Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 1 of 10 PageID #:199
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`06 C 6427
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`HENRY VAUGHN,
`Plaintiff,
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`v.
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`ROBERT KELLY,
`Defendant.
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`MEMORANDUM AND ORDER
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`Henry Vaughn describes himself as a musician, R. Kelly’s mentor, and the creative force
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`behind Kelly’s popular song and video “Step in the Name of Love.” Kelly sees things
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`differently, and says Vaughn is merely a member of his security team and had no input into the
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`song or video. Asserting, among other things, oral contract, unjust enrichment, and fraud
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`theories, Vaughn sued Kelly in the Circuit Court of Cook County, contending that he is entitled
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`to compensation for his contributions to the “Step in the Name of Love” song and video. Kelly
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`removed the action to federal court, contending that Vaughn’s claims regarding “Step in the
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`Name of Love” necessarily are based on federal copyright law. Vaughn seeks to remand this
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`action to state court, contending that his complaint does not assert any federal copyright claims.
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`For the following reasons, Vaughn’s motion to remand is denied.
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`Background
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`The following facts are drawn from Vaughn’s original complaint filed in state court.1
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`1 Vaughn has tendered a proposed amended complaint to the court for its consideration
`in connection with his motion to remand. The court will not consider this document when
`determining if removal was proper, as the original complaint is the pertinent filing for purposes
`of ascertaining if a federal claim justifies removal. See Gossmeyer v. McDonald, 128 F.3d 481,
`487-88 (7th Cir. 1997) (“Whether subject matter exists is a question answered by looking at the
`complaint as it existed at the time the petition for removal was filed” so once a case is removed,
`“amendment of the complaint ... does not defeat the original removal”); Prince v. Rescorp
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 2 of 10 PageID #:200
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`Vaughn is a songwriter, vocalist, and musician who has expertise in the dance style known as
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`Steppin’. In 2001, Vaughn suggested that Kelly could overcome career and reputation issues he
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`was facing if he appealed to a wider, more mature audience by releasing a song and music video
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`featuring Steppin.’ Kelly asked Vaughn to teach him how to step, help him create a song based
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`on this dance, and collaborate for the purpose of writing lyrics and creating a concept for a
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`video. In return, Kelly said that Vaughn would be entitled to one-half of the proceeds from any
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`resulting song and video.
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`Vaughn claims that he ultimately provided Kelly with lyrics for the song “Step in the
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`Name of Love” and assisted “Kelly in establishing the concept for the song and video.”
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`Complaint at ¶¶ 56-57. He also taught Kelly to “step” and the “Step in the Name of Love” video
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`featured Kelly using the moves and dance steps Vaughn taught him. Vaughn’s creative
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`contributions to the song and video were so substantial that “without [Vaughn’s] efforts, talents,
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`time and assistance,” those works “would not have been created or released.” Id. ¶ 66.
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`After Kelly failed to follow through on his alleged promise to share in the profits from
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`“Step in the Name of Love,” Vaughn sued him in the Circuit Court of Cook County, alleging that
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`Kelly breached an oral contract, was unjustly enriched by his retention of all of the proceeds
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`from the song and video, and defrauded him. Vaughn also contends that Kelly was liable for
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`battery and false imprisonment because Kelly allegedly restrained and assaulted Vaughn when
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`Vaughn was visiting Kelly’s home. Contending that the claims based on the song and video
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`Realty, 940 F.2d 1104, 1105 n.2 (7th Cir. 1991) (“federal courts base decisions about subject
`matter jurisdiction after removal on the plaintiff's complaint as it existed at the time that the
`defendant filed the removal petition”).
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 3 of 10 PageID #:201
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`arose under federal law despite their state law labels, Kelly filed a timely notice of removal
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`based on the alleged presence of a federal question.
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`Discussion
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`The propriety of removal turns on whether Vaughn’s complaint is based on state or
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`federal (specifically, copyright) law. Under the well-pleaded complaint rule, a cause of action
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`arises under federal law when the plaintiff’s complaint raises issues of federal law. Metropolitan
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`Life Ins. Co. v. Taylor, 481 U.S. 58, 63 (1987). The plaintiff is thus the master of his complaint
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`and can control the litigation through the issues he raises, as opposed to those that the defendant
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`includes in his response. Jass v. Prudential Health Care Plan, Inc., 88 F.3d 1482, 1486 (7th Cir.
