Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`
`
`CIVIL ACTION
`
`
`NO. 18-11277
`
`
`SECTION: “G”(4)
`
`FREDDIE ROSS, JR.
`
`
`VERSUS
`
`
`WILBERTO DEJARNETTI
`
`
`
`
`
`
`
`
`
`ORDER AND REASONS
`
`Plaintiff Freddie Ross, Jr. (“Plaintiff”) brings this action against Defendant Wilberto
`
`Dejarnetti (“Defendant”) pursuant to the United States Copyright Act, 17 U.S.C. § 101, to declare
`
`Plaintiff’s rights in connection with specific sound recordings, musical compositions, and
`
`choreographic works.1 Before the Court is Defendant’s “Motion to Dismiss under Rule 12.”2
`
`Considering the motion, the memorandum in support and in opposition, the record, and the
`
`applicable law, the Court denies the motion.
`
`I. Background
`
`A. Factual Background
`
`
`
`According to the Complaint, Plaintiff is a recording actor, author, and performer known as
`
`“Big Freedia.”3 Plaintiff and Defendant allegedly worked together on various aspects of
`
`Plaintiff’s entertainment career.4 Specifically, the parties allegedly collaborated to create stage
`
`
`
`1 Rec. Doc 1 at 1.
`
`2 Rec. Doc. 16.
`
`3 Rec. Doc. 1 at 1.
`
`4 Id. at 2.
`
`
`
`1
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 2 of 21
`
`choreography for Plaintiff’s songs, including “Just Be Free Intro,” “NO Bounce,” “Explode,”
`
`“Shake Session Medley,” “Dangerous,” “Best Beeleevah,” and “Drop” (collectively, the
`
`“Choreographic Works”).5 Plaintiff also allegedly allowed Defendant to direct and film a number
`
`of music videos (collectively, the “Music Videos”).6 Plaintiff asserts that he paid thousands of
`
`dollars for Defendant’s services in connection with the Choreographic Works and the Music
`
`Videos.7
`
`Furthermore, Plaintiff asserts
`
`that Defendant sought
`
`to
`
`involve himself
`
`in
`
`Plaintiff’s songwriting sessions.8 According to Plaintiff, Defendant would typically arrive
`
`at the recording studio uninvited and offer unsolicited opinions concerning Plaintiff’s
`
`music.9 Defendant’s behavior allegedly resulted
`
`in Plaintiff
`
`terminating
`
`the parties’
`
`working relationship.10 When Defendant learned that Plaintiff intended to terminate the
`
`parties’
`
`relationship, Defendant supposedly started making “outlandish claims and
`
`demands” to Plaintiff—including receiving credit as a co-author and producer of certain
`
`songs, namely “Training Day,” “Best Beeleevah,” “You Already Know,” and “$100
`
`Bills” (collectively, the “Musical Works).11
`
`Yet, according to Plaintiff, Defendant “contributed nothing to the Musical Works that
`
`5 Id.
`
`6 Id. at 3, 6.
`
`7 Id. at 3.
`
`8 Id.
`
`9 Id.
`
`10 Id.
`
`11 Id. at 3–4.
`
`2
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 3 of 21
`
`would come close to copyrightable subject matter.”12 Plaintiff seeks a declaratory judgment
`
`concerning his ownership rights in the Choreographic Works and Musical Works.13 Plaintiff also
`
`seeks to recover damages resulting from Defendant’s alleged breach of contract in connection
`
`with the Music Videos.14
`
`B.
`
`Procedural Background
`
`
`
`On November 20, 2018, Plaintiff filed a complaint against Defendant in this Court.15 Yet
`
`Plaintiff encountered difficulty serving the Complaint upon Defendant. On December 10, 2018,
`
`a summons was issued as to Defendant.16 On February 19, 2019, Plaintiff filed an ex parte motion
`
`for an additional sixty days to effect service on Defendant.17 In that motion, Plaintiff stated that
`
`a copy of the summons and complaint were mailed via certified mail to Defendant’s address in
`
`Studio City, California, but the United States Post Office’s tracking information did not indicate
`
`the mailing was delivered.18 On February 20, 2019, this Court held that Plaintiff had demonstrated
`
`good cause for failure to timely serve Defendant and granted Plaintiff an additional sixty days to
`
`serve Defendant.19
`
`
`
`On April 19, 2019, Plaintiff filed a second ex parte motion for an additional sixty days to
`
`
`12 Id.
