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`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 1 of 3
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`UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF CALIFORNIA
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`YELLOWCAKE, INC.,
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`No. 1:20-cv-00067-DAD-JDP
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`Plaintiff,
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`v.
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`ALBERTO MITCHELL, et al.,
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`Defendants.
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`ORDER DISCHARGING THE ORDER TO
`SHOW CAUSE
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`(Doc. No. 5)
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`On January 16, 2020, this court issued an order to show cause as to why removal of this
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`action is appropriate. (Doc. No. 5.) In particular, the court noted that defendants Alberto
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`Mitchell, Maria Mitchell, and Platino Records (collectively, “defendants”) had removed this
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`action to this federal court on the basis of federal question jurisdiction grounded on plaintiff
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`Yellowcake, Inc.’s references to copyrighted work in its complaint, even though it was not
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`entirely clear to the court that plaintiff was asserting claims for relief arising under an act of
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`Congress relating to copyrights. (Id. at 1.) Defendants timely filed a response to the order to
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`show cause on January 30, 2020. (Doc. No. 7.) Plaintiff did not reply to defendants’ response.
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`“Federal courts are courts of limited jurisdiction.” Kokkonen v. Guardian Life Ins. Co. of
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`Am., 511 U.S. 375, 377 (1994). “A suit may be removed to federal court under 28 U.S.C.
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`§ 1441(a) only if it could have been brought there originally.” Sullivan v. First Affiliated Sec.,
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`Inc., 813 F.2d 1368 (9th Cir. 1987). A district court has “a duty to establish subject matter
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`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 2 of 3
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`jurisdiction over the removed action sua sponte, whether the parties raised the issue or not.”
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`United Invs. Life Ins. Co. v. Waddell & Reed, Inc., 360 F.3d 960, 967 (9th Cir. 2004).
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`“The Federal courts have exclusive jurisdiction of all cases arising under the [copyright]
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`laws, but not of all questions in which a [copyright] may be the subject-matter of the controversy.
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`For courts of a state may try questions of title, and may construe and enforce contracts relating to
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`[copyrights].” T. B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir. 1964); see also JustMed,
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`Inc. v. Byce, 600 F.3d 1118, 1123 (9th Cir. 2010) (“This court has adopted the Second Circuit’s
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`test in T.B. Harms.”).
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`[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.
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`T. B. Harms, 339 F.2d at 828 (internal citations omitted). “In summary, the T.B. Harms test
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`requires the district court to exercise jurisdiction if: (1) the complaint asks for a remedy expressly
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`granted by the Copyright Act; (2) the complaint requires an interpretation of the Copyright Act;
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`or (3) federal principles should control the claims.” JustMed, 600 F.3d at 1124 (internal citations
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`omitted).
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`Here, defendants argue that they have removed this matter to federal court because the
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`allegations of the complaint sound in copyright. (Doc. No. 7 at 2–5.) “The owner of a copyright
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`has several exclusive rights under the Copyright Act, the most relevant being the rights to
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`reproduce the work, create derivative works, and distribute the work. 17 U.S.C. § 106(1)-(3).”
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`JustMed, 600 F.3d at 1124 (emphasis added). Here, plaintiff’s complaint alleges that
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`[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”).
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`(Doc. No. 1-1 (“Compl”) at ¶ 8) (emphasis added). Plaintiff asserts that it is the sole owner of the
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`MAR Catalog and no other party has any rights to it. (Id. at ¶ 9.) Thus, it appears that plaintiff’s
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`Case 1:20-cv-00067-DAD-JDP Document 10 Filed 06/18/20 Page 3 of 3
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`allegation that defendants “have distributed, and continue to distribute, certain items of the MAR
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`Catalog digitally to various third parties without the authority of Plaintiff” (Compl. at ¶ 10), is an
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`allegation that defendants have infringed upon plaintiff’s exclusive rights under the Copyright
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`Act.
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`Defendants persuasively argue that the remedies plaintiff seeks through this action are
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`expressly granted by the Copyright Act. (Doc. No. 7 at 5.) Defendant notes that plaintiff asserts
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`that it is “entitled to all the revenue, income, royalties and other compensation generated, directly
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`or indirectly, from the distribution of the MAR Catalog (‘MAR Revenue’).” (Id. at ¶ 11.) The
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`complaint then lists the following causes of action: accounting, declaratory relief, conversion,
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`claim and delivery, injunctive relief, general and special damages, exemplary and punitive
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`damages, and attorneys’ fees and costs. (Compl. at 16–17.) These are some of the same remedies
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`expressly provided under the Copyright Act for copyright infringement. See 17 U.S.C. §§ 502–
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`05 (listing injunctions, impounding and disposition of infringing articles, damages and profits,
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`and costs and attorneys’ fees as the remedies for copyright infringement). Because “the
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`complaint asks for a remedy expressly granted by the Copyright Act,” JustMed, 600 F.3d at 1124,
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`this court must exercise jurisdiction.
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`Accordingly, the court’s order to show cause (Doc. No. 5) is hereby discharged.
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`IT IS SO ORDERED.
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` Dated: June 17, 2020
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`UNITED STATES DISTRICT JUDGE
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