POOLE, Circuit Judge:
Appellant Michael J. Topolos, the co-author
We hold that Topolos' claim arises under the Copyright Act within the meaning of 28 U.S.C. § 1338(a). The action is thus within the exclusive jurisdiction of the federal courts and we reverse the judgment dismissing the case.
In 1974, appellant Topolos entered into a publishing contract with appellees Caldewey (then doing business as Vintage Image) and Titus.
Topolos' work, originally published by Vintage Image in 1974, was revised or expanded periodically. It was published under the titles California Wineries Volume One, Napa Valley in 1975, and Napa Valley Wine Tour in 1977 and 1978. Each edition listed Topolos as an author and he continued to receive royalties from sales of the book; but each also listed Vintage Image as copyright holder.
In 1979, Vintage Image published another book on Napa Valley wineries. The book, titled Napa Valley Wine Book, listed appellee Hinkle as both author and copyright holder. In August 1979, Topolos wrote to Vintage Image claiming that both the 1978 revised edition, Napa Valley Wine Tour, and the 1979 book by Hinkle, Napa Valley Wine Book, infringed his copyright in his original book.
In April 1980, Topolos sued in district court seeking damages and injunctive relief for statutory copyright infringement, unfair competition and breach of contract. The district court refused Topolos' request for preliminary injunction and on July 28,
Topolos filed a timely appeal, claiming that he is beneficial owner of the copyright and so has standing to protect it against infringement. He also contends that the federal court had jurisdiction to determine contractual rights between litigants as state law issues pendent to substantive copyright questions.
The federal courts have exclusive jurisdiction over actions that arise under the federal copyright laws. 28 U.S.C. § 1338(a). However, a case does not arise under the federal copyright laws, embodied in Title 17 of the United States Code, merely because the subject matter of the action involves or affects a copyright. "Under this section [28 U.S.C. § 1338(a) ], the word `copyright' is not so compelling as to invoke federal jurisdiction upon its mere mention." Muse v. Mellin, 212 F.Supp. 315, 316 (S.D.N. Y.1962), aff'd, 339 F.2d 888 (2d Cir.1964). For instance, federal courts do not have jurisdiction over a suit on a contract simply because a copyright is the subject matter of the contract. T.B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir.1964), cert. denied, 381 U.S. 915, 85 S.Ct. 1530, 14 L.Ed.2d 435 (1965); Wells v. Universal Pictures Co., 166 F.2d 690, 691 (2d Cir.1948); Stepdesign, Inc. v. Research Media, Inc., 442 F.Supp. 32, 33 (S.D.N.Y.1977); Muse, 212 F.Supp. at 316; 13 C. Wright, A. Miller & E. Cooper, Federal Practice and Procedure § 3582 (1975).
An often-repeated rule of federal copyright jurisdiction was first offered in Harms by Judge Friendly, who wrote that
339 F.2d at 828. But although applying these principles may seem simple, courts have had difficulty in cases where a plaintiff claims not only infringement of rights under the copyright laws but also raises preliminary legal issues of contract under state law.
The district court in this case dismissed Topolos' claim because it found that it did not arise under the copyright laws. The court concluded that the "true thrust" of Topolos' action was resolution of the ownership of the copyright, which required a determination under state law of the rights and obligations arising under the publishing contract.
Generally, courts decide whether a case arises under the copyright laws by focusing on the nature of the principal claim asserted by the plaintiff. As the district court summarized in Royalty Control Corp. v. Sanco, Inc., 175 U.S.P.Q. 641, 642 (N.D.Cal.1972):
Courts have directed inquiry to what they have variously described as the "primary and controlling purpose" of the suit, the "principal issue," the "fundamental controversy," and the "gist" or "essence" of the plaintiff's claim. Wooster v. Crane & Co., 147 F. 515, 516 (8th Cir.1906); Rotardier v. Entertainment Co. Music Group, 518 F.Supp. 919,
However, the district court erred in concluding it lacked jurisdiction over such actions for infringement because it was first required to resolve a threshold question of copyright ownership which in turn called for interpretation of a contract. The district court held that even though Topolos alleged copyright infringement dismissal was compelled by the principles enunciated in Elan for the reason that here, as in Elan, the "principal and threshold" issue to be resolved was ownership of the copyright.
In our opinion the district court erred in applying Elan, for unlike that case and its predecessor Harms, 339 F.2d 823, ownership of the copyright is a threshold question but is not the principal question here.
In an action for infringement plaintiff necessarily must establish ownership of a valid copyright and copying by the defendant. Warner Bros., Inc. v. ABC, Inc., 654 F.2d 204, 207 (2d Cir.1981); Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977). Ownership of the copyright is therefore always a threshold question. Only when such ownership is the sole question for consideration are federal courts without jurisdiction. In Elan, although copyright infringement was alleged, the determination of infringement automatically followed upon decision of the ownership question.
The circumstances of this case more resemble Wooster than Elan. In Wooster, a publisher claimed equitable ownership of the copyright in arithmetic books authored by the defendant, who held legal title. The publisher contended that the author subsequently wrote additional books incorporating materials out of the works covered by the publisher's equitable copyright. The Eighth Circuit held that the publisher had standing to maintain its action for infringement in federal court even though it claimed equitable title to the copyrights pursuant to a contract with the offending author. The Wooster court explained:
147 F. at 516.
The beneficial owner of a copyright must allege infringement, but thereafter, as a preliminary matter, he is entitled to establish the facts supporting his claim of beneficial ownership, even though that may require interpretation of a contract. Wooster, 147 F. at 516; Fell Publishers Inc. v. Lorayne, 422 F.Supp. 808, 810 n. 2 (S.D. N.Y.1976); Muse, 212 F.Supp. at 318; 3 M. Nimmer, Nimmer on Copyrights § 12.01[A], pp. 12-6 to 12-7 (1982).
Topolos has fulfilled those requirements necessary for federal jurisdiction. He alleged
Thus, the district court erred in dismissing Topolos' action for lack of subject matter jurisdiction. Accordingly, the judgment of dismissal is reversed and the case remanded for further proceedings.