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`1996). This means that a defendant cannot remove a case to federal court under the guise of
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`federal preemption simply by raising a federal question as a defense. Franchise Tax Bd. v.
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`Construction Laborers Vacation Trust, 463 U.S. 1 (1983); Speciale v. Seybold, 147 F.3d 612,
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`615 (7th Cir. 1998).
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`A plaintiff, however, may not prevent the defendant from removing his case by framing
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`his claims under state law and omitting federal questions that are essential to his recovery.
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`Franchise Tax Bd. v. Construction Laborers Vacation Trust, 463 U.S. at 22; Metropolitan Life
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`Ins. Co. v. Taylor, 481 U.S. at 64-65 (the “complete preemption” doctrine serves to
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`“recharacterize a state law claim ... as an action arising under federal law” and “converts an
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`ordinary state common law complaint into one stating a federal claim for purposes of the
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`well-pleaded complaint rule”). Therefore, the court must determine whether Vaughn couched a
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`federal cause of action in terms of state law. See Burda v. M. Ecker Co., 954 F.2d 434, 438 (7th
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`Cir. 1992). If Vaughn’s state law claims in fact raise federal questions, federal law preempts
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 4 of 10 PageID #:202
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`those state law claims, so the state law claims are really federal claims and thus are removable.
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`Id.
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`Section 301 of the Copyright Act preempts state law based causes of action that are
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`equivalent to copyright infringement claims. 17 U.S.C. § 301(a). Specifically, it provides that:
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`[A]ll legal or equitable rights that are equivalent to any of the exclusive rights
`within the general scope of copyright ... in works of authorship that are fixed in a
`tangible medium of expression and come within the subject matter of copyright ...
`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.
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`Id.
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`Vaughn first argues that discussion of the Copyright Act is beside the point, because he is
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`claiming a right to compensation under contract and fraud theories, as opposed to claiming any
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`sort of right in a copyrighted work. The court disagrees, as the issue is whether Vaughn is
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`seeking relief which ostensibly arises under state law but in fact necessarily implicates the
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`Copyright Act. See Burda v. M. Ecker Co., 954 F.2d at 438 (preemption inquiry focuses on
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`whether a plaintiff’s state law claims in fact arise under federal law).
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`The Seventh Circuit has set forth a two-part test to determine whether a state law claim is
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`equivalent to one protected by the Copyright Act: (1) the work at issue must be fixed in a
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`tangible form and come within the subject matter of copyright as specified in §§ 1022
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`2 Section 102 grants copyright protection to “original works of authorship fixed in any
`tangible medium of expression,” including sound recordings and musical, choreographic, and
`audiovisual works. 17 U.S.C. § 102(a). However, it also provides that copyright protection for
`an original work of authorship does not “extend to any idea, procedure, process, system, method
`of operation, concept, principle, or discovery, regardless of the form in which it is described,
`explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b).
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 5 of 10 PageID #:203
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`and 1033 of the Copyright Act (the subject matter prong); and (2) the right asserted must be
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`equivalent to any of the rights specified in § 1064 of the Copyright Act (the equivalence prong).
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`ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1453 (7th Cir. 1996); Baltimore Orioles, Inc. v. Major
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`League Baseball Players Ass’n, 805 F.2d 663, 674 (7th Cir. 1986). A state law claim can also be
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`equivalent to a copyright if “it requires additional elements to make out a cause of action, but the
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`additional elements do not differ in kind from those necessary for copyright infringement.”
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`Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d at 677-78 n.26. If a
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`cause of action requires “extra elements” above and beyond what is required by federal
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`copyright law, the court must consider if “the additional elements differ in kind from those
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`necessary for copyright infringement such that the nature of the action differs qualitatively from
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`a copyright infringement action.” Stephen & Hayes Const., Inc. v. Meadowbrook Homes, Inc.,
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`988 F.Supp. 1194, 1198 (N.D. Ill. 1998) (internal quotations omitted).
