204 F.3d 343 (2nd Cir. 2000), 98-9162, Bassett v Mashantucket Pequot Tribe

Docket Nº:Docket No. 98-9162
Citation:204 F.3d 343
Party Name:DEBRA BASSETT, doing business as BASSETT PRODUCTIONS, BASSETT ENTERTAINMENT CORP., Plaintiffs-Appellants, v. MASHANTUCKET PEQUOT TRIBE, MASHANTUCKET PEQUOT MUSEUM & RESEARCH CENTER, THERESA BELL, JACK CAMPISI Defendants-Appellees.
Case Date:February 28, 2000
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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204 F.3d 343 (2nd Cir. 2000)

DEBRA BASSETT, doing business as BASSETT PRODUCTIONS, BASSETT ENTERTAINMENT CORP., Plaintiffs-Appellants,

v.

MASHANTUCKET PEQUOT TRIBE, MASHANTUCKET PEQUOT MUSEUM & RESEARCH CENTER, THERESA BELL, JACK CAMPISI Defendants-Appellees.

Docket No. 98-9162

United States Court of Appeals, Second Circuit

February 28, 2000

Argued: June 9, 1999

Plaintiff Debra Bassett, doing business as Bassett Productions, appeals from the dismissal of her complaint against the Mashantucket Pequot Tribe, Mashantucket Pequot Museum & Research Center, and related Defendants. The complaint charged Defendants with copyright infringement, breach of contract, and various state-law torts. The United States District Court for the District of Connecticut (Droney, J.) dismissed the copyright claims against the Tribe and the Museum for lack of jurisdiction, finding under the test of Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d 926, 932-33 (2d Cir. 1992), that they do not "arise under" the Copyright Act for purposes of 28 U.S.C. § 1338 because they are "only incidental" to the claims for breach of contract. The district court dismissed the contract and tort claims against the Tribe pursuant to the doctrine of tribal immunity. Finally, it dismissed the remaining claims against the Defendants other than the Tribe based on its finding that the Tribe is an "indispensable party" under Fed. R. Civ. P. 19(b). The Court of Appeals, Leval, J., holds: (i) whether a copyright claim "arises under" the Copyright Act for purposes of 28 U.S.C. § 1338 is determined in this circuit by applying the standard established in T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964) (Friendly, J.), and not the Schoenberg test; pursuant to the T.B. Harms standard, Bassett's copyright claims against the Tribe "arise under" the Act; (ii) the copyright claims against the Tribe are barred by the doctrine of tribal immunity, as Congress did not explicitly abrogate this immunity in the Copyright Act, and the Tribe's participation in off-reservation commercial activity did not waive it; and (iii) the district court's order dismissing the claims against the remaining Defendants on the ground that the Tribe is an indispensable party is vacated.

Affirmed in part, vacated and remanded in part.

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[Copyrighted Material Omitted]

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RICHARD A. GOREN, Framingham, MA (Ellen Rappaport Tanowitz, Rubin, Hay & Gould, P.C., Framingham, MA, on the brief), for Plaintiffs- Appellants,

DAVID S. WILLIAMS, Norwich, CT (Elizabeth Conway, Brown, Jacobson, Tillinghast, Lahan & King, P.C., Norwich, CT, on the brief), for Defendants- Appellees.

Before: LEVAL and SOTOMAYOR, Circuit Judges, and POLLACK, District Judge.[*].

LEVAL, Circuit Judge:

Plaintiff Debra Bassett, doing business as Bassett Productions, appeals from the dismissal of her complaint against Defendants Mashantucket Pequot Tribe (the "Tribe"), Mashantucket Pequot Museum & Research Center (the "Museum"), Theresa Bell, and Jack Campisi. The complaint charged Defendants with copyright infringement, breach of contract, and various state-law torts. The United States District Court for the District of Connecticut (Christopher F. Droney, Judge) dismissed the copyright claims against the Tribe and the Museum1 for lack of subject matter jurisdiction, dismissed the state-law claims against the Tribe pursuant to the doctrine of tribal immunity, and dismissed all of the claims against the non-tribal Defendants upon finding the Tribe to be an "indispensable party" under Fed. R. Civ. P. 19(b). We affirm the dismissal of the copyright claims against the Tribe, although for different reasons, and vacate and remand the dismissal of the claims against the non-tribal Defendants.

Background

A. Events giving rise to this lawsuit.

According to the allegations of the complaint: Plaintiff Debra Bassett operates a business, Bassett Productions, that produces films and television programs. Defendant Mashantucket Pequot Tribe is a federally recognized Indian tribe with a reservation located within the geographical boundaries of the State of Connecticut. Defendant Mashantucket Pequot Museum is a Connecticut corporation located on the Pequot Reservation.

