Case 3:14-cv-01602-BTM-RBB Document 11 Filed 09/08/14 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`MICHAEL E. MOORE, JAMES
`RODENBO,
`
`v.
`VICTOR WILLIS,
`
`Plaintiffs,
`
`Defendant.
`
`Case No. 14cv1602 BTM(RBB)
`ORDER GRANTING MOTION TO
`REMAND
`
`Judgment Creditor Van Wyck, Inc., has filed a motion to remand this
`action to state court. For the reasons discussed below, Van Wyck’s motion is
`GRANTED.
`
`I. BACKGROUND
`In October, 2010, this suit was commenced by Plaintiffs Michael E. Moore
`and Jason Rodenbo in the Superior Court of California. Plaintiffs sued
`Defendant Victor Willis for breach of a legal services contract.
`On May 23, 2011, default judgment was entered against Willis and in
`favor of Plaintiffs.
`On May 22, 2014, the judgment was assigned to Van Wyck. On June 10,
`2014, Van Wyck filed a motion to appoint a receiver to aid in collection of the
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`Case 3:14-cv-01602-BTM-RBB Document 11 Filed 09/08/14 Page 2 of 5
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`judgment by taking possession of and conducting a sale of copyright interests
`claimed by Willis in certain musical compositions. Those copyrights are the
`subject of a separate action pending before this Court, Scorpio, et al. v. Willis,
`11cv1557 BTM.
`On July 3, 2014, Willis removed the action to this Court.
`On August 8, 2014, Van Wyck filed its motion to remand.
`On August 22, 2014, Willis filed a motion to consolidate this case with the
`Scorpio case.
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`II. DISCUSSION
`Van Wyck moves to remand this action on the ground that the Court has
`no subject matter jurisdiction. As discussed below, the Court agrees with Van
`Wyck.
`The removing defendant always has the burden of establishing that
`removal is proper, and the court resolves all ambiguity in favor of remand to
`state court. Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th Cir. 1992). In his
`Notice of Removal, Willis contends that the Court has original jurisdiction over
`the matter because Van Wyck’s claim “arises under copyright law.”
`Under the "well-pleaded complaint" rule, federal-question jurisdiction
`extends over "only those cases in which a well-pleaded complaint establishes
`either that federal law creates the cause of action or that the plaintiff's right to
`relief necessarily depends on resolution of a substantial question of federal
`law." Franchise Tax Bd. of California v. Construction Laborers Vacation Trust,
`463 U.S. 1, 14 (1983). This rule makes a plaintiff the "master of his complaint"
`and allows him to "avoid federal jurisdiction by relying exclusively on state law."
`Balcorta v. Twentieth Century-Fox Film Corp., 208 F.3d 1102, 1106 (9th Cir.
`2000). In determining whether a state claim depends on the resolution of a
`federal question to such an extent that subject matter jurisdiction is triggered,
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`courts ask whether the federal question is “basic” and “necessary” as opposed
`to “collateral” and “merely possible,” “pivotal” as opposed to “incidental,” or
`“direct and essential” as opposed to “attenuated.” Lippitt v. Raymond James
`Financial Serv., Inc., 340 F.3d 1033, 1045 (9th Cir. 2003).
`Here, the state claim is for breach of contract. (Amended Complaint
`attached to Notice of Removal). The complaint does not seek remedies under
`the Copyright Act or involve copyrights at all. Furthermore, the state claim
`does not necessarily depend on a resolution of copyright issues. To the extent
`copyright issues are involved in post-judgment enforcement proceedings, the
`federal issues are collateral and do not bear upon the merits of Plaintiffs’ claim.
`See, e.g., Tulsa Industr. Auth. v. Tulsa Airports Improvement Trust, 2013 WL
`5964012, at *4 (N.D. Okla. Nov. 7, 2013) (holding that state law claim did not
`necessarily raise a federal issue where the federal law issue would arise only
`in post-judgment proceedings if plaintiffs established that defendant was liable
`for breach of contract or breach of representation).
