1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 1 of 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF CALIFORNIA
`
`YELLOWCAKE, INC.,
`
`No. 1:20-cv-00067-DAD-JDP
`
`Plaintiff,
`
`
`
`v.
`
`ALBERTO MITCHELL, et al.,
`
`Defendants.
`
`
`
`ORDER DISCHARGING THE ORDER TO
`SHOW CAUSE
`
`(Doc. No. 5)
`
`
`
`On January 16, 2020, this court issued an order to show cause as to why removal of this
`
`action is appropriate. (Doc. No. 5.) In particular, the court noted that defendants Alberto
`
`Mitchell, Maria Mitchell, and Platino Records (collectively, “defendants”) had removed this
`
`action to this federal court on the basis of federal question jurisdiction grounded on plaintiff
`
`Yellowcake, Inc.’s references to copyrighted work in its complaint, even though it was not
`
`entirely clear to the court that plaintiff was asserting claims for relief arising under an act of
`
`Congress relating to copyrights. (Id. at 1.) Defendants timely filed a response to the order to
`
`show cause on January 30, 2020. (Doc. No. 7.) Plaintiff did not reply to defendants’ response.
`
`“Federal courts are courts of limited jurisdiction.” Kokkonen v. Guardian Life Ins. Co. of
`
`Am., 511 U.S. 375, 377 (1994). “A suit may be removed to federal court under 28 U.S.C.
`
`§ 1441(a) only if it could have been brought there originally.” Sullivan v. First Affiliated Sec.,
`
`Inc., 813 F.2d 1368 (9th Cir. 1987). A district court has “a duty to establish subject matter
`
`
`
`
`
`
`1
`
`
`
`
`
`

`

`
`
`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 2 of 3
`
`jurisdiction over the removed action sua sponte, whether the parties raised the issue or not.”
`
`United Invs. Life Ins. Co. v. Waddell & Reed, Inc., 360 F.3d 960, 967 (9th Cir. 2004).
`
`“The Federal courts have exclusive jurisdiction of all cases arising under the [copyright]
`
`laws, but not of all questions in which a [copyright] may be the subject-matter of the controversy.
`
`For courts of a state may try questions of title, and may construe and enforce contracts relating to
`
`[copyrights].” T. B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir. 1964); see also JustMed,
`
`Inc. v. Byce, 600 F.3d 1118, 1123 (9th Cir. 2010) (“This court has adopted the Second Circuit’s
`
`test in T.B. Harms.”).
`
`[A]n action “arises under” the Copyright Act if and only if the
`complaint is for a remedy expressly granted by the Act, e.g., a suit
`for infringement or for the statutory royalties for record reproduction,
`or asserts a claim requiring construction of the Act, . . . or, at the very
`least and perhaps more doubtfully, presents a case where a distinctive
`policy of the Act requires that federal principles control the
`disposition of the claim.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`T. B. Harms, 339 F.2d at 828 (internal citations omitted). “In summary, the T.B. Harms test
`
`14
`
`requires the district court to exercise jurisdiction if: (1) the complaint asks for a remedy expressly
`
`15
`
`granted by the Copyright Act; (2) the complaint requires an interpretation of the Copyright Act;
`
`16
`
`or (3) federal principles should control the claims.” JustMed, 600 F.3d at 1124 (internal citations
`
`17
`
`omitted).
`
`18
`
`Here, defendants argue that they have removed this matter to federal court because the
`
`19
`
`allegations of the complaint sound in copyright. (Doc. No. 7 at 2–5.) “The owner of a copyright
`
`20
`
`has several exclusive rights under the Copyright Act, the most relevant being the rights to
`
`21
`
`reproduce the work, create derivative works, and distribute the work. 17 U.S.C. § 106(1)-(3).”
`
`22
`
`JustMed, 600 F.3d at 1124 (emphasis added). Here, plaintiff’s complaint alleges that
`
`23
`
`24
`
`25
`
`26
`
`[p]ursuant to an Asset Purchase and Assignment Agreement, dated
`May 1, 2017, Plaintiff purchased the entirety of the musical
`compositions, recordings, masters content, audio files, artwork,
`copyrights, trademarks and other rights (collectively, “MAR
`Catalog”) created or owned by MAR International Records, Inc., a
`California corporation (“MAR”).
`
`27
`
`(Doc. No. 1-1 (“Compl”) at ¶ 8) (emphasis added). Plaintiff asserts that it is the sole owner of the
`
`28
`
`MAR Catalog and no other party has any rights to it. (Id. at ¶ 9.) Thus, it appears that plaintiff’s
`
`
`
`
`
`
`2
`
`
`
`
`
`

`

`
`
`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 3 of 3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`allegation that defendants “have distributed, and continue to distribute, certain items of the MAR
`
`Catalog digitally to various third parties without the authority of Plaintiff” (Compl. at ¶ 10), is an
`
`allegation that defendants have infringed upon plaintiff’s exclusive rights under the Copyright
`
`Act.
`
`Defendants persuasively argue that the remedies plaintiff seeks through this action are
`
`expressly granted by the Copyright Act. (Doc. No. 7 at 5.) Defendant notes that plaintiff asserts
`
`that it is “entitled to all the revenue, income, royalties and other compensation generated, directly
`
`or indirectly, from the distribution of the MAR Catalog (‘MAR Revenue’).” (Id. at ¶ 11.) The
`
`complaint then lists the following causes of action: accounting, declaratory relief, conversion,
`
`10
`
`claim and delivery, injunctive relief, general and special damages, exemplary and punitive
`
`11
`
`damages, and attorneys’ fees and costs. (Compl. at 16–17.) These are some of the same remedies
`
`12
`
`expressly provided under the Copyright Act for copyright infringement. See 17 U.S.C. §§ 502–
`
`13
`
`05 (listing injunctions, impounding and disposition of infringing articles, damages and profits,
`
`14
`
`and costs and attorneys’ fees as the remedies for copyright infringement). Because “the
`
`15
`
`complaint asks for a remedy expressly granted by the Copyright Act,” JustMed, 600 F.3d at 1124,
`
`16
`
`this court must exercise jurisdiction.
`
`Accordingly, the court’s order to show cause (Doc. No. 5) is hereby discharged.
`
`
`IT IS SO ORDERED.
`
` Dated: June 17, 2020
`
`
`
`
`
`UNITED STATES DISTRICT JUDGE
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`3
`
`
`
`
`
`