MERRITT, Circuit Judge.
This case arises from a dispute between a singer-songwriter known as "Kid Rock" (Robert Ritchie) and a promoter, Alvin Williams, and his group of associates, who entered into a series of music contracts in 1989 before Kid Rock became successful. The primary questions before us are (1) whether the District Court erred in holding that a Michigan state court action, arising from the contracts, by the Williams group against Kid Rock is preempted by the Copyright Act under the developing doctrine of "complete preemption" and hence removable to the federal court as presenting federal copyright issues rather than state claims, and (2) whether the District Court erred in foreclosing the state claims under the three-year statute of limitations found in the Copyright Act. In Section II below, we will incorporate the facts in more detail in our review of the state law claims brought in state court by the Williams group. In the first section, we will discuss the doctrine of federal jurisdiction that allows the recharacterization and removal of such claims.
I. The District Court Correctly Applied the Doctrine of Complete Preemption to Allow Removal
Section 301 of the Copyright Act broadly preempts state law claims, and federal law vests exclusive jurisdiction over such preempted copyright claims in the federal courts. Section 301 of the Copyright Act states that "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106 in works of authorship that ... come within the subject matter of copyright ... are governed exclusively by this title.... [N]o person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State." 17 U.S.C. § 301(a) (emphasis added).
Under Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 64-65, 107 S.Ct. 1542, 95 L.Ed.2d 55 (1987), the "complete preemption" doctrine serves to "recharacterize a state law claim ... as an action arising under federal law" and "converts an ordinary state common law complaint into one stating a federal claim for purposes of the well-pleaded complaint rule." Or as is stated in Moran v. Rush Prudential HMO, Inc., 230 F.3d 959, 967 (7th Cir.2000), the complete preemption doctrine "permits recharacterization of a plaintiff's claim as a federal claim so that removal is proper" even though the complaint may not mention a federal basis of jurisdiction. The doctrine of complete preemption applies, for example, in the labor management collective bargaining field and to ERISA plans. In dissent, Justice Scalia criticizes the doctrine as the "federalize-and-remove dance" in Beneficial National Bank v. Anderson, 539 U.S. 1, 8, 123 S.Ct. 2058, 156 L.Ed.2d 1 (2003); but, for a 7-2 majority, Justice Stevens follows the doctrine as enunciated in earlier cases. He holds that a state law usury claim against a national bank is "completely preempted" and removable when Congress vests exclusive jurisdiction in the federal courts after broadly preempting usury claims under the National Bank Act. The rationale is that in such situations the federal statutory laws "supersede both the substantive and remedial provision of state" law creating a strong form of federal preemption — presumably because of the additional need for a strong form of national uniformity implied by Congress when it made federal court jurisdiction exclusive after broadly preempting state law.
Since this case involves removal of claims stated only in state law terms, we must determine whether or not the doctrine of complete preemption applies to the Copyright Act. Although this Circuit and most other Circuits have not addressed the question directly, the Second and the Fourth Circuits have held that the doctrine of complete preemption applies in copyright cases. Most recently, the Second Circuit analyzed the Act in light of the Anderson case above and found that the doctrine of complete preemption clearly applies. Briarpatch, Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir.2004). In Rosciszewski v. Arete Assoc., Inc., 1 F.3d 225 (4th Cir.1993), the Fourth Circuit explained:
We agree with the Second and Fourth Circuits. Congress has indicated that "national uniformity" in the strong sense of "complete preemption" is necessary in this field. The bulk of the Williams group's state law claims must be recharacterized as copyright infringement and copyright ownership claims.
II. The District Court Correctly Concluded that All of the Williams Group's State Law Claims Are Time Barred
A. The Preempted Claims
Williams claims that he entered into a partnership agreement with Kid Rock in February 1989 to form "Top Dog" Records to promote Kid Rock's career and for the two to share equally in the ownership of partnership property, income and expense. A few days later, Williams claims that Kid Rock transferred his interest in the partnership to a Michigan "production" company which then entered into an exclusive agreement with Kid Rock that precluded him from writing or performing songs for anyone else for one year (with two one-year options). Williams also alleges that three months later the Michigan production company and Kid Rock entered into contracts concerning Kid Rock's songs with a record company ("Zomba") and a music publisher ("Bow-Wow").
The parties agree, as Judge Edmunds found below, that these various 1989 alleged agreements were designed to control the ownership, performance rights and exploitation of copyrights on songs written by Kid Rock, including the performance, recording and distribution of those songs. The Williams group alleges that Kid Rock performed these songs and transferred to other parties the right to publish, record and distribute them, thereby breaching his contracts with Williams, the Michigan production company, the recording company and the publishing company.
Judge Edmunds held that these contract and tort claims basically assert that Kid Rock infringed the publication, performance and distribution rights of those claiming under the 1989 contracts and that the claims must, therefore, be recharacterized as copyright claims and governed by federal copyright law. The claims are that Kid Rock licensed the songs he had written to others in violation of the copyrights and the performance and distribution rights of the Williams group. All of these claims are "equivalent" to infringement claims. There is no meaningful "extra element," as some of the cases have put it,
The problem with the Williams group's claims under federal law is that on December 17, 1990, Kid Rock wrote a letter, forwarded to the defendants, flatly stating that he did not intend to work with the parties to the 1989 contracts with respect to the publishing, production or performance of his songs, "or any other area of [his] entertainment career." He made it clear that he regarded the songs he had written as his songs. Thereafter, he openly claimed exclusive ownership of the "Top Dog" label and the rights to his songs.
