Patrick v. Francis

• Decision Date: 17 May 1995
• Docket Number: No. 95-CV-144S.,95-CV-144S.
• Citation: 887 F. Supp. 481
• Parties: Donna PATRICK, Plaintiff, v. Julie FRANCIS, Dr. Amy Rummel, Dr. Frank Duserick, Dr. Ernest Enke, and Alfred University, Defendants.
• Court: U.S. District Court — Western District of New York

887 F. Supp. 481

Donna PATRICK, Plaintiff, v. Julie FRANCIS, Dr. Amy Rummel, Dr. Frank Duserick, Dr. Ernest Enke, and Alfred University, Defendants.

No. 95-CV-144S.

United States District Court, W.D. New York.

May 17, 1995.

Kenneth I. Feinman, Siegel, Kelleher & Kahn, Buffalo, NY, for plaintiff.

Heidi L. Holman, Nixon, Hargrave, Devans & Doyle, Rochester, NY, for defendants.

DECISION AND ORDER

SKRETNY, District Judge.

INTRODUCTION

Before this Court are (1) defendants' motion filed March 8, 1995, to dismiss plaintiff's complaint pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted, and (2) plaintiff's motion filed March 29, 1995, to remand this action to the Supreme Court of the State of New York. Plaintiff filed her complaint in the Supreme Court of the State of New York, Allegany County, on January 19, 1995, alleging unlawful conversion, unlawful competition, unjust enrichment, copyright violation, and intentional infliction of emotional distress. Plaintiff claims that defendants published a study and research project that plaintiff primarily wrote and that was derived from concepts and ideas plaintiff formulated. Defendants removed the action to this Court on March 1, 1995, on the grounds that plaintiff asserts copyright violations of which this Court has original jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), 1441(b).

Defendants filed a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) on March 7, 1995, asserting that plaintiff has failed to plead the basic elements of copyright infringement.¹ On March 29, 1995, plaintiff filed a motion to remand this action to the Supreme Court of the State of New York. Plaintiff claims that the causes of action she asserts arise under state law and are not removable.²

For the reasons set forth below, this Court will deny plaintiff's motion to remand and grant defendants' motion to dismiss.

FACTS

Plaintiff alleges the following facts in her complaint. In July 1992 plaintiff was a student at Alfred University. She engaged at that time in an in-depth, extensive, long-term study and research project under the advice and direction of defendant Dr. Amy Rummel. Dr. Rummel directed plaintiff in January 1993 to accept Julie Francis to assist and participate in the project. Ms. Francis was a fellow student at Alfred. Plaintiff and Ms. Francis completed and submitted the project to Dr. Rummel in May 1993. Plaintiff claims that she primarily wrote the project, which was derived from concepts and ideas she formulated.

On August 31, 1994, plaintiff learned that defendants had published the study and research project in the spring 1994 edition of Hospital Topics. The article named Julie Francis, Dr. Edward G. Coll, Dr. Amy Rummel, Dr. Frank Duserick, and Dr. Ernest Enke as coauthors. The publication did not attribute any authorship or contribution to plaintiff. Plaintiff claims that defendants published the project without her knowledge or permission for their own purposes and to further their own careers. She alleges causes of action for unlawful conversion, unlawful competition, unjust enrichment, copyright violation, and intentional infliction of emotional distress. She seeks $500,000 damages as to each cause of action.

DISCUSSION

Defendants, having removed this action to federal court, seek to dismiss it pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted. Plaintiff claims that this Court lacks jurisdiction and should remand the action to state court. This Court will first address the jurisdictional issue that plaintiff's motion to remand presents.

1. Motion to Remand

Defendants removed this action to the United States District Court for the Western District of New York on March 1, 1995. They assert that the action constitutes in part a claim by plaintiff to recover damages pursuant to the Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. § 501. This Court, they claim, has original subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), and 1441(b). Plaintiff disagrees. She argues that her complaint alleges only common law copyright and other state law claims, not violation of the Copyright Act. Federal district court, she contends, does not have original jurisdiction. (Feinman Aff. ¶ 4.) This Court must resolve whether the Copyright Act does in fact preempt plaintiff's claims and, if so, whether removal is proper on that basis.

