Ritchie v. Williams

• Decision Date: 11 January 2005
• Docket Number: No. 03-1279.,03-1279.
• Citation: 395 F.3d 283
• Parties: Robert RITCHIE, presently known as Kid Rock; Top Dog Records, Inc., and Kid Rock Superstores, Inc., Plaintiffs/Cross-Defendants-Appellees, v. Alvin B. WILLIAMS; EB-Bran Productions, Inc.; Bow-Wow Publishing, Inc., and Top Dog Publishing, Defendants/Cross-Plaintiffs-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

395 F.3d 283

Robert RITCHIE, presently known as Kid Rock; Top Dog Records, Inc., and Kid Rock Superstores, Inc., Plaintiffs/Cross-Defendants-Appellees, v. Alvin B. WILLIAMS; EB-Bran Productions, Inc.; Bow-Wow Publishing, Inc., and Top Dog Publishing, Defendants/Cross-Plaintiffs-Appellants.

No. 03-1279.

United States Court of Appeals, Sixth Circuit.

Argued: October 29, 2004.

Decided and Filed: January 11, 2005.

COPYRIGHT MATERIAL OMITTED

ARGUED: Stephanie L. Hammonds, Law Office of Stephanie L. Hammonds, Detroit, Michigan, for Appellants. William H. Horton, Cox, Hodgman & Giarmarco, Troy, Michigan, for Appellees. ON BRIEF: Stephanie L. Hammonds, Law Office of Stephanie L. Hammonds, Detroit, Michigan, Gregory J. Reed, Gregory J. Reed & Associates, Detroit, Michigan, Robert S. Nolan, Cantor Colburn, Troy, Michigan, for Appellants. William H. Horton, Christopher J. Nelson, Cox, Hodgman & Giarmarco, Troy, Michigan, for Appellees.

Before: MERRITT and GILMAN, Circuit Judges; HOOD, District Judge.^*

OPINION

MERRITT, Circuit Judge.

This case arises from a dispute between a singer-songwriter known as "Kid Rock" (Robert Ritchie) and a promoter, Alvin Williams, and his group of associates, who entered into a series of music contracts in 1989 before Kid Rock became successful. The primary questions before us are (1) whether the District Court erred in holding that a Michigan state court action, arising from the contracts, by the Williams group against Kid Rock is preempted by the Copyright Act under the developing doctrine of "complete preemption" and hence removable to the federal court as presenting federal copyright issues rather than state claims, and (2) whether the District Court erred in foreclosing the state claims under the three-year statute of limitations found in the Copyright Act. In Section II below, we will incorporate the facts in more detail in our review of the state law claims brought in state court by the Williams group. In the first section, we will discuss the doctrine of federal jurisdiction that allows the recharacterization and removal of such claims.

I. The District Court Correctly Applied the Doctrine of Complete Preemption to Allow Removal

Section 301 of the Copyright Act broadly preempts state law claims, and federal law vests exclusive jurisdiction over such preempted copyright claims in the federal courts. Section 301 of the Copyright Act states that "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106 in works of authorship that ... come within the subject matter of copyright ... are governed exclusively by this title.... [N]o 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) (emphasis added).¹ Section 1388(a), Title 28, further provides that "[t]he district courts shall have exclusive jurisdiction of any civil action arising under any act of Congress relating to ... copyrights.... Such jurisdiction shall be exclusive of the courts of the states in ... copyright cases." The Copyright Act is unusually broad in its assertion of federal authority. Rather than sharing jurisdiction with the state courts as is normally the case, the statute expressly withdraws from the state courts any jurisdiction to enforce the provisions of the Act and converts all state common or statutory law "within the general scope of copyright" into federal law to be uniformly applied throughout the nation.

Under Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 64-65, 107 S.Ct. 1542, 95 L.Ed.2d 55 (1987), the "complete preemption" doctrine serves to "recharacterize a state law claim ... as an action arising under federal law" and "converts an ordinary state common law complaint into one stating a federal claim for purposes of the well-pleaded complaint rule." Or as is stated in Moran v. Rush Prudential HMO, Inc., 230 F.3d 959, 967 (7th Cir.2000), the complete preemption doctrine "permits recharacterization of a plaintiff's claim as a federal claim so that removal is proper" even though the complaint may not mention a federal basis of jurisdiction. The doctrine of complete preemption applies, for example, in the labor management collective bargaining field and to ERISA plans. In dissent, Justice Scalia criticizes the doctrine as the "federalize-and-remove dance" in Beneficial National Bank v. Anderson, 539 U.S. 1, 8, 123 S.Ct. 2058, 156 L.Ed.2d 1 (2003); but, for a 7-2 majority, Justice Stevens follows the doctrine as enunciated in earlier cases. He holds that a state law usury claim against a national bank is "completely preempted" and removable when Congress vests exclusive jurisdiction in the federal courts after broadly preempting usury claims under the National Bank Act. The rationale is that in such situations the federal statutory laws "supersede both the substantive and remedial provision of state" law creating a strong form of federal preemption — presumably because of the additional need for a strong form of national uniformity implied by Congress when it made federal court jurisdiction exclusive after broadly preempting state law.

