corrections to the proofs and gave said proofs to Reed. (Compl. P 23.) In December 1994, Reed published the Work in the United States without Lombardi's knowledge or approval. (Compl. P 24.) The Work published in the United States did not incorporate the changes made by Lombardi. (Compl. PP 25-28.)
To date, Suares has yet to make an accounting of any profits available to Lombardi. Defendant now moves to dismiss for lack of jurisdiction pursuant to Fed. R. Civ. P. 12(b)(1).
Lombardi claims federal jurisdiction under 28 U.S.C. § 1338(a), which states that the "district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to . . . copyrights." 28 U.S.C. § 1338(a). Under Section 1338(a) the Court must decide whether the claims in the Complaint "arise under" the Copyright Acts. Plaintiff claims they do because the Court must interpret Sections 101 and 201 of the Copyright Act of 1976 in order to decide the main issue of his case.
The grant of federal jurisdiction pursuant to Section 1338, is not thought to include a "dispute as to ownership or contractual enforcement turning on the facts or on ordinary principles of contract law." T.B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir. 1964), cert. denied, 381 U.S. 915, 14 L. Ed. 2d 435, 85 S. Ct. 1534 (1965). The criteria established by the Second Circuit to determine whether an action arises under the Copyright Act are as follows: if the Complaint is for a remedy expressly granted by the Act, or the Complaint asserts a claim requiring construction of the Act or if the Complaint presents an issue surrounding a "distinctive policy of the Act requiring that federal principles control the disposition of the claim," T.B. Harms, 339 F.2d at 828, then the claim "arises under" the Copyright Act.
In assessing the jurisdiction of the Court, "the formal allegations of the complaint must yield to the substance of the claim." Stepdesign, Inc. v. Research Media, Inc., 442 F. Supp. 32, 33 (S.D.N.Y. 1977); see also T.B. Harms, 339 F.2d 823; Bear Creek Prods., Inc. v. Saleh, 643 F. Supp. 489, 492 (S.D.N.Y. 1986). Defendant argues that Plaintiff's principal complaint is one grounded in contract.
Plaintiff argues that he has brought a copyright cause of action because he seeks a declaratory judgment that he is the contributor of a joint work, pursuant to 17 U.S.C. § 101. Plaintiff alleges that because the definition of "joint work"
appears in the Copyright Act the action is properly before the Court. Although the Plaintiff agrees with the Defendant that issues of ownership pursuant to a contract including a transfer of the rights in a copyright, are usually not governed by federal jurisdiction, he argues that 1) here there is no claim of a transfer of a copyright right or an ownership issue arising from a written contract and 2) that this rule arose under the Copyright Act of 1909. Plaintiff argues his claim depends on whether he is considered a joint author and therefore a joint owner. In response, Defendant asserts that he is not challenging the fact that Plaintiff wrote the original text, (Def.'s Reply Mem. at 3) but that the nature of the relationship between him and the Plaintiff is contractual -- Defendant alleges that Plaintiff was a "work for hire" author. (Suares Aff. P 5.)
The Court must decide whether a decision defining whether Plaintiff contributed to a joint work is one of copyright law or one of contract law. The Court finds it is one of copyright law. See RX Data Corp. v. Department of Soc. Servs., 684 F.2d 192, 196 n.1 (2d Cir. 1982); Lieberman v. Estate of Chayefsky, 535 F. Supp. 90 (S.D.N.Y. 1982). There is no written contract here for the Court to interpret.
The Court must lock at the Complaint, at this juncture of the case, in a light favorable to the Plaintiff. It would seem therefore that the applicability of terms defined in the Copyright Act are at issue between the parties.
Finding that Plaintiff's allegations require a determination of the applicability of definitions contained in the Copyright Act, this case is found to arise under the Act. Therefore, pursuant to the Harms test, this is an issue that falls under 28 U.S.C. 1338(a).
The Court, finding subject matter jurisdiction, at this juncture, also retains jurisdiction over the state law claims, pursuant to 28 U.S.C. § 1367. See Block v. First Blood Assocs., 988 F.2d 344, 351 (2d Cir. 1993).
The parties are hereby ordered to appear for a pre-trial conference on May 31, 1996, at 10:30 A.M.
Dated: New York, New York
April 29, 1996
Deborah A. Batts