state law claims each plaintiff alleged were equivalent to rights protected in the Copyright Act.
Contrary to Cyrix's assertion, it is not claimed the cow images at issue constitute "works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright."
See 17 U.S.C. § 102; Opposition Brief at 17. It is irrelevant that a photograph of a Holstein Cow might be copyrightable. 17 U.S.C. § 102(5). Gateway does not allege any copyright ownership in the Holstein Cow or in the pictures of the Holstein Cow used by Cyrix.
Gateway does not seek the equivalent of any exclusive right granted by the Copyright Act. Gateway does not set forth any copyright claims in its Complaint. Rather Gateway objects to the altering and mimicking of the Holstein Cow and the Holstein Cow pattern which causes dilution of the consumer association of the Holstein Cow and Holstein Cow Pattern. This claim is not a claim that is equivalent to the rights protected by the Copyright Act.
Cyrix also contends that the relief that Gateway seeks -- an injunction prohibiting Cyrix from altering or animating the Holstein Cow -- is another indication that removal is proper under the Copyright Act. Cyrix correlates the injunction with the exclusive right under the Copyright Act to prepare derivative works and to copy and distribute the copyrighted work. 17 U.S.C. § 106. Cyrix relies on Cuisinarts Corp. v. Appliance Science Corp., 1991 U.S. Dist. LEXIS 21021, 21 U.S.P.Q.2D (BNA) 1318, 1319 (D.Conn. 1991), aff'd, 983 F.2d 1048 (2nd Cir. 1992) to support this contention. In denying the plaintiffs motion to remand, the Cuisinarts court noted that the claim was preempted because plaintiff sought the relief of injunction and also because the certificates of copyright had been issued for the initial designs of the coffee maker in issue. Id. Remand was not denied based on the relief the plaintiff sought alone.
As discussed, Gateway does not allege copyright ownership in the Holstein Cow. Accordingly, the relief Gateway seeks is not equivalent to the exclusive rights in the Copyright Act. Because there is no copyright ownership triggering application of the Copyright Act, discussion as to whether the state claims asserted by Gateway are preempted by the Copyright Act is unnecessary. Removal under the Copyright Act is not appropriate.
4. First Amendment
Although not set forth in the Notice of Removal, Cyrix invokes the First Amendment as a basis for removal in its Opposition Brief. Cyrix reasons that because the case involves commercial speech, there are First Amendment implications that heighten the standards for granting a motion to remand to Superior Court. Opposition Brief at 23. In support of this argument, Cyrix cites Lewis v. Time, 83 F.R.D. 455 (E.D.Cal. 1979), aff'd 710 F.2d 549 (9th Cir. 1983).
In Lewis, an attorney brought an action against Time Magazine for, among other things, libel and slander when the magazine cited the attorney in a published article on the state of the legal profession. Id. at 457. The court qualified the general remand rule that "merely inartful, ambiguous or technically defective pleadings should be resolved in favor of remand" when First Amendment interests were involved. Id. at 460. The court stated that because a respected, nationwide news magazine was being sued on an article written on a matter of profound public importance, there was an inherent danger that the litigation would chill free speech. Id. at 461. When First Amendment rights are involved, the obligation imposed on the Federal courts requires the imposition of a higher standard for jurisdictional concerns. Id. at 462.
There are no such concerns in the case at bar. Resolution of the instant matter will not chill First Amendment rights regarding discussion of profound matters of public importance or of a public official, nor does it threaten the freedom of the press in the dissemination of newsworthy information.
Commercial speech is protected by the First Amendment. 44 Liquormart, Inc. v. Rhode Island, U.S. , 134 L. Ed. 2d 711, 116 S. Ct. 1495 (1996); Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., et al., 425 U.S. 748, 770, 48 L. Ed. 2d 346, 96 S. Ct. 1817 (1976). However, Cyrix does not assert that the advertisements "communicated information, expressed opinion, recited grievances, protested abuses, and sought financial support on behalf of a movement whose existence and objectives are matters of the highest public interest and concern" or otherwise invoked circumstances comparable to those contemplated by Supreme Court in New York Times Co. v. Sullivan, 376 U.S. 254, 266, 11 L. Ed. 2d 686, 84 S. Ct. 710 (1967) and its progeny.
Even if such First Amendment concerns were apparent, an action is not removable to a Federal court when the Federal question is a defense which appears only in the answer or petition for removal. Franchise Tax Bd., 463 U.S. at 14; Gully v. First National Bank, 299 U.S. 109, 113, 81 L. Ed. 70, 57 S. Ct. 96 (1936); Trans Penn Wax Corp., 50 F.3d at 228; La Chemise Lacoste, 506 F.2d at 343. Cyrix's allegations concerning a violation of the Constitution may possibly be a defense to Gateway's Complaint, but Gateway does not ask the court to determine whether its First Amendment rights have been violated in its Complaint. Compare Dworkin v. Hustler Magazine, Inc., 611 F. Supp. 781, 785 (D.Wyo. 1985). The First Amendment, as a defense, is not a basis for removal.
For the reasons stated, this matter is remanded to the Superior Court pursuant to 28 U.S.C. § 1447(c).
Dated: 10 September 1996