Anne Schafly Cori v. Eagle Forum and John F. Shafly, 2018 WL 656598 (S.D. Ill. Feb. 1, 2018)
This is an odd case to raise the America Invents Act. It is a continuation of the break between Conservative Eagle Phyllis Schafly (d.2016) and some members of her Eagle Forum (including her daughter Anne Schafly Cori – the break was precipitated by Phyllis Shafly’s support of Donald Trump’s presidential campaign and ouster of dissenters (including the plaintiff) from the Eagle Forum.
The basic setup in this particular case is that the plaintiff (Schafly Cori) alleged breach of fiduciary duty, trademark infringement and unfair competition against the Eagle Forum. The defendants counterclaimed alleging copyright infringement along with trademark infringement, rights of publicity, unfair competition, and challenging the validity of a license to use certain trademarks. Rather than filing in Federal Court, the Plaintiff originally filed in Illinois State Court (Madison County) and the Defendants removed the case to Federal Court.
Not wanting to be in Federal Court, the plaintiff then amended her complaint to only assert state-law claims and asked for remand back to state court. This is where the America Invents Act comes into play. The AIA amended the federal removal statute 28 U.S.C.A. § 1454 to particularly allow for removal of civil actions where “any party asserts a claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” The AIA also expressly removed jurisdiction from state courts – “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” 28 U.S.C. § 1338. Here, I expect that the defendants included the copyright claim primarily to get Federal Jurisdiction.
In its motion decision, the district court recognized the AIA requirement of removal of cases where one party asserts a copyright claim.** However, the district court ended up remanding the case – finding that the “core” of the plaintiff’s case is about ouster and legal control – not the particular materials being used. Based upon that disconnect, the court found the copyright counter claim “immaterial and made solely for the p purpose of obtaining jurisdiction.” Case remanded back to state court.
Note 1. It is clear that the district court missed some major steps in its analysis, although it might still have reached the correct conclusion. The statute is clear that a copyright infringement counterclaim gets the case federal jurisdiction, and the holding here suggests that there is leeway with that result. I don’t think so. Rather, the court should have determined whether the copyright claim should be properly dismissed and, if so, then remand.
Note2. ** The February 1, 2018 decision discussed here was based upon a request for rehearing. In its original decision, the court had incorrectly stated that “only the complaint may be considered when determining jurisdiction.” That ruling was based upon Holmes Group v. Vornado, 535 U.S. 826 (2002) that was overruled by the AIA statutory changes.