Most of the defendants' non-contract claims, found in Counts 2 through 8 of their complaint, seek relief arising from the same set of transactions but under alternative theories — unjust enrichment, misrepresentation, conversion, and injunctive relief against further misappropriation of income derived from the songs. The defendants, again as the District Court held, may not escape the statute of limitations for copyright infringement merely by suing in tort and restitution. The District Court did not err in recharacterizing these claims as copyright claims. The policy of national uniformity inherent in copyright preemption is no less applicable to infringement claims that are described as sounding in tort or restitution rather than contract. The injunctive relief sought is for income derived from various performance, production, and distribution rights related to Kid Rock songs. The plaintiffs have simply waited too long to bring their action.
B. The Non-Preempted Claims
Two of the Williams group's state law claims may not be "equivalent to" copyright claims. They did not involve either ownership or copyrightable material;
First, Williams claims that Kid Rock violated his fiduciary duty to the original Top Dog Records Partnership when he incorporated his own company, also titled "Top Dog Records," in 1993 to compete with the original partnership. This claim does not implicate either of the elements of a copyright claim — ownership or infringement — and therefore should not be preempted by § 301. While these allegations might once have provided an actionable state law claim concerning the Top Dog name, the longest period provided under Michigan law for bringing a breach of fiduciary duty claim is six years. See M.C.L.A. § 600.5807(8). Considering Kid Rock's letter in December 1990 repudiating all aspects of his business relationship with the Williams parties, including the partnership, any suit regarding the breach of the partnership agreement was time-barred, at the latest, in December 1996. Alternatively, Kid Rock's public act of incorporating under the name "Top
Second, Williams claims that Kid Rock breached the so-called "Supplemental Agreement" of March 1989, an agreement in the nature of an employment contract, with Kid Rock working as an independent contractor to recruit additional talent for Top Dog Records. He was to be paid a commission of 50% of all profits earned from exploitation of the other artists' work. Similarly, this contract does not involve either the ownership or copying of any songs or recordings and is therefore not preempted by § 301. Like the partnership fiduciary action discussed above, this claim is also time-barred under Michigan law. See M.C.L.A. 600.5807(8). Just as with the breach of fiduciary duty claim, the Williams parties received notice of Kid Rock's express repudiation of all aspects of their relationship in December 1990. Any contract or tort claims regarding any aspect of that relationship had to be brought within the appropriate statutory period, which began to run in December 1990.
III. The District Court Accurately Held That the Williams Parties Abandoned Any Interest in the "Top Dog" Trademark
The District Court accurately concluded that the Williams parties abandoned their interest in the Top Dog trademark. The only entity that may have continued to use the Top Dog trademark after Kid Rock's repudiation (other than Kid Rock) was Zomba Records. Zomba is not a party to this suit and makes no claim against Kid Rock. As for the Williams group's argument that the related company doctrine applies to rescue their interest in the trademark, there is substantial authority, including the language of 15 U.S.C. § 1055, for the proposition that a claimant must exert control over the licensee in order for the doctrine to apply. See 15 U.S.C. § 1055; Westco Group, Inc. v. K.B. & Assocs., Inc., 128 F.Supp.2d 1082, 1088 (N.D.Ohio 2001) ("[A] licensor who engages in naked licensing abandons the trademark or trade name.... `Thus, not only does the trademark owner have the right to control quality, when it licenses, it has the duty to control quality.'"); see also Edward K. Esping, Annotation, Granting of "Naked" or Unsupervised License to Third Party As Abandonment of Trademark, 118 A.L.R. Fed. 211(2004) ("[M]ost courts take the position that the existence of a legal right of the licensor to control the quality of its licensee's activities is neither necessary nor sufficient, since it is the control in fact of the quality of the licensee's good or services which is dispositive ..."). There is no evidence of such control by any of the Williams parties over the license or over Zomba, the alleged licensee, between 1990 and 2000. So we agree with the court below that Williams has abandoned the mark.
IV. The Williams Parties' Post-Judgment Motions Were Properly Denied by the District Court
After summary judgment was entered in favor of Kid Rock, the Williams group made a motion for reconsideration and a motion to vacate the judgment based on lack of subject matter jurisdiction and newly discovered evidence. Given the bases for our holding here, it is clear that the district court's denial of these motions should not be disturbed. The District Court reached the correct result because the doctrine of complete preemption applies
For the reasons discussed above, the District Court's opinion in favor of Kid Rock is hereby AFFIRMED.
The "extra element" test has received much criticism. One commentator said that it "simply states a conclusion. When is a right provided by state law qualitatively different, and how different in nature must it be to escape preemption? In all but the simplest cases, the extra elements test cannot be applied with any certainty." Marshall A. Leaffer, Understanding Copyright Law § 11.7[C] (3d ed.1999). Another described it this way:
Schuyler Moore, Straightening Out Copyright Preemption, 9 UCLA Ent. L.Rev. 201, 204 (2002).