`
`13 Id. at 4–5.
`
`14 Id. at 6.
`
`15 Id. at 1.
`
`16 Rec. Doc. 4.
`
`17 Rec. Doc. 6.
`
`18 Rec. Doc. 6-1 at 1–2.
`
`19 Rec. Doc. 7.
`
`
`
`3
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 4 of 21
`
`effect service on Defendant.20 In that motion, Plaintiff stated he diligently pursued serving
`
`Defendant by hiring a licensed private investigator.21 Plaintiff further stated that Defendant’s
`
`address in Studio City, California, was not a studio apartment.22 Instead, that address was for a
`
`private postal box that had been closed in 2018.23 Plaintiff represented that the private investigator
`
`sent requests to the Office of Motor Vehicles in California and Louisiana seeking Defendant’s
`
`address.24 On April 22, 2019, this Court again found that Plaintiff had demonstrated good cause
`
`for failure to timely serve Defendant and granted Plaintiff an additional sixty days to serve
`
`Defendant.25
`
`
`
`On June 7, 2019, Plaintiff filed an ex parte “Motion to Effect Service Through Alternative
`
`Means” seeking an order permitting service of process on Defendant through digital means in
`
`accordance with Federal Rule of Civil Procedure Rule 4(e)(1) and Section 413.30 of the
`
`California Code of Civil Procedure.26 On August 23, 2019, the Court granted Plaintiff’s “Motion
`
`to Effect Service Through Alternative Means.”27 On September 5, 2019, a summons issued to
`
`Defendant was returned as executed.28
`
`
`20 Rec. Doc. 8.
`
`21 Rec. Doc. 8-1 at 2.
`
`22 Id.
`
`23 Id.
`
`24 Id.
`
`25 Rec. Doc. 9.
`
`26 Rec. Doc. 10.
`
`27 Rec. Doc. 11.
`
`28 Rec. Doc. 12.
`
`
`
`4
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 5 of 21
`
`
`
`On October 16, 2019, Defendant filed the instant motion to dismiss.29 On October 29, 2019,
`
`Plaintiff filed an opposition to the instant motion.30
`
`II. Parties’ Arguments
`
`A. Defendant’s Arguments in Support of the Motion to Dismiss
`
`
`
`Defendant makes three principal arguments in support of the instant motion.31 First,
`
`Defendant argues that this Court lacks subject matter jurisdiction over this case because no claim
`
`raised in the Complaint arises under federal copyright law.32 Specifically, Defendant argues that
`
`the Complaint neither mentions copyright infringement nor alleges that Defendant threatened any
`
`action under copyright law.33 Further, Defendant contends that the Complaint does not allege that
`
`either party has applied for or obtained any copyright registration for the Musical Works and
`
`Choreographic Works.34 Instead, according to Defendant, the dispute between the parties
`
`concerns merely a breach of contract claim under state law, which is insufficient to establish
`
`federal question jurisdiction.35
`
`
`
`Second, Defendant argues that Plaintiff’s declaratory judgment claims are not justiciable
`
`because no “actual controversy” exists between the parties.36 Defendant states that the “works”
`
`
`29 Rec. Doc. 16.
`
`30 Rec. Doc. 20.
`
`31 Rec. Doc. 16-1.
`
`32 Id. at 2.
`
`33 Id.
`
`34 Id.
`
`35 Id.
`
`36 Id. at 3.