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`3 Section 103 specifies that compilations and derivative works are entitled to copyright
`protection, but works using copyrighted materials unlawfully are not entitled to protection. 17
`U.S.C. § 103(a). It further states that “the copyright in a compilation or derivative work extends
`only to the material contributed by the author of such work, as distinguished from the preexisting
`material employed in the work, and does not imply any exclusive right in the preexisting
`material. The copyright in such work is independent of, and does not affect or enlarge the scope,
`duration, ownership, or subsistence of, any copyright protection in the preexisting material.” 17
`U.S.C. § 103(b).
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`4 Section 106 states that a copyright owner has the exclusive right to reproduce the
`copyrighted work, prepare derivative works based upon the copyrighted work, distribute copies
`of the copyrighted work to the public by sale or other transfer of ownership, and perform or
`display the copyrighted work publicly. 17 U.S.C. § 106.
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 6 of 10 PageID #:204
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`The Subject Matter Prong
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`Here, the song “Step in the Name of Love” is a sound recording and the accompanying
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`video is a musical, choreographic, and audiovisual work. Sound recordings and musical,
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`choreographic, and audiovisual works are all expressly within the ambit of the Copyright Act.
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`17 U.S.C. § 102(a). Moreover, both the song and the video are “original works of authorship
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`fixed in [a] tangible medium of expression.” Id. Thus, the song and video satisfy the subject
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`matter prong.
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`Vaughn nevertheless contends that his claims are outside the ambit of the Copyright
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`Act’s subject matter prong because he contributed the idea for the song and video and cannot
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`himself claim an interest in Kelly’s copyright. This argument is inconsistent with the factual
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`allegations in the original complaint. In any event, the argument is unpersuasive. Specifically, it
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`is true that “ideas – as opposed to their expression – are not eligible for copyright protection.”
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`Incredible Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d 1007, 1011 (7th Cir. 2005).
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`Nevertheless, the Copyright Act’s “preemptive reach ... encompasses state law claims
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`concerning uncopyrightable material.” Baer v. Chase, 392 F.3d 609 (3d Cir. 2004); see also
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`National Basketball Assoc. v. Motorola, Inc., 105 F.3d 841, 849 (2d Cir. 1997) (“Copyrightable
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`material often contains uncopyrightable elements within it, but Section 301 preemption bars state
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`law misappropriation claims with respect to uncopyrightable as well as copyrightable
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`elements”); United States v. Board of Trustees of the University of Alabama, 104 F.3d 1453,
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`1463 (4th Cir. 1997) (“the shadow actually cast by the Act’s preemption is notably broader than
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`the wing of its protection”); Panizza v. Mattel, Inc., No. 02 CV 7722(GBD), 2003 WL
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`22251317, at *3 (S.D.N.Y. Sept. 30, 2003) (collecting cases holding that for preemption
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 7 of 10 PageID #:205
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`purposes, “the Copyright Act applies with equal force to ideas”). Thus, even if the court focuses
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`on Vaughn’s alleged idea, his claims based on Kelly’s alleged misappropriation of that idea still
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`satisfy the subject matter prong.
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`The Equivalence Prong
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`The equivalence prong, which asks if the right asserted is equivalent to any of the rights
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`specified in § 106 of the Copyright Act, is a closer question. As noted above, § 106 states that a
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`copyright owner has the exclusive right to reproduce the copyrighted work, prepare derivative
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`works based upon the copyrighted work, distribute copies of the copyrighted work to the public
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`by sale or other transfer of ownership, perform or display the copyrighted work publicly. 17
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`U.S.C. § 106. Vaughn is not trying to do any of these things. Instead, he asserts three state law
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`claims (breach of an oral contract, unjust enrichment, and fraud) which are potentially
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`intertwined with the Copyright Act.
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`If any of these claims are preempted by federal law, removal is proper. The court’s
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`consideration of the preemption issue thus begins and ends with Vaughn’s unjust enrichment
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`claim. In Illinois, to receive equitable relief based on an unjust enrichment theory, Vaughn must
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`demonstrate that Kelly unjustly retained a benefit to Vaughn’s detriment and that Kelly’s
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`retention of the benefit violates fundamental principles of justice, equity, and good conscience.
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`HPI Health Care Services, Inc. v. Mt. Vernon Hosp., Inc., 131 Ill.2d 145, 160 (Ill. 1989); TRW
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`Title Insurance Co. v. Security Union Title Insurance Co., 153 F.3d 822, 828 (7th Cir. 1998).