A. Preemption

The first issue is whether the Copyright Act preempts plaintiff's state law claims. Section 301 of the Copyright Act states in part that:

all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright ... whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. § 301(a). Congress clearly expressed its purpose: "The intention of Section 301 is to preempt and abolish any rights under the common law or state statutes, that are equivalent to copyright and that extend to works within the Federal Copyright Law." H.R.Rep. No. 1476, 94th Cong., 2d Sess. 130, reprinted in 1976 U.S.C.C.A.N. 5659, 5746.

The Copyright Act preempts a state cause of action if the subject matter of the state law rights falls within the subject matter of federal copyright law and the state law rights asserted are equivalent to the exclusive rights federal copyright law protects. Computer Associates International, Inc. v. Altai, 982 F.2d 693, 716 (2d Cir.1992); Harper & Row, Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). "A state right is equivalent to copyright if the state right `is infringed by the mere act(s) of reproduction, performance, distribution or display.'" Universal City Studios, Inc. v. The T-Shirt Gallery, Ltd., 634 F.Supp. 1468, 1475 (S.D.N.Y.1986) (quoting Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1535 (S.D.N.Y.1985)). A common law or state statutory cause of action is not "equivalent" and, hence, not preempted if it requires proof of an "extra element" that changes the "nature of the action so that it is qualitatively different from a copyright infringement claim." Computer Associates, 982 F.2d at 716 (quoting Mayer, 601 F.Supp. at 1535).³

Defendants contend that the Copyright Act preempts plaintiff's first, second, third, and fourth causes of action. Plaintiff's fourth cause of action alleges that defendants have "violated Plaintiff's copyright." Plaintiff argues that she states a common law copyright claim. According to plaintiff, common law copyright has been preserved to protect the rights of first publication. (P. Memo, pp. 2-4.) Plaintiff is simply incorrect. The Copyright Act "recognized for the first time a distinct statutory right of first publication, which had previously been an element of the common-law protections afforded unpublished works." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 552, 105 S.Ct. 2218, 2226, 85 L.Ed.2d 588 (1985). "Under the Copyright Act, the exclusive rights — to publish, copy, and distribute the author's work — vest in the author of an original work from the time of its creation." Id., 471 U.S. at 546-47, 105 S.Ct. at 2223. The Copyright Act "preempts State copyright law in its entirety. All published or unpublished copyrightable material is protected by statute from the moment of creation, and a suit for statutory copyright infringement is the only available remedy." Technicon Medical Information Systems Corp. v. Green Bay Packaging, Inc., 211 U.S.P.Q. 343 (E.D.Wis.1980); see also Mention v. Gessell, 714 F.2d 87, 90 (9th Cir.1983) ("Copyright Act of 1976 preempts common law copyright claims"). The Copyright Act completely preempts plaintiff's common law copyright cause of action.⁴

Defendants further claim that federal law preempts plaintiff's causes of action for unlawful conversion, unlawful competition, and unjust enrichment. The issue is whether these claims contain "an `extra element' which qualitatively distinguishes the actions and their underlying rights from those addressed by copyright law." Mayer, 601 F.Supp. at 1535.

Plaintiff's first cause of action alleges that defendants' publication of the project without plaintiff's knowledge or permission constitutes an unlawful conversion. What this cause of action actually seeks is to recover for the unauthorized copying of plaintiff's work. The Copyright Act covers such conduct, and a conversion claim contains no elements qualitatively different from plaintiff's rights under the Copyright Act. See, e.g., Kakizaki v. Riedel, 811 F.Supp. 129, 133 (S.D.N.Y.1992) (conversion claim preempted by Copyright Act); Mayer, 601 F.Supp. at 1535 (same). Plaintiff's conversion claim is preempted.

Plaintiff further alleges that the same actions of defendants constitute "unlawful competition." She offers no extra qualitative element for this claim either. The unlawful competition claim merely challenges defendants' allegedly unauthorized copying of her work. The Second Circuit has held that "unfair competition and misappropriation claims grounded solely in the copying of plaintiff's protected expression are preempted by section 301." Computer Associates, 982 F.2d at 717; see also Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 247 (2d Cir.1983) (noting preemptive effect of the Copyright Act on unfair competition claims). Since plaintiff's unfair competition claim is equivalent to copyright, federal copyright law provides the exclusive means of relief. See Kregos v. Associated...