`
`
`
`5
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 6 of 21
`
`at issue here are unpublished with no accompanying application for copyright registration.37
`
`Defendant argues that “[a]nything might happen”: Plaintiff may re-choreograph and re-record
`
`the works at issue without Defendant’s help or Plaintiff may apply for and receive copyright
`
`registrations involving the works at issue.38 Because the “works” are not ripe for release or
`
`publication, Defendant contends this Court should refuse to determine any rights to vaguely
`
`identified “subject-to-change potential property.”39
`
`
`
`Finally, Defendant argues that the Complaint should be dismissed under Federal Rule of
`
`Civil Procedure 12(b)(7) because Plaintiff fails to join necessary parties under Federal Rule of
`
`Civil Procedure 19.40 Defendant claims the actual parties to this litigation are Big Freedia
`
`Enterprises LLC and METIF, LLC.41 According to Defendant, because joinder of these necessary
`
`parties would destroy diversity, the question for the Court is “whether, in equity and good
`
`conscience, the action should proceed among the existing parties or should be dismissed.”42
`
`Defendant claims a judgment rendered in the actual party LLC’s absence would be inadequate
`
`and prejudice Defendant.43 Further, if this action were dismissed for nonjoinder, Defendant
`
`claims the Plaintiff would have an adequate remedy in a properly constituted action in a proper
`
`forum.44 Therefore, Defendant concludes the Court should dismiss the Complaint under Rule
`
`
`37 Id.
`
`38 Id.
`
`39 Id.
`
`40 Id. at 4.
`
`41 Id.
`
`42 Id.
`
`43 Id.
`
`44 Id.
`
`
`
`6
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 7 of 21
`
`12(b)(7) for failure to join a necessary party under Rule 19.45
`
`B.
`
`Plaintiff’s Arguments in Opposition to the Motion to Dismiss
`
`Plaintiff makes three principal arguments in opposition to the instant motion.46 First,
`
`Plaintiff argues that the request for a declaratory judgment, concerning determination of
`
`copyright ownership for the Musical Works and Choreographic Works, arises under the federal
`
`Copyright Act.47
`
`With respect to the Musical Works, Defendant allegedly demands credit as a co-author of
`
`the Musical Works.48 But Plaintiff argues that Defendant did not make any contributions of
`
`copyrightable expression.49 As to the Chorographic Works, Defendant allegedly demands that
`
`Plaintiff cease using the Choreographic Works or otherwise compensate Defendant to use the
`
`Choreographic Works.50 But Plaintiff argues that he is a co-author of the Choreographic
`
`Works and entitled to use them without Defendant’s permission.51 Therefore, because the Court
`
`must determine the ownership status of each part y, Plaintiff concludes that his declaratory
`
`judgment claims arise under the Copyright Act’s authorship provisions and thus provide this
`
`Court with subject matter jurisdiction.52
`
`Second, Plaintiff argues that his declaratory judgment claims, concerning authorship rights
`
`45 Id. at 5.
`
`46 Rec. Doc. 20.
`
`47 Id. at 5–6.
`
`48 Id. at 5.
`
`49 Id.
`
`50 Id.
`
`51 Id.
`
`52 Id. at 5–8.
`
`7
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 8 of 21
`
`in the Musical Works and Choreographic Works, is a justiciable question.53 Plaintiff argues
`
`that the parties’ ownership disputes (as discussed above) involve a substantial controversy of
`
`sufficient immediacy and reality.54 Indeed, Plaintiff notes that Defendant has aggressively
`
`threatened litigation, demanded compensation, and filed suit against Plaintiff in California
`
`for breach of contract in connection with the Music Videos.55
`
`Third, Plaintiff argues that the Complaint should not be dismissed for a failure to join
`
`necessary parties under Rule 19.56 Plaintiff claims that Defendant never specifically stated the
`
`person or entity who contracted on Defendant’s behalf.57 Plaintiff notes that the parties never
`
`entered into a written contract.58 According to Plaintiff, Defendant demanded payment for his
`
`services using a plethora of professional names—including “Berto,” “Wilberto Lucci,” “W.
`
`Lucci,” “Metif,” “Scorpio,” “Senor Berto,” “Brandeaux,” and “Bert Company.”59 For these
`
`reasons, Plaintiff contends that it would be premature to deem “Metif, LLC” a necessary party
`
`without additional discovery.60 Accordingly , Plaintiff concludes the Complaint may not be
`
`53 Id. at 8–12.
`
`54 See id. at 11, 15.
`
`55 See id.
`
`56 Id. at 13.
`
`57 Id. at 14.
`
`58 Id. at 14.
`
`59 Id. at 15.
