United States District Court, D. Oregon
OPINION AND ORDER
MICHAEL J. McSHANE, District Judge.
Plaintiff Voltage Pictures instituted these actions on or about April 3, 2014, in Marion County, Oregon, alleging violations of state trademark law under ORS § 647.095 (seeking remedies under ORS § 647.105). Certain Doe defendants, represented by David Madden and Morgan Pietz, removed both actions to this Court on May 16, 2014. On May 21, 2014, this Court, sua sponte, severed and dismissed defendant Does 2-50 in each case. As a result, Mr. Madden and Mr. Pietz no longer represent defendants remaining in either case. On May 27, 2014, plaintiff filed these motions to remand, ECF No. 9, 8.
This Court is asked to consider: (1) whether this Court has subject matter jurisdiction over the removed actions and (2) whether the removed actions were procedurally defective. Because (1) plaintiff's claim is preempted by Copyright Law and (2) defendants' removal was not procedurally defective, this Court finds that removal was proper. Plaintiff's motions to remand, ECF No. 9, 8, are DENIED.
I. Subject Matter Jurisdiction
Defendants removed both cases under 28 U.S.C. § 1441(a) and 28 U.S.C. § 1454. See Notice of Removal 1, 3, Civil No. 6:14-cv-00812-MC, ECF No. 1-1. A state action can generally be removed if that action could have been brought originally in federal court, i.e. if this Court has original jurisdiction. 28 U.S.C. § 1441(a); see also 28 U.S.C. § 1454 (recognizing removal if an asserted claim for relief arises under "patents, plant variety protection, or copyrights"). To determine whether this Court has original jurisdiction, this Court "examine[s] the well pleaded' allegations of the complaint and ignore[s] potential defenses." Beneficial Nat'l Bank v. Anderson, 539 U.S. 1, 6 (2003) (citations omitted). "However, under the artful pleading rule a plaintiff may not defeat removal by omitting to plead necessary federal questions in a complaint.'" ARCO Envtl. Remediation, L.L.C. v. Dep't of Health & Envtl. Quality of Montana, 213 F.3d 1108, 1114 (9th Cir. 2000) (quoting Franchise Tax Bd. of Cal., v. Constr. Laborers Vacation Trust for S. Cal., 463 U.S. 1, 22 (1983)). "A state-created cause of action can be deemed to arise under federal law (1) where federal law completely preempts state law; (2) where the claim is necessarily federal in character; or (3) where the right to relief depends on the resolution of a substantial, disputed federal question." Id. (citations and internal quotation marks omitted).
Defendants contend that the gravamen of plaintiff's respective claims under ORS § 647.095 (seeking remedies under ORS § 647.105), is copyright infringement, and therefore, the claims are preempted by federal copyright law. "Complete preemption is really a jurisdictional rather than a preemption doctrine, as it confers exclusive federal jurisdiction in certain instances where Congress intended the scope of a federal law to be so broad as to entirely replace any state-law claim." Dennis v. Hart, 724 F.3d 1249, 1254 (9th Cir. 2013) (citations and internal quotation marks omitted). "Complete preemption is a limited doctrine that applies only where a federal statutory scheme is so comprehensive that it entirely supplants state law causes of action." Id. Numerous Courts, including the Ninth Circuit,  have found that the preemption provision of the Copyright Act, 17 U.S.C. § 301(a),  completely preempts certain state-law claims falling within its scope. See, e.g., Ritchie v. Williams, 395 F.3d 283, 286-87 (6th Cir. 2005) (upholding complete preemption of state contract and tort claims under the Copyright Act); Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 306-307 (2d Cir. 2004) (upholding complete preemption of state unjust enrichment and declaratory judgment claims under the Copyright Act); Rosciszewski v. Arete Assocs., Inc., 1 F.3d 225, 233 (4th Cir. 1993) (upholding complete preemption of state Computer Crimes Act claim under the Copyright Act).
