A Cal. P'ship v. Activision Publ'g Inc., CV 09-8872 SVW (VBKx).

• Decision Date: 14 January 2010
• Docket Number: No. CV 09-8872 SVW (VBKx).,CV 09-8872 SVW (VBKx).
• Citation: 702 F.Supp.2d 1139
• Parties: NO DOUBT, a California Partnership, Plaintiff, v. ACTIVISION PUBLISHING, INC., a Delaware Corporation, Defendant.
• Court: U.S. District Court — Central District of California

702 F.Supp.2d 1139

NO DOUBT, a California Partnership, Plaintiff,

v.ACTIVISION PUBLISHING, INC., a Delaware Corporation, Defendant.

No. CV 09-8872 SVW (VBKx).

United States District Court,C.D. California.

Jan. 14, 2010.

Bert H. Deixler, Gil Nathan Peles, Proskauer Rose LLP, Los Angeles, CA, for Plaintiff.

Michael T. Zeller, Quinn Emanuel Urquhart Oliver & Hedges LLP, Los Angeles, CA, for Defendant.

ORDER GRANTING PLAINTIFF'S EX PARTE APPLICATION TO REMAND [8] AND REMANDING CASE TO LOS ANGELES COUNTY SUPERIOR COURT

STEPHEN V. WILSON, District Judge.

I. Introduction

Plaintiff filed a Complaint against Defendant in state court. Defendant removed the case to federal court, arguing that Plaintiff's Complaint is preempted by the Copyright Act. Plaintiff filed an ex parte application to remand the case to state court. For the following reasons, the Court grants Plaintiff's application and remands the case to state court.

II. Facts

The following facts are taken from Plaintiff's complaint, which for present purposes must be taken as true. Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir.1987); see also Doe v. Holy See, 557 F.3d 1066, 1073 (9th Cir.2009).

Plaintiff No Doubt is a music group. Defendant Activision Publishing, Inc. is a video game manufacturer. On May 21, 2009, Plaintiff and Defendant entered into a contract whereby Plaintiff licensed Defendant a specific, limited and restricted use of Plaintiff's name, likeness, and musical works in Defendant's new video game, Band Hero. Under the agreement, Plaintiff permitted Defendant to create animated character representations, or “avatars,” of Plaintiff's likeness for the limited purpose of allowing the characters to perform three of Plaintiff's own musical works. Plaintiff asserts that the Agreement contained express limitations on Defendant's uses of Plaintiff's likeness, and that any other use of Plaintiff's likeness would be subject to Plaintiff's approval.

According to the Complaint, Defendant created in Band Hero the ability to have lifelike embodiments of Plaintiff and its individual band members sing, dance and perform over sixty songs that were neither contracted for nor approved of, and have never been performed, by Plaintiff. Plaintiff asserts Defendant hired actors to impersonate Plaintiff and enable the No Doubt avatar characters to perform these sixty plus unapproved songs.

The video game includes a Character Manipulation Feature that allows game-players to manipulate each character's likeness to engage in unapproved acts with other characters included in the game. This feature allows users to cause members of No Doubt to perform vocally as soloists without their band members, including having male members sing with female voices. Plaintiff argues that the Agreement only allowed the use of Plaintiff's name and likeness as a collective group, and not as solo artists. Plaintiff further asserts that it never agreed to allow the use of its name and likeness for the Character Manipulation Feature of Band Hero.

On November 4, 2009, Plaintiff filed a Complaint alleging six causes of action in state court: (1) fraudulent inducement; (2) violation of California Civil Code § 3344 and common law right of publicity; (3) breach of contract; (4) unfair business practices; (5) injunctive relief; and (6) rescission.

Defendant filed a timely notice of removal under 28 U.S.C. § 1441(b) asserting that one or more of Plaintiff's claim arise under federal law. Plaintiff then filed an ex parte Application to Remand on the ground that its claims do not arise under federal law. Plaintiff's application to remand is the subject of the present order.

In seeking to remand the case, Plaintiff asserts that it does not contest Defendant's copyright in the licensed use. Rather, Plaintiff argues that its claims cannot be preempted by the Copyright Act because they arise only from the misappropriation of Plaintiff's name and likeness in violation of the agreement. Plaintiff further asserts that its request for injunctive relief does not cause its claims to be preempted because the request for an injunction does not change the nature of Plaintiff's claims.

Defendant asserts that the Copyright Act preempts Plaintiff's claim because Band Hero and in-game avatars fall within the subject matter of the Copyright Act and that Plaintiff's publicity and unfair competition claims also fall within the scope of the Copyright Act.

