MEMORANDUM OPINION AND ORDER
ATLAS, District Judge.
Plaintiffs John and Leslie Tavormina ("Plaintiffs") have brought this action against Defendants Evening Star Productions, Inc., Rysher Entertainment, and Charles Chambers ("Defendants") alleging fraud, breach of contract, quantum meruit, and unjust enrichment in connection with the making of the film "The Evening Star." Currently pending before the Court are Defendants Evening Star Productions' and Rysher Entertainment's Motion to Dismiss or Transfer [Doc. # 4]
In 1995, Defendants entered negotiations with Plaintiffs to use Plaintiffs' home in Houston, Texas, as the setting for the film "The Evening Star," the sequel to the award-winning film "Terms of Endearment." Because Plaintiffs' home had been used as the setting for "Terms of Endearment," Defendants wanted to use that location as the setting for "The Evening Star" as well, in order to maintain continuity between the two films. See Plaintiffs' Original Petition ("Complaint"), Exhibit A to Notice of Removal [Doc. # 1], at 2.
Plaintiffs claim that Defendant Chambers, the Location Manager for the film's production, represented to them that they would be compensated by Defendants for the use of their home. This use was to include filming of the exterior of the house and access to the interior of the house for the purpose of taking photographs and measurements so that Defendants could construct a replica of the house's interior for filming interior scenes in Los Angeles. Plaintiffs claim that, in reliance on Chambers' alleged representations, Plaintiffs allowed Defendants access to their house. See Complaint, at 3.
According to Plaintiffs, Defendant Chambers repeatedly assured them that the parties would sign a written contract setting out the terms of their agreement. However, no such contract was ever signed. See id.
Defendants eventually did not use Plaintiffs' home as the setting for the film. Instead, Defendants used their photographs and measurements to build a replica of both the interior and exterior of Plaintiffs' home in another location and then used this replica for filming. See id. at 4. Defendants claim that they decided not to film Plaintiffs' home because some of Plaintiffs' neighbors objected to their filming in the neighborhood. See
Plaintiffs filed this action in state court, claiming that Defendants are liable to them for fraud, breach of contract, quantum meruit, and unjust enrichment. Defendants then removed the case to federal court on the ground that Plaintiffs' claims for breach of contract, quantum meruit, and unjust enrichment are preempted by federal copyright law and that this action is therefore removable under 28 U.S.C. § 1441(b). In their Motion to Remand, Plaintiffs deny that their claims are preempted by federal copyright law and urge this Court to remand the case to state court.
In their Motion to Dismiss, Defendants reiterate their argument that Plaintiffs' claims for breach of contract, unjust enrichment, and quantum meruit are preempted by federal copyright law and contend that these claims should therefore be dismissed, pursuant to Fed.R.Civ.P. 12(b)(6). In response to this argument, Plaintiffs urge that, even if their state claims are preempted, the proper result is that the case be removed to federal court, not that their claims be dismissed.
In their Motion to Dismiss, Defendants also argue that Plaintiffs' fraud claim should be dismissed because Plaintiffs' Complaint did not plead fraud with the particularity required by Fed.R.Civ.P. 9(b).
MOTION TO REMAND
Removal is proper if the federal district court has original jurisdiction over an action brought in state court. See 28 U.S.C. § 1441(a). In order to determine whether a case was properly removed to federal court on the basis of federal question jurisdiction, the Court must normally examine Plaintiff's claims under the well-pleaded complaint rule. See Rivet v. Regions Bank of Louisiana, ___ U.S. ___, ___, 118 S.Ct. 921, 924, 139 L.Ed.2d 912 (1998); Louisville & Nashville Ry. Co. v. Mottley, 211 U.S. 149, 29 S.Ct. 42, 53 L.Ed. 126 (1908). Under the well-pleaded complaint rule, "federal jurisdiction exists only when a federal question is presented on the face of the plaintiff's properly pleaded complaint." Rivet, at 924 (quoting Caterpillar, Inc. v. Williams, 482 U.S. 386, 392, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987)). See also Leffall v. Dallas Independent School Dist., 28 F.3d 521, 525 (5th Cir.1994). Even if the factual predicate underlying a plaintiff's complaint could have served as the basis for a federal claim, the plaintiff has the prerogative to forgo the federal claim and assert only state law claims in order to prevent removal. "The [well-pleaded complaint] rule makes the plaintiff the master of the claim; he or she may avoid federal jurisdiction by exclusive reliance on state law." Caterpillar, 482 U.S. at 392, 107 S.Ct. 2425.
