Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF ARIZONA
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`
`
`WO
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`Andrew Green and Staci Green, husband
`and wife,
`
`
`v.
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`Paul D. Wight, Jr., an individual aka Big
`Show; World Wrestling Entertainment
`Incorporated, a foreign corporation dba in
`Arizona; et al.,
`
`
`Defendants.
`Pending before the Court is Plaintiffs’ Motion to Remand to State Court. (Doc.
`18.) For the reasons discussed below, the Motion is granted.
`BACKGROUND
`Plaintiff Andrew Green was employed by Defendant WWE as a road producer for
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`digital production, which required him to conduct interviews with WWE wrestlers after
`matches and exhibitions. (Doc. 15 at 2.) Defendant Paul D. Wight, Jr. (a.k.a. “Big
`Show”) was an employee and/or agent of WWE who appeared as a wrestler in matches
`and exhibitions; however, WWE allegedly terminated him prior to the events underlying
`this suit. (Id. at 4–5.)
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`On January 27, 2013, WWE staged a “Royal Rumble” event at the U.S. Airways
`Arena in Phoenix, Arizona. (Id. at 6.) WWE directed Green to seek Big Show out for an
`interview after the event. (Id. at 7.) Green approached Big Show after his match and
`asked for an interview, at which time Big Show attacked him, grabbing him by the throat
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`Plaintiffs,
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`No. CV-13-00967-PHX-GMS
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`ORDER
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 2 of 7
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`and striking his face. (Id.) The attack was captured on tape. (Id. at 8.) Green alleges that
`the attack was not feigned or staged. (Id.) WWE posted the video of the attack on its
`website on January 27, 2013. (Id. at 9.) WWE took the video down two days later, but it
`had received over 100,000 page views in the meantime. (Id. at 10.)
`Green and his spouse filed suit against Big Show, WWE, and other unknown
`parties in Maricopa County on April 5, 2013; WWE was served on April 19, 2013. (Doc.
`1-1 at 8.) The Greens asserts claims of negligence, intentional infliction of emotional
`distress, negligent infliction of emotional distress, and intentional tort claims, among
`others, against WWE for posting the video of the attack on the internet. (Doc. 15 at 16–
`17.) On May 9, 2013, WWE removed the case to this Court pursuant to 28 U.S.C. § 1441.
`(Doc. 1.)
`
`DISCUSSION
`The statutes related to removal are to be strictly construed. Bertrand v. Aventis
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`Pasteur Laboratories, Inc., 226 F. Supp. 2d 1206, 1210 (D. Ariz. 2002). A defendant in a
`state court civil action may only remove the case to federal court if the plaintiff’s action
`could have been properly filed in federal court. 28 U.S.C. § 1441. The plaintiff’s right to
`choose the forum trumps the defendant’s right to remove, and uncertainties are to be
`resolved in favor of remand. Bertrand, 226 F. Supp. 2d at 1210. The burden of
`establishing federal jurisdiction falls on the party invoking the statute. Ethridge v. Harbor
`House Rest., 861 F.2d 1389, 1393 (9th Cir. 1988).
`
`WWE’s notice of removal was premised on federal jurisdiction existing under 28
`U.S.C. §§ 1331 and 1338. (Doc. 1 at 2–3.) Section 1331 provides that district courts have
`original jurisdiction over “all civil actions arising under the Constitution, laws, or treaties
`of the United States.” Section 1338 provides district courts with original jurisdiction over
`any civil action arising under any Act of Congress relating to patents, copyrights, and
`trademarks. However, 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 (1987). Thus, a plaintiff may choose to have its suit heard in
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 3 of 7
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`state court by eschewing its claims based on federal law. Id. at 399. A federal defense is
`insufficient to confer federal subject matter jurisdiction. Id. at 393. (“[A] case may not be
`removed to federal court on the basis of a federal defense, including the defense of pre-
`emption, even if the defense is anticipated in the plaintiff’s complaint, and even if both
`parties concede that the federal defense is the only question truly at issue.”) This is
`known as the well-pleaded complaint rule.
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`However, there is an “independent corollary” to the above-stated rule if the state
`law claims are completely preempted by federal law. Id. Some federal statutes have such
`“extraordinary” preemptive force that state law claims are converted into federal claims
`for the purposes of the well-pleaded complaint rule. Id. (citing Metropolitan Life Ins. Co.