`
`60 Id. Yet, even if Metif, LLC is a necessary party, Plaintiff contends the Court would still have original
`jurisdiction under 28 U.S.C. 1338(a) to declare the authorship of the Musical Works and the Choreographic
`Works. Id. at 16. Therefore, diversity jurisdiction under 28 U.S.C. § 1332 would be unnecessary. Id.
`Consequently, Plaintiff concludes the addition of “Metif, LLC” would not divest the Court of subject matter
`jurisdiction. Id.
`
`8
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 9 of 21
`
`dismissed under Rule 12(b)(7) for failure to join a necessary party.61
`
`III. Legal Standard
`
`A.
`
`
`
`
`Legal Standard on a Rule 12(b)(1) Motion to Dismiss for Lack of Subject Matter
`Jurisdiction
`
`A motion to dismiss filed pursuant to Rule 12(b)(1) for lack of subject-matter jurisdiction
`
`must be considered by the court “before any other challenge because the court must find
`
`jurisdiction before determining the validity of a claim.”62 Federal courts are considered courts of
`
`limited jurisdiction and, therefore, absent jurisdiction conferred by statute, federal courts lack the
`
`power to adjudicate claims.63 If a federal court lacks subject matter jurisdiction, it should dismiss
`
`without prejudice.64
`
`
`
`The standard of review for a Rule 12(b)(1) motion to dismiss turns on whether the defendant
`
`has made a “facial” or “factual” jurisdictional attack on the Complaint.65 A defendant makes a
`
`“facial” jurisdictional attack by merely filing a motion under Rule 12(b)(1) challenging the
`
`court’s jurisdiction.66 Under a facial attack, the court is only required to assess the sufficiency of
`
`the allegations contained in the plaintiff’s complaint, which are presumed to be true.67 On the
`
`other hand, a “factual” attack is made by providing affidavits, testimony, and other evidentiary
`
`
`61 Id.
`
`62 Moran v. Kingdom of Saudi Arabia, 27 F.3d 169, 172 (5th Cir.1994) (internal citation omitted).
`
`63 See, e.g., Stockman v. Fed. Election Comm’n, 138 F.3d 144, 151 (5th Cir.1998) (citing Veldhoen v. U.S.
`Coast Guard, 35 F.3d 222, 225 (5th Cir. 1994)).
`
`64 In re Great Lakes Dredge & Dock Co. LLC, 624 F.3d 201, 209 (5th Cir. 2010).
`
`65 Paterson v. Weinberger, 644 F.2d 521, 523 (5th Cir. 1981).
`
`66 Id.
`
`67 Id.
`
`
`
`9
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 10 of 21
`
`materials challenging the court’s jurisdiction.68
`
`
`
`A “district court is free to weigh the evidence and satisfy itself as to the existence of its
`
`power to hear the case.”69 In ruling, the court may rely upon any of the following: (1) the
`
`complaint alone; (2) the complaint supplemented by undisputed facts evidenced in the record; or
`
`(3) the complaint supplemented by undisputed facts plus the court’s resolution of disputed facts.70
`
`B.
`
`Legal Standard on a Rule 12(b)(7) Motion to Dismiss for Failure to Join
`
`
`
` Federal Rule of Civil Procedure 12(b)(7) allows a party to bring a motion to dismiss a
`
`complaint for failure to join a party under Rule 19.71 Proper joinder under Rule 19 is a two-step
`
`process. First, the court must decide if the absent party is a necessary party to the action under
`
`Rule 19(a).72 Under Rule 19(a), a party is “necessary” if:
`
`(1) in the person’s absence complete relief cannot be accorded among those
`already parties, or (2) the person claims an interest relating to the subject of the
`action and is so situated that the disposition of the action in the person’s absence
`may (i) as a practical matter impair or impede the person’s ability to protect that
`interest or (ii) leave any of the persons already parties subject to a substantial risk
`of incurring double, multiple, or otherwise inconsistent obligations by reason of
`the claimed interest.
`
`Second, if the absent party is a necessary party, but its joinder is not feasible, the court must
`
`
`
`decide whether the absent party is an “indispensable” party to the action under Rule 19(b).73
`
`Factors to consider under Rule 19(b) include “(1) prejudice to an absent party or others in the
`
`
`68 Id.
`
`69 MDPhysicians, 957 F.2d at 181.