III. Legal StandardsA. Removal

“[A]ny civil action brought in a State court of which the district courts of the United States have original jurisdiction, may be removed by the defendant or the defendants, to the district court of the United States.” 28 U.S.C. § 1441(a). If the federal courts lack subject matter over the action, the case must be remanded to the state court from which it was removed. 28 U.S.C. § 1447(c).

The Ninth Circuit has expressed a “strong presumption against removal.” Gaus v. Miles, Inc., 980 F.2d 564, 567 (9th Cir.1992). The removing party bears the burden of establishing that removal was appropriate, and “the removal statute is strictly construed against removal jurisdiction.” Nishimoto v. Federman-Bachrach & Assoc., 903 F.2d 709, 712 (9th Cir.1990). Federal courts must remand the case “if there is any doubt as to the right of removal.” Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th Cir.1992) (citing Libhart v. Santa Monica Dairy Co., 592 F.2d 1062, 1064 (9th Cir.1979)).

B. Federal Jurisdiction

In the present case, removal is premised on both the general federal question statute, 28 U.S.C. § 1331, which provides that “[t]he district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States,” as well as the statute governing jurisdiction over copyright claims, 28 U.S.C. § 1338, which provides that “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to ... copyrights.” Section 1338 further provides that “[s]uch jurisdiction shall be exclusive of the states in ... copyright cases.”

“The presence or absence of federal-question jurisdiction is governed by the well-pleaded complaint rule, which provides that federal jurisdiction exists only when a federal question is presented on the face of the plaintiff's properly pleaded complaint.” Caterpillar, Inc. v. Williams, 482 U.S. 386, 392, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987). To determine whether removal was appropriate, the court must focus on the plaintiff's complaint: “[j]urisdiction may not be sustained on a theory that the plaintiff has not advanced.” Merrell Dow Pharmaceuticals, Inc. v. Thompson, 478 U.S. 804, 810, 106 S.Ct. 3229, 92 L.Ed.2d 650 (1986). The well-pleaded complaint rule “makes the plaintiff the master of the claim; he or she may avoid federal jurisdiction by exclusive reliance on state law.” Id. (citing Fair v. Kohler Die & Specialty Co., 228 U.S. 22, 25, 33 S.Ct. 410, 57 L.Ed. 716 (1913)). This rule limits the removal of cases where state law “creates the cause of action,” and thus avoids “a number of potentially serious federal-state conflicts.” Franchise Tax Board v. Construction Laborers Vacation Trust, 463 U.S. 1, 9-10, 103 S.Ct. 2841, 77 L.Ed.2d 420 (1983).

Ordinarily, a defense based on federal preemption of a state law cause of action is a matter that can be addressed in state court. Preemption defenses do not give rise to federal question jurisdiction under 28 U.S.C. § 1331, and thus do not provide removal jurisdiction under 28 U.S.C. § 1441. See Louisville & Nashville Railroad Co. v. Mottley, 211 U.S. 149, 152, 29 S.Ct. 42, 53 L.Ed. 126 (1908) (anticipation of federal defenses is not a sufficient basis for federal question jurisdiction). However, in certain situations, the doctrine of “complete preemption” provides that state-law causes of action are federal causes of action in sum and substance, and accordingly arise under federal law for purposes of 28 U.S.C. § 1331. See Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 107 S.Ct. 1542, 95 L.Ed.2d 55 (1987); see also Beneficial Nat. Bank v. Anderson, 539 U.S. 1, 8, 123 S.Ct. 2058, 156 L.Ed.2d 1 (2003) (“[A] state claim may be removed to federal court in only two circumstances-when Congress expressly so provides, ... or when a federal statute wholly displaces the state-law cause of action through complete pre-emption.”).

For purposes of the present motion, the Court will assume without deciding that copyright preemption is “complete preemption” permitting removal of preempted state-law claims. Accord Briarpatch Ltd., L.P v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir.2004), cert. denied, 544 U.S. 949, 125 S.Ct. 1704, 161 L.Ed.2d 525 (2005); Worth v. Universal Pictures, Inc., 5 F.Supp.2d 816 (C.D.Cal.1997); Dielsi v. Falk, 916 F.Supp. 985 (C.D.Cal.1996).

C. Copyright Preemption

Section 301(a) of the Copyright Act preempts “all legal and equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106” and “in works of authorship that ... come within the subject matter of copyright as specified by sections 102 and 103.” 17 U.S.C. § 301(a). Section 301(b) clarifies that “Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to ... subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103.” Id. at § 301(b). Congress has explained that “[t]he intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent to copyright and that extend to works within the scope of the Federal copyright law.” Laws v. Sony Music Ent., Inc., 448 F.3d 1134, 1137 (9th Cir.2006) (quoting H.R.Rep. No. 94-1476, at 130 (1976)).

The Ninth Circuit applies a two-part test to determine whether a state law claim is preempted by § 301 of the...