The opinion of the court was delivered by: McKENNA, D.J.
This action was commenced in the Supreme Court of the State of New York, County of New York, by the filing of a summons without a complaint on or about April 22, 2009. A complaint was filed on or about July 17, 2009. On or about August 7, 2009, defendants Grabowski-Shaikh (sued as "Shaikh") and Hungry Eye Records, LLC ("Hungry Eye") removed the action to this district. Pursuant to a stipulation between the parties, an amended verified complaint ("Amended Complaint") (captioned in the state court action) was filed on or about September 15, 2009. Plaintiffs move to remand.
The ground for removal is that the Amended Complaint (as well as the original complaint) alleges the violation of the United States Copyright Act.*fn1 Defendants claim that five of the alleged causes of action in the Amended Complaint -- the ninth, tenth, eleventh, twelfth and thirteenth*fn2 -- "are all effectively claims for copyright infringement and, therefore, are preempted by the Federal Copyright Act." (Def. Mem. at 4.)
The allegations of the Amended Complaint principally relevant to the present motion are that in 2004-2005 plaintiffs wrote six songs, and recorded their performance of them on an extended play compact disc, that in January 2006 plaintiffs entered into a "Deal Memo" with Hungry Eye, that in September 2006 Hungry Eye registered copyright in the songs in its own name as the assignee of copyright (identifying plaintiffs as the author)*fn3, that the plaintiffs in February of 2008 terminated the "Deal Memo," that defendants have failed properly to account to plaintiffs, and that Hungry Eye mechanically reproduced and distributed plaintiffs' recorded compositions without authorization or payment of royalties. Plaintiffs also wrote and recorded works in 2009 which, after the commencement of this action, defendants attempted to pre-register.
Plaintiffs claim that defendants breached the Deal Memo, oral promises made to them, and the covenant of good faith and fair dealing.
They claim that defendants registered copyright in plaintiffs' works in 2006 by the misrepresentation to the Copyright Office that defendants had the right to do so. Plaintiffs seek: damages for breach of contract, unjust enrichment, the violation of their right to privacy, and fraud; punitive damages; a declaratory judgment that the Deal Memo, if valid, was terminated; rescission of the publication portions of the Deal Memo; a direction that Shaikh take all necessary steps to remedy the fraudulent and inaccurate copyright registrations; and costs and attorneys' fees.
Federal district courts have original and exclusive jurisdiction over civil actions "arising under" the Copyright Act.
28 U.S.C. § 1338(a). "For an action to arise under [the Copyright Act], the plaintiff's well-pleaded complaint must establish either that the act creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of law under the act." Briarpatch Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296, 303-04 (2d Cir. 2004) (citation omitted).
At times, a plaintiff may plead "state law claims... that could potentially be preempted by the Copyright Act." Id. at 304.
Preemption does not necessarily confer jurisdiction, since it is generally a defense to plaintiff's suit and, as such, it does not appear on the face of a well-pleaded complaint. It is only when based on the doctrine of "complete preemption," that the preemptive force of federal law is so "extraordinary" that it converts an ordinary state common-law complaint into one stating a federal claim for purposes of the well-pleaded complaint rule.
In Briarpatch, the Second Circuit, in light of Beneficial National Bank v. Anderson, 539 U.S. 1 (2003), concluded that district courts have jurisdiction over state law claims ...