`
`70 Id. at 181 n. 2.
`
`71 See Fed. R. Civ. P. 12(b)(7).
`
`72 See Fed. R. Civ. P. 19(a).
`
`73 See Fed. R. Civ. P. 19(b).
`
`
`
`10
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 11 of 21
`
`lawsuit from a judgment; (2) whether the shaping of relief can lessen prejudice to absent parties;
`
`(3) whether adequate relief can be given without participation of the party; and (4) whether the
`
`plaintiff has another effective forum if the suit is dismissed.”74
`
`IV. Law and Analysis
`
`A. Whether the Complaint should be Dismissed for lack of Subject Matter Jurisdiction
`
`
`
`Defendant argues that the Court lacks subject matter jurisdiction over this case for two
`
`reasons.75 First, Defendant argues that the Court lacks subject matter jurisdiction because
`
`Plaintiff’s declaratory judgment claims do not arise under the Copyright Act.76 Second,
`
`Defendant argues that even if such claims do arise under the Copyright Act, Plaintiff’s declaratory
`
`judgment claims do not entail an “actual controversy” and thus are not justiciable.77 The Court
`
`addresses each of these issues in turn.
`
`1.
`
`Whether Plaintiff’s declaratory judgment claims arise under the Copyright
`Act.
`
`Federal courts have exclusive jurisdiction over actions arising under the Copyright Act.78
`
`
`
`There are three ways for an action to arise under the Copyright Act: (1) “the complaint is for a
`
`remedy expressly granted by the Act”; (2) the complaint “asserts a claim requiring construct[ion]
`
`of the Act”; or (3) the complaint “presents a case where a distinctive policy of the Act requires
`
`that federal principles control the disposition of the claim.”79 Plaintiff neither argues that he seeks
`
`
`74 Cornhill Ins. PLC v. Valsamis, Inc., 106 F.3d 80, 84 (5th Cir. 1997) (citing Fed. R. Civ. P. 19(b))
`
`75 Rec. Doc. 16-1.
`
`76 Id. at 2.
`
`77 Id. at 3.
`
`78 28 U.S.C. § 1338(a).
`
`79 Goodman v. Lee, 815 F.2d 1030, 1031 (5th Cir. 1987) (quoting T.B. Harms Co. v. Eliscu, 339 F.2d 823,
`828 (2d Cir. 1964). The mere fact that a contract involves a dispute as to who owns the copyright does not
`implicate the Copyright Act. Indeed, “[t]he general interest that copyrights, like all other forms of property,
`11
`
`
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 12 of 21
`
`a “remedy expressly granted by the [Copyright] Act” nor argues that “a distinctive policy of the
`
`[Copyright] Act requires that federal principles control the disposition of the claim.”80 Instead,
`
`Plaintiff argues that his declaratory judgment claims require construction of the Copyright Act’s
`
`ownership provisions.81
`
`
`
`Section 101 of the Copyright Act defines pertinent terms for ownership, including
`
`“copyright owner” and “joint work.”82 Section 201 of the Copyright Act instructs when a
`
`copyright vests in an author and provides the ownership status of authors in joint works.83 Section
`
`201(a) states: [C]opyright in a work protected under this title vests initially in the author or authors
`
`of the work. The authors of a joint work are coowners of a copyright in the work.” Declaratory
`
`judgment claims requiring application and interpretation of the Copyright Act’s ownership
`
`provisions, including Sections 101 and 201, are sufficient to establish federal question
`
`jurisdiction.84
`
`
`
`For instance, in Goodman v. Lee, the plaintiff sought a declaratory judgment that the song
`
`“Let The Good Times Roll” was a joint work within the meaning of the Copyright Act’s
`
`
`should be enjoyed by their true owner is not enough” to allege a wrong delineated by the Copyright Act. Id.
`
`80 Rec. Doc. 20.
`
`81 Id. at 6–7.
`
`82 17 U.S.C. § 101.
`
`83 17 U.S.C. § 201.
`
`84 See, e.g., Goodman, 815 F.2d at 1032 (finding federal jurisdiction where a declaratory judgment request
`alleged that plaintiff was an actual joint co-author of a song); Merchant v. Levy, 92 F.3d 51, 55–56 (2d Cir.
