Odd as it may seem that someone would file a copyright infringement claim in state court, I recently had a case where the opposing party tried to do just that. The plaintiff included a claim for copyright infringement in a case alleging various state law claims. But copyright jurisdiction is exclusive in the federal court under 28 U.S.C 1338(a)(providing federal courts with exclusive jurisdiction over cases "arising under" the copyright or patent laws)(there are many cases dealing with the thorny question of whether a case "arises under" the Copyright Act, such as Bassett v. Mashantucket Tribe (1st Cir)).
There is no similar exclusivity under the trademark laws, and a Lanham Act claim can be brought in state court. Assuming the defendant in your scenario met the prerequisites for removal, the case could presumably be removed, but the defendant is not obligated to do so. In my case I did not want to remove, so I filed a motion to dismiss the copyright claim for lack of subject matter jurisdiction. The plaintiff saw the error of his ways and voluntarily withdrew the copyright claim (or more accurately has now tried to call it something else, thus raising preemption issues -- but that is for another day).
William T. McGrath
Davis McGrath LLC
125 S. Wacker Dr., Suite 1700
Chicago, IL 60606
Phone: (312)332-4748
Fax: (312)332-6376
-----Original Message-----
From: CNI-COPYRIGHT -- Copyright & Intellectual Property
[mailto:CNI-COPYRIGHT[_at_]cni.org]On Behalf Of JFN
Sent: Tuesday, October 11, 2005 11:16 AM
To: CNI-COPYRIGHT -- Copyright & Intellectual Property
Subject: [CNI-(C)] Exclusive jurisdiction -- remand or dismiss?
A complaint filed in state court claims copyright and trademark infringement, as well as trade secret misappropriation. Obviously, you can remove the case to federal court. Can you alternatively just move to dismiss the trademark and copyright claims for lack of subject matter jurisdiction? Is the federal court's jurisdiction exclusive as to both trademark and copyright infringement? I realize that the trademark infringement claim might be pled as an unfair business practice under state law, but assuming that it is only pled as a violation of the Lanham Act does it have to be dismissed?
Is there anything the state court can do other than dismiss? I assume the plaintiff can't remove his own case, and the state court can't transfer it, so the only thing that can happen is dismissal, requiring the plaintiff to re-file in federal court. Am I wrong?
John Noble
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Received on Tue Oct 11 2005 - 22:55:31 GMT
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