`v. Taylor, 481 U.S. 58, 65 (1987)). “The question in complete preemption analysis is
`whether Congress intended the federal cause of action to be the exclusive cause of action
`for the particular claims asserted under state law.” GlobeRanger Corp. v. Software AG,
`691 F.3d 702, 705–06 (5th Cir. 2012). WWE argues that the Copyright Act is a statute
`that Congress intended to be the exclusive cause of action. It asserts that the Greens’ state
`law claims are based solely on WWE’s display of the copyrighted video on the WWE
`website, and thus that the Greens’ claims are converted into federal claims by the
`preemptive force of the Copyright Act.
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`Although not addressed by the Ninth Circuit, every circuit court that has faced the
`issue has found that Congress intended the Copyright Act to be the exclusive cause of
`action for copyright protection, completely preempting state-law claims in the field. See
`GlobeRanger Corp. v. Software AG, 691 F.3d 702, 706 (5th Cir. 2012); Ritchie v.
`Williams, 395 F.3d 283, 287 (6th Cir. 2005); Briarpatch Ltd., L.P v. Phoenix Pictures,
`Inc., 373 F.3d 296, 305 (2d Cir. 2004); Rosciszewski v. Arete Assocs., Inc., 1 F.3d 225,
`232–33 (4th Cir. 1993). Those courts noted the broad preemptive language of the statute1
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`1 “On and after January 1, 1978, all legal or equitable rights that are equivalent to
`any of the exclusive rights within the general scope of copyright . . . 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).
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 4 of 7
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`and Congress’s statement that it “intended [the statute] to be stated in the clearest and
`most unequivocal language possible, so as to foreclose any conceivable misinterpretation
`of its unqualified intention that Congress shall act preemptively.” Rosciszewski, 1 F.3d at
`232 (quoting H.R.Rep. No. 1476, 94th Cong., 2d Sess. 130 (1976)). They also noted the
`Copyright Act’s grant of exclusive jurisdiction to federal district courts “as strong
`evidence that Congress intended copyright litigation to take place in federal courts.” Id.;
`see also 28 U.S.C. § 1338 (“No State court shall have jurisdiction over any claim for
`relief arising out of . . . copyrights.”)
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`The Greens’ arguments to the contrary are not persuasive. They first argue that the
`Third Circuit expressly declined to find that the Copyright Act is completely preemptive.
`The case they cite, however, involved a plaintiff seeking a copy of a government map
`without having to pay for it. Bd. of Chosen Freeholders of Cnty. of Burlington v. Tombs,
`215 F. App’x 80 (3d Cir. 2006). The Third Circuit found that the action arose under New
`Jersey’s Open Public Records Act. Id. at 81. Though the defendant argued that federal
`copyright law completely preempted the plaintiff’s claim, the Third Circuit held that the
`public records request simply did not touch upon copyright law: “[F]ederal copyright law
`does not wholly displace state statutory or common law rights to public records.” Id. at
`82.
`The Greens also cite to a case out of the Northern District of California, and a
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`Ninth Circuit decision affirming it, claiming that the pair of rulings shows the Ninth
`Circuit “pointedly avoiding the opportunity to apply complete preemption to the
`Copyright Act.” (Doc. 18 at 10.) There, the District Court found that the plaintiff’s claims
`did not fall within the scope of the Copyright Act, and thus would not be preempted
`regardless of whether the Copyright Act had completely preemptive force. Bierman v.
`Toshiba Corp., No. C-10-4203 MMC, 2010 WL 4716879 at *1 (N.D. Cal. Nov. 12,
`2010) aff’d, 473 F. App’x 756 (9th Cir. 2012). In affirming, the Ninth Circuit did not
`“pointedly avoid” the complete preemption issue, but affirmed without discussion the
`District Court’s determination that the claims fell outside the Copyright Act’s scope. 476
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 5 of 7
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`F. App’x at 757. The decision does not, as the Greens argue, signal the Ninth Circuit’s
`reluctance to find the Copyright Act completely preemptive of state-law claims in the
`field.
`The holdings of the circuit courts that have addressed the Copyright Act’s
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`preemptive effect are well-reasoned. The statute’s plain language and legislative history
`both show that “Congress intended the federal cause of action to be the exclusive cause
`of action” for state-law claims in its field. GlobeRanger, 691 F.3d at 705–06. This is not,
`however, the end of the inquiry.
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`A two-part test governs whether the Copyright Act’s scope reaches a particular
`state-law claim: “the particular work to which the claim is being applied [must fall]
`within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103,
`and (2) the claim [must seek] to vindicate legal or equitable rights that are equivalent to
`one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C.
`§ 106.” Briarpatch Ltd., L.P v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004).
`The first prong of the test is referred to as the “subject matter requirement,” while the
`second prong is called the “general scope requirement.” Id.