`1996) (“[C]opyright ownership by reason of one’s status as co-author of a joint work arises directly from
`the terms of the Copyright Act itself.”); Beardmore v. Jacobson, No. 4:13–CV–361, 2014 WL 3543726, at
`*3 (S.D. Tex. July 14, 2014) (“Cases commonly arising under the Act involve determinations of a work's
`ownership or authorship.”).
`
`
`
`12
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 13 of 21
`
`ownership provisions.85 Simply put, the plaintiff requested credit as a co-author of the song.86
`
`The Fifth Circuit held that Plaintiff’s declaratory judgment claim “involve[d] the application and
`
`interpretation of the copyright ownership provisions of 17 U.S.C. § 201(a)” because she alleged
`
`authorship of the song.87 Therefore, the Fifth Circuit held that the plaintiff’s claim arose under
`
`the Copyright Act and, in turn, the district court had federal question jurisdiction.88
`
`By contrast, ownership of a copyright involves only a state law question if the disputed
`
`ownership hinges on the terms of a contractual agreement.89 For example, in T.B. Harms Co., the
`
`Second Circuit analyzed whether federal question jurisdiction existed to resolve an
`
`ownership dispute over four copyrighted songs written for a movie pursuant to a contract.90
`
`The Second Circuit reasoned that an ownership dispute over a copyright presents a state
`
`law contract question—not a federal copyright question—when ownership depends on
`
`interpreting the parties’ contract.91 Thus, the mere fact a case concerns a copyright is not
`
`sufficient to establish federal question jurisdiction.92
`
`Here, Plaintiff seeks a declaration of authorship for the Musical Works and Choreographic
`
`Works.93 First, as to the Musical Works, the Complaint states that Defendant never made
`
`85 Goodman, 815 F.2d at 1031.
`
`86 Id.
`
`87 Id. at 1031–32.
`
`88 Id. at 1032.
`
`89 T. B. Harms Co. v. Eliscu, 339 F.2d 823, 824 (2d Cir. 1964).
`
`90 339 F.2d at 824.
`
`91 Id. at 826.
`
`92 Id. at 825.
`
`93 Rec. Doc. 1 at 4–5.
`
`13
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 14 of 21
`
`copyrightable contributions to the Musical Works, but he continues to request credit and royalties
`
`as an author and producer of the Musical Works.94 Similar to the plaintiff’s request in Goodman
`
`to be deemed a co-author, the Complaint here seeks “a declaration from the Court that
`
`[Defendant] is not a joint author of the Musical Works.”95 Further, unlike the state law contract
`
`question in T.B. Harms, the Complaint never alleges that ownership of the Musical Works
`
`involves any contract between the parties.96 Defendant does not attempt to prove otherwise.97
`
`Therefore, because the question involves whether a party is a co-author of a potential joint work
`
`within the meaning of the Copyright Act, Plaintiff’s declaratory judgment claim “involves the
`
`application and interpretation of the copyright ownership provisions of 17 U.S.C. § 201(a).”98
`
`Accordingly, Plaintiff’s declaratory judgment claim arises under the Copyright Act.
`
`
`
`Second, as to the Choreographic Works, the Complaint states that each party “worked
`
`together with [Plaintiff’s] dancers to create the Choreographic Works.”99 The Complaint alleges
`
`that the parties’ “respective contributions to the Choreographic Works were merged into
`
`inseparable or interdependent parts of a unitary whole.”100 Yet, according to the Complaint,
`
`Defendant is demanding that Plaintiff cease using the Choreographic Works unless Plaintiff
`
`
`94 Id. at 5.
`
`95 Id.
`
`96 See generally id.
`
`97 Rec. Doc. 16-1. Defendant does argue that the Music Videos involve a contract question under state law,
`but he never provides any evidence that the Musical Works involve a contract question under state law. Id.
`
`98 Goodman, 815 F.2d at 1032; see also Hill Country Tr. v. Silverberg, No. 1:18-CV-635-RP, 2018 WL
`6267880, at *4 (W.D. Tex. Nov. 28, 2018).
`
`99 Rec. Doc. 1 at 5.
`
`100 Id.
