Instructions

      Luster also asks for judgment as a matter of law because the jury instructions

confused vicarious liability under federal copyright law with the type of liability

necessary to qualify for indemnity under Florida law. We have held that our role,

“in reviewing a trial court’s jury instructions, is to assure that the instructions show

no tendency to confuse or to mislead the jury with respect to the applicable

principles of law. We will not disturb a jury’s verdict unless the charge, taken as a


                                           10
whole, is erroneous and prejudicial.” Mosher v. Speedstar Div. of AMCA Int’l,

Inc., 979 F.2d 823, 824 (11th Cir. 1992) (quotations and citations omitted). We do

not find that the jury instruction was erroneous and prejudicial, and accordingly,

we affirm the judgment of the district court.

       There is a two-part test to prevail on a claim for indemnity under the

common law of Florida. “First, the party seeking indemnification must be without

fault, and its liability must be vicarious and solely for the wrong of another.

Second, indemnification can only come from a party who was at fault.” Dade

County Sch. Bd. v. Radio Station WQBA, 731 So. 2d 638, 642 (Fla. 1999)

(quotations and citations omitted). Accordingly, “[a] weighing of the relative fault

of tortfeasors has no place in the concept of indemnity for the one seeking

indemnity must be without fault.” Houdaille Indus., Inc. v. Edwards, 374 So.2d

490, 493 (Fla. 1979). Luster argues that it was error to instruct the jury that

“[v]icarious liability arises when someone, without knowledge that the activity

infringes a copyright, has the right and ability to supervise the infringing activity

and a financial interest in the activity.” R21-470-5. He argues that failure to

supervise constitutes partial fault and, therefore, this jury instruction allowed the

jury to find for the distributors, even if they are partially at fault.




                                            11
      Viewing the jury instructions “as a whole,” however, we reject this

argument. The district court made clear that if the jury found that Luster was not

completely responsible for the copyright infringement, it would have to find for

Luster. The relevant portion of the instruction on indemnity stated:

             Plaintiffs have asserted that Defendant Luster should indemnify
      them for the monies they paid in settlement to the copyright holders and
      for their attorneys fees and expenses associated with that litigation. In
      order for Plaintiffs to be entitled to indemnification regarding the
      copyright matters, they must prove by a preponderance of the evidence,
      that: 1) they were without fault; 2) that their liability to the copyright
      holders was entirely vicarious, that is, arising solely from the acts of
      Defendant Luster; and 3) that Luster alone was at fault with respect to
      the copyright matters. All three elements must be present in order to
      establish a right to indemnification.
             As to each Plaintiff, if you find that that Plaintiff was not at fault,
      and that Plaintiff was vicariously liable for Defendant Luster’s acts and
      that Defendant Luster was at fault, then your verdict should be for that
      Plaintiff on his or her claim for indemnity. As to each Plaintiff, if you
      find that a Plaintiff was at fault, or that Defendant Luster was not at fault,
      or that both that Plaintiff and Defendant were at fault, then your verdict
      is for Defendant Luster as to that Plaintiff.

R21-470-4-5. The portion that Luster quotes to make his argument is later in the

instruction, in the context of the various theories of liability under which the

distributors would have been found guilty of copyright infringement, but for the

settlement. After the district judge explained the theories of copyright liability, he

reiterated that “[i]n order to be entitled to indemnity for these amounts, Plaintiffs

must show that the amounts they paid for settlement and fees were entirely


                                           12
Luster’s responsibility (as explained previously) and not based on any direct or

contributory infringement by the Plaintiffs themselves.” R21-470-6. It is clear that

the jury understood the instruction, as they found for Luster on the claims of two

distributors, where they apparently believed that Luster was not entirely at fault.

C. Damages

       Luster’s final argument is that the distributors failed to apportion the

damages between him and the other videographers appropriately. His position is

that, because he presented evidence that other videographers made at least one of

the videos at issue in the trial, the distributors had to correctly apportion damages

and he should only be responsible for the portion attributable to the videos he

made. However, as the district court stated, “Luster was sued for indemnity, not

for contribution.” R21-488-3. Indemnity “shifts the entire loss from one who,

although without active negligence or fault, has been obligated to pay, because of

some vicarious, constructive, derivative, or technical liability, to another who

should bear the costs because it was the latter’s wrongdoing for which the former is

held liable.” Houdaille, 374 So. 2d at 493 (emphasis added). The distributors

brought a cross-claim against only Luster,6 and the jury found for those



       6
         One of Luster’s possible recourses in this situation was to join the other videographers
as codefendants and sue them for indemnity, which he failed to do.

                                               13
distributors. Therefore, the jury found that Luster was wholly responsible for the

damages. The district court correctly denied judgment as a matter of law on this

issue as well.

                               III. CONCLUSION

      We find that the distributors’ claim for indemnification was not preempted

by the Act. Therefore, the district court correctly denied judgment as a matter of

law on that issue. We also conclude that the jury instructions were adequate and

that the jury found that Luster was wholly responsible for the copyright

infringement, as evidenced by their verdict. Accordingly, we AFFIRM.




                                         14