Since this case involves removal of claims stated only in state law terms, we must determine whether or not the doctrine of complete preemption applies to the Copyright Act. Although this Circuit and most other Circuits have not addressed the question directly, the Second and the Fourth Circuits have held that the doctrine of complete preemption applies in copyright cases. Most recently, the Second Circuit analyzed the Act in light of the Anderson case above and found that the doctrine of complete preemption clearly applies. Briarpatch, Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir.2004). In Rosciszewski v. Arete Assoc., Inc., 1 F.3d 225 (4th Cir.1993), the Fourth Circuit explained:

The grant of exclusive jurisdiction to the federal courts over civil actions arising under the Copyright Act, combined with the preemptive force of § 301(a), compels the conclusion that Congress intended that state law actions preempted by § 301(a) of the Copyright Act arise under federal law. Accordingly, we hold that the preemptive force of § 301(a) of the Copyright Act transforms a state-law complaint asserting claims that are preempted by § 301(a) into a complaint stating a federal claim for purposes of the well-pleaded complaint rule. Since claims preempted by § 301(a) arise under federal law, removal of actions raising these claims to federal district court is proper.

We agree with the Second and Fourth Circuits. Congress has indicated that "national uniformity" in the strong sense of "complete preemption" is necessary in this field. The bulk of the Williams group's state law claims must be recharacterized as copyright infringement and copyright ownership claims.²

II. The District Court Correctly Concluded that All of the Williams Group's State Law Claims Are Time Barred

A. The Preempted Claims

Williams claims that he entered into a partnership agreement with Kid Rock in February 1989 to form "Top Dog" Records to promote Kid Rock's career and for the two to share equally in the ownership of partnership property, income and expense. A few days later, Williams claims that Kid Rock transferred his interest in the partnership to a Michigan "production" company which then entered into an exclusive agreement with Kid Rock that precluded him from writing or performing songs for anyone else for one year (with two one-year options). Williams also alleges that three months later the Michigan production company and Kid Rock entered into contracts concerning Kid Rock's songs with a record company ("Zomba") and a music publisher ("Bow-Wow").

The parties agree, as Judge Edmunds found below, that these various 1989 alleged agreements were designed to control the ownership, performance rights and exploitation of copyrights on songs written by Kid Rock, including the performance, recording and distribution of those songs. The Williams group alleges that Kid Rock performed these songs and transferred to other parties the right to publish, record and distribute them, thereby breaching his contracts with Williams, the Michigan production company, the recording company and the publishing company.

Judge Edmunds held that these contract and tort claims basically assert that Kid Rock infringed the publication, performance and distribution rights of those claiming under the 1989 contracts and that the claims must, therefore, be recharacterized as copyright claims and governed by federal copyright law. The claims are that Kid Rock licensed the songs he had written to others in violation of the copyrights and the performance and distribution rights of the Williams group. All of these claims are "equivalent" to infringement claims. There is no meaningful "extra element," as some of the cases have put it,³ that removes the reformulated claims from the policy of national uniformity established by the preemption provisions of § 301(a). To use Judge Friendly's phrase, they are "infused with ... national interests," T.B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir.1964), because the various publishing and performance rights of Kid Rock's songs should be the same in Michigan as they are in New York and other states.

The problem with the Williams group's claims under federal law is that on December 17, 1990, Kid Rock wrote a letter, forwarded to the defendants, flatly stating that he did not intend to work with the parties to the 1989 contracts with respect to the publishing, production or performance of his songs, "or any other area of [his] entertainment career." He made it clear that he regarded the songs he had written as his songs. Thereafter, he openly claimed exclusive ownership of the "Top Dog" label and the rights to his songs.⁴ The December 1990 letter triggered the running of the federal copyright three-year statut...