`Even if it were proper to base subject matter jurisdiction on issues raised
`in post-judgment motions, as opposed to the complaint, the Court would not
`find that federal question jurisdiction exists in this case. The Ninth Circuit
`explains that “it is well established that just because a case involves a copyright
`does not mean that federal subject matter jurisdiction exists.” Scholastic Entm’t
`Inc. v. Fox Entm’t Group, Inc., 336 F.3d 982, 985 (9th Cir. 2003). The test is
`“whether (1) the complaint asks for a remedy expressly granted by the
`Copyright Act; (2) the complaint requires an interpretation of the Copyright Act;
`or (3) federal principles should control the claims.” Id. at 986.
`Van Wyck’s motion to appoint a receiver arises from state law governing
`enforcement of judgments. State law, not federal statutory law, governs
`whether copyrights are subject to execution to satisfy a judgment. Hendricks
`& Lewis PLLC, __ F.3d __, 2014 WL 4197388, at *4 (9th Cir. 2014). For this
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`reason, federal question jurisdiction is not created when a plaintiff seeks to
`enforce a state court judgment by invoking state law procedures to gain control
`over the defendant’s copyrights and other assets. Thus, in Cardwell v. Orsa
`Institute, LLC, 2012 WL 3235758 (W.D. Tex. Aug. 6, 2012), the court held that
`the plaintiff’s petition for a turnover order and to void an alleged fraudulent
`transfer of copyrighted works was based upon Texas law and did not support
`federal question jurisdiction. See also Republic Pictures Corp v. Security-First
`Nat. Bank of Los Angeles, 197 F.2d 767 (9th Cir. 1952) (holding that federal
`jurisdiction does not exist in a case to foreclose a mortgage on a copyright).
`Willis argues that Van Wyck seeks relief that violates the involuntary
`transfer provision of the Copyright Act. That provision provides:
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`When an individual author's ownership of a copyright, or of any of
`the exclusive rights under a copyright, has not previously been
`transferred voluntarily by that individual author, no action by any
`governmental body or other official or organization purporting to
`seize, expropriate, transfer, or exercise rights of ownership with
`respect to the copyright, or any of the exclusive rights under a
`copyright, shall be given effect under this title, except as provided
`under title 11.
`17 U.S.C. § 201(e). But Willis’s reliance on this provision is a defense, and it
`is well-established that a case may not be removed on the basis of a federal
`defense. See Caterpillar Inc. v. Williams, 482 U.S. 386, 397 (1987); see also
`Segundo Suenos, LLC v. Jones, 494 Fed. Appx. 732, 735, 2012 WL 3682912
`(9th Cir. Aug. 28, 2012) (“The absence of federal question jurisdiction is not
`cured by a defense arising from copyright law.”).1
`Willis has not established that the Court has subject matter jurisdiction
`over this action. Therefore, the Court finds that removal was improper and
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` It also appears that § 201(e) does not provide any protection to Willis because it
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`only applies when an individual author’s ownership of a copyright “has not previously been
`transferred voluntarily by that individual author.” See Hendricks, 2014 WL 4197388, at *6
`(holding that § 201(e) did not protect current owner of copyright because he had previously
`transferred his copyright interest to Warner Bros. as part of a settlement before Warner
`Bros. agreed to transfer ownership back). The copyrights at issue here were previously
`transferred to Can’t Stop Productions, Inc., by way of Adaptation Agreements.
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`remands the case to state court.
`
`III. CONCLUSION
`For the reasons discussed above, the Court GRANTS Van Wyck’s motion
`to remand. The Court REMANDS this case to the Superior Court of California,
`County of San Diego.
`The Court DENIES AS MOOT Willis’s Motion to Consolidate Cases and
`ex parte motion to continue the hearing on the Motion to Remand so that it can
`be heard at the same time as the Motion to Consolidate.
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`IT IS SO ORDERED.
`DATED: September 8, 2014
`
`BARRY TED MOSKOWITZ, Chief Judge
`United States District Court
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