`
`
`
`14
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 15 of 21
`
`provides compensation to Defendant.101 The Complaint requests that this Court “declare that
`
`[Plaintiff] is entitled to continue using the Choreographic Works [as a joint author] without further
`
`interference from [Defendant].”102 Although Plaintiff concedes that the parties entered into a
`
`contract regarding choreography services, Plaintiff argues that neither the Complaint nor the
`
`Defendant’s Motion to Dismiss alleges that the parties’ contract involved ownership of the
`
`copyright attendant to the Choreographic Works at issue here.103 Defendant fails to offer any
`
`evidence demonstrating otherwise.104 Instead, similar to the plaintiff’s request in Goodman to be
`
`deemed a co-author, Plaintiff seeks a determination that he is a co-author of the Choreographic
`
`Works under the Copyright Act.105
`
`
`
`Therefore, because the Complaint involves whether a party is a co-author of a potential
`
`joint work within the meaning of the Copyright Act, Plaintiff’s claim “involves the application
`
`and interpretation of the copyright ownership provisions of 17 U.S.C. § 201(a).”106 Accordingly,
`
`Plaintiff’s declaratory judgment claim arises under the Copyright Act.107
`
`
`101 Id. at 4–6.
`
`102 Id. at 6; Rec. Doc. 20 at 5.
`
`103 Rec. Doc. 20 at 7–8.
`
`104 Rec. Doc. 16-1.
`
`105 Rec. Doc. 1 at 5–6. The Complaint does not mention any interpretation of any contract regarding the
`Choreographic Works. Id. Plaintiff’s allegations are considered true when, as here, the Defendant makes
`only a “facial attack” upon the Complaint under Rule 12(b)(1). Paterson, 644 F.2d at 523.
`
`106 Goodman, 815 F.2d at 1032; see also Hill, 2018 WL 6267880, at *4.
`
`107 To the extent that Defendant contends Plaintiff's lawsuit is barred by 17 U.S.C. § 411(a) because Plaintiff
`does not have copyright registration to the Musical Works and Choreographic Works, Defendant’s argument
`is mistaken. Section 411(a) requires that “no action for infringement of the copyright in any United States
`work shall be instituted until registration of the copyright claim has been made in accordance with this title.”
`Yet Plaintiff is not bringing a copyright infringement claim. Instead, Plaintiff filed a declaratory judgment
`claim pursuant to 28 U.S.C. § 2201 requesting a declaration regarding authorship of the Musical Works and
`Choreographic Works. See Goodman v. Lee, 815 F.2d 1030, 1031–32 (5th Cir.1987) (joint author sought
`declaratory judgment of joint authorship); Gaiman v. McFarlane, 360 F.3d 644, 648, 652 (7th Cir.2004)
`(suit for declaration of joint authorship “is not a suit for infringement.”); see also Severe Records v. Rich,
`15
`
`
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 16 of 21
`
`
`
`
`
`2.
`
`Whether Plaintiff’s declaratory judgment claims are justiciable
`
`To analyze whether a district court must decide or dismiss a declaratory judgment suit, the
`
`district court must analyze three prongs under Fifth Circuit precedent.108 First, the district court
`
`must consider whether the declaratory action is justiciable—which typically boils down to
`
`whether an “actual controversy” exists between the parties.109 Second, the district must resolve
`
`whether it has the authority to grant declaratory relief.110 Third, the district court must decide
`
`whether it should exercise its broad discretion to decide or dismiss the declaratory judgment
`
`action.111 Defendant does not seek dismissal on the second or third prong of the Fifth Circuit’s
`
`test.112 Instead, Defendant argues that Plaintiff’s declaratory judgment claims are not “justiciable”
`
`under the first prong because no actual controversy exists between the parties.113
`
`
`
`The Declaratory Judgment Act requires an “actual controversy” between parties in a
`
`declaratory judgment action.114 To decide whether a parties’ dispute constitutes an “actual
`
`controversy,” the “question in each case is whether the facts alleged, under all the circumstances,
`
`show that there is a substantial controversy, between parties having adverse legal interests, of
`
`sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”115 When
`
`
`658 F.3d 571, 581–82 (6th Cir.2011); Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996) (distinguishing
`claims of joint authorship and claims of infringement). Accordingly, Section 411(a) is no bar to Plaintiff’s
`declaratory judgment claims.