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`To meet the subject matter requirement, there must be an original work of
`authorship fixed in any tangible medium of expression. 17 U.S.C. § 102. Copyright
`protection also extends to compilations and derivative works of the original work of
`authorship. Id. § 103. Categories of copyrightable work include motion pictures and other
`audiovisual works. Id. § 102(a)(5). “A work need not consist entirely of copyrightable
`material in order to meet the subject matter requirement, but instead need only fit into one
`of the copyrightable categories in a broad sense.” Briarpatch, 373 F.3d at 305. The
`Greens do not argue that the video of the attack is not an original work of authorship
`fixed in a tangible medium of expression.
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`The general scope requirement is satisfied when the right asserted under state law
`must be equivalent to the exclusive rights contained in 17 U.S.C. § 106. Downing v.
`Abercrombie & Fitch, 265 F.3d 994, 1003 (9th Cir. 2001). Section 106 grants the owner
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 6 of 7
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`of a copyright the exclusive rights to reproduce, distribute, perform, and display the
`copyrighted work. “Thus, a right is equivalent to one of the rights comprised by a
`copyright if it is infringed by the mere act of reproduction, performance, distribution or
`display.” Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663,
`676–77 (7th Cir. 1986). To avoid preemption, “the state claim must protect rights which
`are qualitatively different from the copyright rights. The state claim must have an ‘extra
`element’ which changes the nature of the action.” Del Madera Properties v. Rhodes and
`Gardner, Inc., 820 F.2d 973, 976 (9th Cir. 1987) (internal citations omitted). In other
`words, the plaintiff must “allege as a basis for the claim, an element other than the
`unauthorized use of the copyrighted work.” Nw. Home Designing Inc. v. Sound Built
`Homes Inc., 776 F. Supp. 2d 1210, 1216 (W.D. Wash. 2011).
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`WWE argues that the Greens’ state-law claims are preempted because they are
`“expressly predicated on WWE’s display of the video footage of the Interview on its
`website.” (Doc. 22 at 10.) The Greens’ First Amended Complaint, however, alleges that
`WWE’s posting of the video on its website was tortious because it caused Green mental
`harm, humiliation, and emotional injury. (Doc. 15 at 16–18.) The Greens have thus
`alleged a basis for their tort claims that is not “the unauthorized use of copyrighted
`work.” The thrust of the Greens’ tort claims is not that WWE’s posting of the video was
`unauthorized, but rather that its depiction of Green in an embarrassing light caused Green
`harm. The rights that the Greens seek to protect, i.e., freedom from ridicule and
`emotional distress, are qualitatively different from copyright rights. This additional
`element of emotional harm, due not to unauthorized use but widespread humiliation,
`changes the nature of the action from a copyright claim to a separate state-law tort claim.
`Thus, the general scope requirement has not been satisfied.
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`WWE argues that “[i]t is well-settled in both the Ninth Circuit and elsewhere that
`where a plaintiff consents to being filmed . . . state law claims based on the reproduction,
`distribution and/or public performance or display of the defendant’s lawfully-owned
`copyrighted work . . . are preempted by federal copyright law.” (Doc. 22 at 13.) WWE’s
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`Case 2:13-cv-00967-GMS Document 24 Filed 09/18/13 Page 7 of 7
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`assertion is a simplification and distortion of the law. Ninth Circuit precedent is clear that
`a state law claim based on reproduction, distribution, performance, or display of a
`copyrighted work may avoid preemption if it involves an additional element that
`“transforms the nature of the action.” Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134,
`1144 (9th Cir. 2006). That element is present in the Greens’ claims of negligence,
`intentional infliction of emotional distress, negligent infliction of emotional distress, and
`intentional tort. WWE’s subsequent citations of cases finding the above claims preempted
`by the Copyright Act are thus distinguishable; in each of those cases, the court
`determined that there was no transformative element to the state law claim that made it
`qualitatively different from a claim arising under federal copyright law.
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`Thus, because WWE has failed to satisfy the general scope requirement, the
`Greens’ claims against WWE are not preempted by federal copyright law. Though the
`Copyright Act is completely preemptive, it applies only to state-law claims that are in its
`field. It cannot convert to federal claims those state-law claims like the Greens’ that fall
`outside its scope. WWE has thus failed to meet its burden of establishing federal
`jurisdiction to justify its removal of this case to federal court.
`IT IS THEREFORE ORDERED that Andrew and Staci Green’s Motion to
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`Remand (Doc. 18) is GRANTED.
`IT IS FURTHER ORDERED directing the Clerk of Court to remand this action
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`back to the Maricopa County Superior Court.
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`Dated this 17th day of September, 2013.
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