The issue therefore, is whether plaintiff's claims under ORS § 647.095 (seeking remedies under ORS § 647.105) are preempted by 17 U.S.C. § 301(a). See, e.g., Laws, 448 F.3d at 1137. 17 U.S.C. § 301(a) preempts plaintiff's claims if (1) "plaintiff's work come[s] within the subject matter of copyright" and (2) the legal or equitable rights granted under state law "are equivalent to any of the exclusive rights within the general scope of copyright." Montz v. Pilgrim Films & Television, 649 F.3d 975, 979 (9th Cir. 2011).
"As to the first requirement, the leading treatise in this field recognizes that the scope of the subject matter of copyright law is broader than the protections it affords." Id. (citing 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 19D.03[A][b] (rev. ed. 2010)). A "motion picture" is a work of authorship under the Copyright Act. 17 U.S.C. § 102(a)(6). The motion picture at issue, Dallas Buyers Club, was produced by plaintiff and is registered with plaintiff's affiliate, Dallas Buyers Club, LLC. Plaintiff seeks to enjoin Doe defendants from reproducing, copying, and distributing the movie Dallas Buyers Club because it contains plaintiff's state trademark (VOLTAGE PICTURES) within film credits. See Defs.' Notice of Removal 4-5, 12-13, 15-16, 6:14-cv-00812-MC, ECF No. 1-2. The right to reproduce, copy, and distribute are exclusive copyright rights reserved to the copyright owner. See 17 U.S.C. § 106. Although plaintiff contends that it is merely seeking to prevent the "use, display or sale of" its state trademark (VOLTAGE PICTURES),  Pl.'s Mot. Remand 11, Civil No. 6:14-cv-00812-MC, ECF No. 9, plaintiff's complaints clearly encompass subject matter falling within the scope of federal copyright law.
As to the second requirement, to survive preemption, "a state cause of action must assert rights that are qualitatively different from the rights protected by copyright." Montz, 649 F.3d at 980. The state claim "must have an extra element which changes the nature of the action." Law, 448 F.3d at 1143 (citation omitted). Plaintiff's original complaints asserted that:
81. Defendants, and each of them, without the authorization or consent of plaintiff, used, copied and/or distributed a reproduction, counterfeit and copy of plaintiff's motion picture bearing plaintiff's registered trademark.
83. Plaintiff is entitled to an order  from this Court enjoining defendants from infringing plaintiff's rights and directing defendants to delete all unauthorized copies of plaintiff's motion pictures.
Defs.' Notice of Removal 15-16, Civil No. 6:14-cv-00812-MC, ECF No. 1-2; see also Pl.'s Am. Compl. 11-12, Civil No. 6:14-cv-00812-MC, ECF No. 7 (seeking to enjoin defendant from using, reproducing, and distributing ); ORS § 647.095 (recognizing civil action for trademark infringement). A plaintiff asserting trademark infringement in violation of ORS § 647.095 (seeking remedies under ORS § 647.105), must show that defendants' use of the trademark created a likelihood of confusion. See ORS § 647.095(1)(a); see also Shakey's Inc. v. Covalt, 704 F.2d 426, 431 (9th Cir. 1983); The Learning Internet v. Learn.com, Inc., No. CV 07-227-AC, 2009 WL 6059550, at *30 (D. Or. Nov. 25, 2009); Newport P. Corp. v. Moe's Sw Grill, LLC, No. 05-995-KI, 2006 WL 2811905 at *11 (D. Or. Sept. 28, 2006). "Whether a likelihood of confusion exists requires [this Court] to consider the eight Sleekcraft factors." Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1110 (9th Cir. 1999) (emphasis added) (citation and internal quotation marks omitted). Plaintiff's complaints (original and amended) do not allege a likelihood of confusion.
In contrast, a complaint for copyright infringement must "simply alleg[e] present ownership by the plaintiff, registration in compliance with the applicable statute, and infringement by the defendant." CHARLES A. WRIGHT & ARTHUR A. MILLER, FEDERAL PRACTICE AND PROCEDURE § 1237, at 404 (3d ed. 2004); see also Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (indicating that a plaintiff must show "ownership of a valid ...