In some cases, however, a federal statute may completely preempt a plaintiffs state law claim and thus render an action removable despite the plaintiffs efforts to keep the action in state court. The "complete preemption" doctrine is thus an exception to the well-pleaded complaint rule. Under the complete preemption doctrine, Congress may so completely preempt a particular field that any complaint raising claims in that field is necessarily federal in nature. See Rivet, at 924 ("[o]nce an area of state law has been completely pre-empted, any claim purportedly based on that pre-empted state-law claim is considered, from its inception, a federal claim, and therefore arises under federal law") (quoting Caterpillar, 482 U.S. at 393, 107 S.Ct. 2425); Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 63, 107 S.Ct. 1542, 95 L.Ed.2d 55 (1987).
It is well established that federal courts have exclusive original jurisdiction over claims of copyright infringement, see 28 U.S.C. § 1338(a), and that the Federal Copyright Statute, 17 U.S.C. § 101, et seq., (the "Copyright Act") completely preempts practically all state law causes of action falling within its scope. See Daboub v. Gibbons, 42 F.3d 285, 288 (5th Cir.1995); Gemcraft Homes, Inc. v. Sumurdy, 688 F.Supp. 289 (E.D.Tex.1988) (federal exclusivity of a copyright claim is so strong that an unstated copyright claim preempts explicitly worded state law claim). Thus, if any of Plaintiffs' claims fall within the scope of the Copyright Act, then those claims would be preempted,
If the Court determines that any of Plaintiffs' state law claims are preempted and thus that removal was proper, the Court may permit Plaintiffs to amend their Complaint to state a claim expressly under the Copyright Act. See Fed.R.Civ.P. 15(a) (leave to amend pleadings "shall be freely given when justice so requires"); Wimm v. Jack Eckerd Corp., 3 F.3d 137, 139 (5th Cir.1993) (the decision to grant leave to amend "lies within the sound discretion of the district court").
On the other hand, if the Court determines that none of Plaintiffs' state law claims are preempted, then there would be no federal question at issue and the Court could remand the case to state court.
In the case at bar, the parties disagree about whether Plaintiffs' state law causes of action fall within the scope of the federal Copyright Act and thus are preempted.
Federal Copyright Act Preemption
In deciding whether a state law cause of action is preempted by the Copyright Act, courts follow a two-step test. "First, the cause of action is examined to determine if it falls `within the subject matter of copyright.' Second, the cause of action is examined to determine if it protects rights that are `equivalent' to any of the exclusive rights of federal copyright, as provided in 17 U.S.C. § 106." Daboub, 42 F.3d at 289 (interpreting § 301(a), the preemption provision of the Copyright Act).
Sections 102 and 103 of the Copyright Act determine the first step of this test: whether a cause of action is "within the subject matter of copyright." See § 301(a); Daboub, 42 F.3d at 288-89 n. 4; Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir.1985). In the case at bar, the parties do not appear to dispute that Plaintiffs' claims regarding Defendants' use of their house is "within the subject matter of copyright" under § 102(a)(8). This section provides that "[c]opyright protection subsists" in "works of authorship" which includes the category of "architectural works." § 102(a)(8).
The parties' main dispute in this case relate to the second step of the preemption test: whether Plaintiffs' state law causes of action are "`equivalent' to any of the exclusive rights of federal copyright, as provided in 17 U.S.C. § 106." Daboub, 42 F.3d at 289. The exclusive rights provided by § 106 include the right by a holder of a copyright "to reproduce, distribute, perform, and display the copyrighted work." Id. A state law cause of action is "equivalent" to any of these
Defendants argue that Plaintiffs' claims for breach of contract, quantum meruit, and unjust enrichment are equivalent to the exclusive rights of federal copyright, and thus are preempted by the Copyright Act, because each of these claims is based upon the same core theory that Defendants wrongfully copied Plaintiffs' house and used that copy in their film without compensating Plaintiffs.