`
`108 Orix Credit Alliance, Inc. v. Wolfe, 212 F.3d 891, 895 (5th Cir. 2000).
`
`109 Id. at 896; Vantage Trailers, Inc. v. Beall Corp., 567 F.3d 745, 748 (5th Cir. 2009).
`
`110 Orix, 212 F.3d at 895.
`
`111 Id.
`
`112 Rec. Doc. 16-1 at 3.
`
`113 Id.
`
`114 28 U.S.C. § 2201(a).
`
`115 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quoting Maryland Casualty Co. v.
`16
`
`
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 17 of 21
`
`evaluating the justiciability of a declaratory judgment suit, a district court must remember to not
`
`issue “an opinion advising what the law would be upon a hypothetical set of facts.”116 However,
`
`declaratory judgment plaintiffs need not actually expose themselves to liability before bringing
`
`suit.117
`
`
`
`Here, as to the Musical Works, the Complaint states that Defendant requested (1) credit as
`
`co-author and producer of the Musical Works and (2) royalties for Plaintiff’s use of the Musical
`
`Works.118 When Plaintiff did not acquiesce to such demands, Defendant allegedly became
`
`“increasingly aggressive in his demands and legal threats” regarding the Musical Works.119
`
`Although “threats of legal action, alone, cannot create an actual controversy,”120 such threats may
`
`establish an actual controversy if they are “specific and concrete.”121 Here, the parties have a
`
`definite and substantial dispute over ownership rights in the specific Musical Works, and
`
`Defendant’s threats of legal action give immediacy and concreteness to the parties’ controversy.
`
`In fact, Defendant has pursued litigation against Plaintiff in California for a breach of contract
`
`arising out of the dispute in this litigation, which highlights the immediacy and concreteness of
`
`the parties’ controversy.122 Therefore, Plaintiff’s request for declaratory relief as to the Musical
`
`
`Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941)).
`
`116 Id. (quoting Aetna Life Ins. Co. of Hartford, Conn. v. Haworth, 300 U.S. 227, 241 (1937)).
`
`117 Id. at 129–30.
`
`118 Rec. Doc. 1 at 5.
`
`119 Id. at 4. Defendant does not challenge or controvert any of these allegations.
`
`120 Vantage Trailers, 567 F.3d at 751.
`
`121 Orix, 212 F.3d at 897.
`
`122 Rec. Doc. 20-2. The parties’ dispute does not entail “an opinion advising what the law would be upon a
`hypothetical set of facts.” Aetna, 300 U.S. at 241. Indeed, under similar facts in Goodman, the Fifth Circuit
`implied that “federal district court jurisdiction exists in an action for a declaratory judgment to establish
`joint authorship of a copyrighted work.” Goodman, 815 F.2d at 1032.
`
`
`
`17
`
`

`

`Case 2:18-cv-11277-NJB-KWR Document 42 Filed 04/16/20 Page 18 of 21
`
`Works is an “actual controversy” and is justiciable.
`
`
`
`For similar reasons, Plaintiff’s request for declaratory relief as to the Choreographic Works
`
`is an “actual controversy.” According to the Complaint, Defendant demands that Plaintiff either
`
`(1) “cease using the Choreographic Works” or otherwise (2) pay a fee of $500 per month to
`
`continue using the Choreographic Works.123 When Plaintiff refused Defendant’s demands,
`
`Defendant allegedly became “increasingly aggressive in his demands and legal threats.”124 For
`
`these reasons, Plaintiff requests a declaration that he is a “joint author of the Choreographic
`
`Works” and “entitled to make use of the [Choreographic Works] with or without [Defendant’s]
`
`permission or consent.”125
`
`
`
`Once again, the parties have a definite and substantial dispute over ownership rights in
`
`specific Choreographic Works, and Defendant’s aggressive demands for compensation and
`
`aggressive legal threats to sue give immediacy and concreteness to the parties’ controversy. As
`
`previously noted, Defendant has pursued litigation against Plaintiff in California for a breach of
`
`contract arising out of the dispute in this litigation.126 The parties’ dispute in the instant litigation
`
`does not entail “an opinion advising what the law would b