RE: Exclusive jurisdiction -- remand or dismiss?

From: Grierson, Kevin <kgrierson[_at_]wilsav.com>
Date: Tue, 11 Oct 2005 14:55:31 -0400

John,

The state courts have concurrent jurisdiction over Trademark matters under the Lanham Act, but no jurisdiction over copyright matters. You can remove the trademark matters, but not dismiss them; conversely, the state court should dismiss the copyright claims rather than allow removal (though the court is likely to simply allow removal anyway).

kwg

Kevin W. Grierson, Esq.
Registered Patent Attorney
Intellectual Property Group

Willcox & Savage, P.C.
One Commercial Place, Ste. 1800
Norfolk, Virginia 23510

kgrierson[_at_]wilsav.com
ph: 757/628-5603 fx: 757/628-5566
www.willcoxsavage.com

-----Original Message-----
From: CNI-COPYRIGHT -- Copyright & Intellectual Property [mailto:CNI-COPYRIGHT[_at_]cni.org] On Behalf Of JFN Sent: Tuesday, October 11, 2005 12:16 PM 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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CIRCULAR 230 DISCLOSURE: This communication is not a tax opinion. Pursuant to Internal Revenue Service regulations, to the extent that this contains tax advice, it is not intended or written to be used by a taxpayer for the purpose of avoiding tax penalties that may be imposed on the taxpayer. Received on Tue Oct 11 2005 - 22:55:31 GMT