The Court agrees with Defendants that Plaintiffs' claim for unjust enrichment is preempted because it involves the same conduct that would fall under the scope of the Copyright Act. In this claim, Plaintiffs allege that Defendants should not benefit from reproducing and displaying their house in the film without compensating Plaintiffs or obtaining Plaintiffs' permission. This claim thus invokes the same rights that Plaintiffs would invoke under a cause of action for copyright infringement. See Daboub, 42 F.3d at 289 (musical group's state law claims against another musical group for conversion, misappropriation, plagiarism, violation of a state antitrust statute, disparagement, and defamation in connection with defendant's copying plaintiff's song were preempted because they attempted to invoke same rights as would a copyright infringement claim); Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973, 977 (9th Cir.1987) (state law claim for unjust enrichment was preempted because "promise not to use or copy materials within the subject matter of copyright is equivalent to the protection provided by section 106 of the Copyright Act"); Cassway v. Chelsea Historic Properties I, L.P., 1993 WL 64633 (E.D.Pa. Mar. 4, 1993) (state law claim for unjust enrichment was preempted because copying drawings was underlying element for both the copyright cause of action and unjust enrichment); Kunycia v. Melville Realty Co., 755 F.Supp. 566, 576-77 (S.D.N.Y.1990) (same).
However, Plaintiffs' claim for breach of contract is only partially preempted, and Plaintiffs' quantum meruit claim is not preempted at all because these claims are based upon conduct other than that which would be covered under the Copyright Act.
Plaintiffs' breach of contract claim is based upon allegations both that Defendants displayed a copy of their house in the film without compensating Plaintiffs and also upon such allegations as that Defendants failed to compensate Plaintiffs, as promised, for their time and inconvenience in allowing Defendants' employees access inside their house in order to take measurements and photographs and that Defendants broke their promise to sign a written contract setting forth the terms of their arrangement. The Court concludes that Plaintiffs' breach of contract claim is preempted only to the extent that it is based upon the same types of allegations that would support a claim of copyright infringement. That is to say that the claim is preempted insofar as Plaintiffs allege that Defendants breached their contract by not compensating Plaintiffs for displaying a copy of their house in the film. However, since Plaintiffs' breach of contract claim also includes broader allegations, beyond Defendants' mere copying and display of Plaintiffs' house, this claim is not fully preempted. See Taquino, 893 F.2d at 1501 (breach of contract claim was not preempted by federal copyright law because it "involve[d] an element in addition to mere reproduction, distribution or display").
Conclusion as to Remand
For the reasons discussed in the previous sections, the Court concludes that its decision regarding remand hinges on Plaintiffs' decision of whether or not to amend their complaint to state an express federal claim for copyright infringement. At the pretrial conference held on February 27, 1998, Plaintiffs' counsel expressly stated that Plaintiffs do not want to amend their complaint to state a copyright infringement claim.
MOTION TO DISMISS
In their Motion to Dismiss, Defendants argue that Plaintiffs' claims for breach of contract, unjust enrichment, and quantum meruit should be dismissed because they are preempted by federal copyright law and because Plaintiffs have not asserted an express claim under federal copyright law. In response, Plaintiffs argue that, even if these claims are preempted by federal copyright law, the proper remedy is not dismissal but instead for the case to proceed in federal court.
For the reasons described in the previous section, the Court concludes that Plaintiffs' claim for unjust enrichment is preempted entirely by the federal Copyright Act and Plaintiffs' breach of contract claim is preempted insofar as Plaintiffs allege that Defendants breached a contract by not compensating Plaintiffs for displaying a copy of their house in Defendants' film. The Court therefore dismisses Plaintiffs' unjust enrichment claim in full and their breach of contract claim in part. See Daboub, 42 F.3d at 288-90 (affirming dismissal of preempted state law claims). The Court does not dismiss Plaintiffs' quantum meruit claim because it is not preempted by federal copyright law.
The Court rejects Plaintiffs' contention that dismissal of these claims is not warranted simply because the case is now in federal court. Plaintiffs are correct that the bases for these preempted claims, along with the non-preempted claims, could remain in federal court, but only if Plaintiffs had chosen to amend their complaint to substitute a claim of copyright infringement for the preempted state law claims.
MOTION TO TRANSFER
Because the Court is remanding the case to state court on the ground that there is now no federal question subject matter jurisdiction, the Court need not reach Defendants' Motion to Transfer. This Motion is therefore denied as moot.
For the foregoing reasons, it is