In October 1994, Bassett met with representatives of the Tribe to discuss the

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possibility of producing a film for the Museum about the Pequot War of 1636-38. In November, Defendant Theresa Bell, acting individually and as a representative of the Tribe, signed a "confidential disclosure agreement" in which she agreed that all information received from Bassett Productions was proprietary, and was to be returned to Bassett Productions at its request. In May 1995, Defendant Jack Campisi, communicating with Bassett on behalf of the Tribe, advised her that the Tribe intended to hire her to produce the film, contingent on the negotiation of a satisfactory contract and the Tribe's acceptance of a script for the film.

In August 1995, Bassett Productions entered into a letter agreement with the Tribe (the "Letter Agreement") for the development and production of a film about the 1636-38 Pequot War. The Letter Agreement identified Bassett Productions as the "Producer" and the Tribe as the "Owner," but did not define these terms. It stipulated that Bassett Productions would "hire and supervise the development and writing of a screenplay by Keith Merrill and George Burdeau," and that the Tribe would "compensate" Bassett Productions for development costs according to an agreed schedule. It also stipulated that "at such time" that the Tribe approved the final draft of the screenplay, Bassett Productions would have exclusive rights to produce the film for exhibition at the Pequot Museum.

Some time before October 30, 1995, Bassett had delivered to the Tribe a script that she herself had written, based on a "script scenario" she had developed with assistance from her associate Allan Eckert. The script was prominently marked on its first page, "(c) 1995 Bassett Entertainment Corporation."2

On October 30, 1995, Bassett received a notice from the Tribe terminating the Letter Agreement. The notice asserted that Bassett had not "perform[ed] the contract as the parties anticipated."

Following the termination of the Letter Agreement, the Tribe continued to pursue the development and production of a film on the 1636-38 Pequot War for exhibition at the Museum. In October 1996, filming was completed on a motion picture entitled, "The Witness." Bassett asserts the Tribe intends to screen the film at the Museum "in the near future" as part of "an interstate-driven tourist attraction."

B. Bassett's lawsuit and the district court's ruling.

In September 1996, Bassett commenced this lawsuit in the United States District Court for the District of Connecticut. The complaint sought an injunction as well as other copyright remedies on the ground that the Tribe and the Museum used Bassett's copyrighted script without her consent or license in order to produce their own film; it further alleged that they breached the Letter Agreement, and that they committed various state-law torts resulting in injury to Bassett. It also charged Bell and Campisi with tortious interference with contract. The charge against Bell and Campisi was expanded in an amended complaint to allege that they infringed Bassett's copyrights in violation of federal law, while acting "on behalf of the Tribe" but "beyond the scope of authority" it could "lawfully bestow" on them.

In March 1997, Defendants moved to dismiss Bassett's complaint for lack of subject matter jurisdiction and for failure to exhaust tribal remedies. In their motion papers, Defendants argued (inter alia) that the court lacked federal question jurisdiction because Bassett's sole federal claim-her claim for copyright infringement-was "incidental to" her contract

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claims, and therefore did not "arise under" federal law.

The district court granted Defendants' motion to dismiss the complaint, and Bassett appealed.

Discussion

Bassett advances three arguments: (1) the district court was mistaken in its impression that the copyright infringement claims against the Tribe and the Museum are "merely incidental" to the contract claims and do not "arise under" federal copyright law for purposes of 28 U.S.C. § 1338(a); (2) the Tribe is not immune from suits in copyright brought by private parties, because the Copyright Act abrogated the sovereign immunity of the Indian Tribes; and (3) even if the claims against the Tribe were properly dismissed, the claims against the remaining defendants should proceed, because the Tribe is not an indispensable party under Rule 19(b).

I. Whether the district court erred in ruling that Bassett's copyright claims against the Tribe and the Museum are "merely incidental" to her contract claims and therefore do not "arise under" federal law.

28 U.S.C. § 1338(a) states that federal district courts "shall" have exclusive, original jurisdiction "of any civil action arising under any Act of Congress relating to . . . copyrights." It is well-established that not every complaint that refers to the Copyright Act "arises under" that law for purposes of Section 1338(a). See, e.g., T.B. Harms Co. v. Eliscu, 339 F.2d 823, 824 (2d Cir. 1964) (Friendly, J.) (noting that this principle traces to "precedents going back for more than a century"). In particular, "the federal grant of a . . . copyright has not been thought to infuse with any national interest a dispute as to ownership or contractual enforcement turning on the facts or on ordinary principles of contract law." Id. at 826. Here, the district court, relying on our discussion in dictum in Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d...

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