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78th Infantry Division, World War Ii Living History Association v. J. Gary Oprendek

August 4, 2011

78TH INFANTRY DIVISION, WORLD WAR II LIVING HISTORY ASSOCIATION, PLAINTIFF,
v.
J. GARY OPRENDEK,
DEFENDANT.



The opinion of the court was delivered by: Kugler, United States District Judge:

NOT FOR PUBLICATION (Doc. No. 7)

OPINION

This matter arises out of the alleged unauthorized taking of a website domain and its contents. Presently before the Court is a motion to remand filed by Plaintiff 78th Infantry Division, World War II Living History Association (the "Association"). (Doc. No. 7). The Complaint alleges state-law claims for breach of the duty of loyalty, conversion, trespass to chattels, tortious interference, and unjust enrichment. In January 2011, Defendant J. Gary Oprendek filed a Notice of Removal, arguing that the Copyright Act preempts several of the Association's state-law claims and the Court should therefore exercise federal question jurisdiction under 28 U.S.C. § 1331. ("Notice of Removal"). Defendant argued that the Court should exercise supplemental jurisdiction over the Association's non-preempted state-law claims. The Association argues that because the Complaint does not assert any federal claims on its face, the Court should decline to exercise federal question jurisdiction over this matter. For the following reasons, the Association's motion to remand is DENIED.

I. BACKGROUND

The Association is a non-profit organization that provides World War II re-enactments and educates the public about World War II. (Notice of Removal Ex. A at 2). Defendant previously performed the work of a webmaster and website committee member for the Association. (Id.). In 2000, a former member of the Association created a website for the Association. (Id. at 3). In June 2003, the Association's Commander purchased the domain name 78thinfantry.com and paid the annual domain name fee. (Id.). Approximately three years later, Defendant joined the Association and volunteered to be the webmaster. (Id.). Subsequently, Defendant recommended that the Commander transfer the domain name 78thinfantry.com to him, claiming that "the website needed more space" and that the website would be easier to maintain under his control. (Id.). The Commander agreed, and Defendant took control of the website domain and its contents. (Id.).

In May 2009, Defendant resigned from the Association. Prior to his resignation, Defendant agreed to transfer the website back to the Association. (Id.). However, the Association alleges that Defendant refused to relinquish control of the website in violation of the Association's bylaws, and then cancelled the domain name. As a result of Defendant's conduct, the 78thinfantry.com domain name was released to the public without the Association's consent. (Id.). Once the domain name became available for public purchase, Defendant purchased the domain name and utilized content from the Association's website to create a new World War II website for another organization (the 9th Division), which he formed with a group of former members of the Association. (Id. at 4). Defendant operated the 9th Division's website under the domain name 78thinfantry.com. (Id.). Thereafter, Defendant registered the website contents of 78thinfantry.com with the U.S. Copyright Office, effective July 1, 2009. (Answer and Countercl. Ex. A at 2). The registration application included text, software code, and graphical elements taken from the Association's website. (Id.).

In November 2010, the Association filed the Complaint in the Superior Court of New Jersey. (Notice of Removal Ex. A). In January 2011, Defendant removed the matter to this Court pursuant to 28 U.S.C. § 1441. Defendant asserted federal question jurisdiction pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338. (Notice of Removal 2-3). Defendant argued that the Association's conversion, trespass to chattels, and breach of the duty of loyalty claims were completely preempted by § 301(a) of the Copyright Act. (Id. at 4). Defendant also argued that the Court should exercise supplemental jurisdiction over the Association's tortious interference and unjust enrichment claims pursuant to 28 U.S.C. § 1367(a). (Id. at 3). In February 2011, Defendant filed the Answer. (Answer and Countercl.). The Answer asserts affirmative defenses and a counterclaim for copyright infringement. (Id. at 5-13).

On February 9, 2011, the Association filed a motion to remand the matter to the Superior Court of New Jersey, Burlington County, pursuant to 28 U.S.C. § 1447. The Association argues that the Court should remand the matter to state court because the Complaint alleges only state-law claims. (Reply Br. 6-12). Defendant claims that the Court should not remand the matter to state court because the Association's state-law claims implicate copyright law and are thus preempted by the Copyright Act. (Id. at 4-6). Moreover, Defendant argues that because the counterclaim asserts copyright infringement, granting the Association's motion to remand could create both potentially inconsistent results in state and federal courts and added litigation expenses. (Id. at 7). The parties submitted their respective briefs, and the motion is ripe for review.

II. DISCUSSION

The Association argues that its state-law claims do not implicate copyright law.

Specifically, the Association claims that the underlying matters involve "a taking of a website domain and its contents which do not belong to Defendant." (Reply Br. 8). The Association reasons that because the sole basis for federal jurisdiction is the Copyright Act, and the Association's state-law claims do not implicate copyright law, the Court should remand the matter to the Superior Court of New Jersey, Burlington County. See Franchise Tax Bd. of Cal. v. Constr. Laborers Vacation Trust for S. Cal., 463 U.S. 1, 8 (1983) (finding that in accordance with 28 U.S.C. § 1447(c), remand is appropriate where a case was not properly removed or is not within the original jurisdiction of the district court). Defendant argues that the Copyright Act preempts the Association's breach of the duty of loyalty, conversion, and trespass to chattels claims.

The Copyright Act's preemption provision, 17 U.S.C. § 301(a), states in pertinent part:

All legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 [of the Copyright Act] in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 . . . are governed exclusively by this title.

17 U.S.C. § 301(a) (emphasis added). "Congress intended that actions preempted by § 301(a) of the Copyright Act be regarded as arising under federal law" and "litigated only as federal copyright claims." Rosciszewski v. Arete Assoc., Inc., 1 F.3d 225, 232 (4th Cir. 1993). Thus, in the copyright context, "the pre-emptive force of federal law is so extraordinary that it converts an ordinary state common-law complaint into one stating a federal claim for purposes of the well-pleaded complaint rule." Id. at 231 (internal quotation marks and citation omitted) (emphasis added); see Cnty. of Del. v. Gov't Sys., 230 F. Supp. 2d 592, 598 (3d Cir. 2002); Tech. Based Solutions, Inc. v. Elecs. Coll., Inc., 168 F. Supp. 2d 375, 379 (E.D. Pa. 2001). "This so-called complete preemption occurs when an area of state law has been so completely pre-empted, that any claim purportedly based on the pre-empted state law is considered a federal claim." Id. (internal quotation marks and citation omitted); Collins v. Baxter Healthcare Corp., 949 F. Supp. 1143, 1147 (D.N.J. 1996) ("[T]he complete preemption exception to the well-pleaded complaint rule will permit ...


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