For the reasons set forth below, Plaintiff's motion to remand the action to the New York County Supreme Court is granted.
On November 21, 1995, Plaintiff Enhanced Computer Solutions, Inc. ("ECS"), filed this action in the Supreme Court of the State of New York, County of New York, under index number 95/6000321. The Complaint includes four causes of action, all centering around an employment agreement allegedly entered into between ECS and Defendant Joel Rose in February 1991.
On March 22, 1996, ECS served interrogatory responses on Defendant's counsel. On March 27, 1996, Rose removed the action to this Court. Rose premises removal on certain interrogatory responses served on March 22, 1996.
ECS now moves to remand the action to New York County Supreme Court, arguing first that the notice of removal was untimely, and second that the Court lacks subject matter jurisdiction over the controversy.
Rose responds that removal was timely filed because it first became evident that a federal question was involved when Rose received the interrogatory responses dated March 22, 1996. Rose argues in favor of subject matter jurisdiction by claiming that "ECS's claims of misappropriation of trade secrets are dependent upon issues which require determinations of federal Copyright law." Def.'s Mem. in Opp'n at 2.
"It is well-settled that not every case involving federal copyright laws 'arises under' those laws such that federal jurisdiction is proper pursuant to § 1338(a)." Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d 926, 931 (2d Cir. 1992) (citing T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964), cert. denied, 381 U.S. 915, 14 L. Ed. 2d 435, 85 S. Ct. 1534 (1965)). Assuming, for purposes of analysis only, that the Copyright Act displaces all preempted state law claims "to the extent that complaints filed in state courts purporting to plead such state common law causes of action are removable to federal court under 28 U.S.C. § 1441(b)," Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 60, 95 L. Ed. 2d 55, 107 S. Ct. 1542 (1987),
then the first question for consideration is whether the present cause of action -- upon which removal is premised -- has been preempted by the Copyright Act. This question is central in this case because if there is no preemption, then the disputed claim does not arise under federal law for purposes of removal. See Caterpillar Inc. v. Williams, 482 U.S. 386, 398-99, 96 L. Ed. 2d 318, 107 S. Ct. 2425 (1987).
In Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), the Second Circuit discussed, in depth, the general law of copyright preemption regarding trade secret claims. The Second Circuit stated:
Section 301 [of the Copyright Act] . . . preempts only those state law rights that "may be abridged by an act which, in and of itself, would infringe one of the exclusive rights" provided by federal copyright law. . . . . But 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." 1 [Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.01[B], at 1-14-15 (1991)]; see also Harper & Row, Publishers, Inc. [v. Nation Enters., 723 F.2d 195, 200 (2d Cir. 1983), rev'd on other grounds, 471 U.S. 539, 85 L. Ed. 2d 588, 105 S. Ct. 2218 (1985)] . . . .