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`The preemption issue before the court turns on whether Vaughn’s state law claim of unjust
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`enrichment protects rights which are qualitatively different from the federally created rights of
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`reproduction, performance, distribution, or display.
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 8 of 10 PageID #:206
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`In Vaughn’s motion to remand, he contends that Kelly misappropriated his idea for a
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`song and video based on the Steppin’ dance style and that claim for unjust enrichment is wholly
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`unconnected to any claim arising under the Copyright Act. Vaughn’s complaint, however, goes
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`far past the concept of “idea theft” and contains allegations that Vaughn helped Kelly come up
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`with the concept for the song and video, wrote the lyrics for “Step in the Name of Love,” taught
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`Kelly to “step,” and was the creative force behind the moves and dance steps Kelly used in the
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`video. Indeed, according to Vaughn, his creative contributions to the song and video were so
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`substantial that without his “efforts, talents, time and assistance,” those works “would not have
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`been created or released.”
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`The Copyright Act defines a “joint work” as “a work prepared by two or more authors
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`with the intention that their contributions be merged into inseparable or interdependent parts of a
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`unitary whole.” 17 U.S.C. § 101. Vaughn’s complaint, at heart, alleges that he is entitled to half
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`of the money that Kelly made by reproduction, distribution, performance, and display of the song
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`and video. See 17 U.S.C. § 106. Thus, Vaughn’s unjust enrichment claim is preempted by the
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`Copyright Act unless it requires him to establish an extra element which differs in kind from
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`those necessary to state a claim for copyright infringement. See Baltimore Orioles, Inc. v. Major
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`League Baseball Players Ass’n, 805 F.2d at 674.
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`Vaughn cannot meet this standard, as an unjust enrichment claim based on the alleged
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`misappropriation of material within the scope of the Copyright Act is preempted. See Panizza v.
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`Mattel, Inc., No. 02 CV 7722(GBD), 2003 WL 22251317, at *4. The allegations in Vaughn’s
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`complaint go far beyond the mere misappropriation of an uncopyrightable idea, and are
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`qualitatively similar to a copyright infringement action, because Vaughn’s original complaint, in
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 9 of 10 PageID #:207
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`essence, alleges that Kelly derived an unfair benefit based on Vaughn’s contributions to the song
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`and video. See id.; see also Stephen & Hayes Const., Inc. v. Meadowbrook Homes, Inc., 988
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`F.Supp. at 1200-01 (where the plaintiff claimed that the defendant profited by reproducing and
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`copying work subject to copyright protection, its unjust enrichment claim was qualitatively the
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`same as a copyright infringement claim).
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`Accordingly, Vaughn’s unjust enrichment claim is preempted by the Copyright Act. This
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`means that Vaughn’s complaint contains at least one count which arises under federal law, so
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`removal based on the presence of a federal question was proper. Vaughn’s motion to remand,
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`therefore, is denied.
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`The court does not need a crystal ball to know that Vaughn will wish to amend his
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`complaint in light of this order. Accordingly, the court will not reach the merits of his breach of
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`contract and fraud claims as they currently stand. It does, however, wish to comment briefly on
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`Vaughn’s assault and false imprisonment claims. These are purely state law claims, so the court
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`can exercise jurisdiction over them only if they are “so related to claims in the action within
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`original jurisdiction that they form part of the same case or controversy.” 28 U.S.C. § 1367. The
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`allegations supporting Vaughn’s assault and false imprisonment claims do not have any apparent
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`connection to Vaughn’s claims relating to the “Step in the Name of Love” song or video. Any
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`amended complaint should address this concern.
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`Conclusion
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`For the reasons discussed above, Vaughn’s motion to remand [33] is denied. In the
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`interests of avoiding piecemeal motions, Kelly’s motion to dismiss the amended complaint [24]
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`Case: 1:06-cv-06427 Document #: 41 Filed: 03/13/07 Page 10 of 10 PageID #:208
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`is stricken without prejudice. Vaughn may file a second amended complaint by April 6, 2007,
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`consistent with this order and counsels’ Rule 11 obligations.
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`DATE: March 13, 2007
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`__________________________________
`Blanche M. Manning
`United States District Judge
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