The Ever-expanding Complete Preemption Doctrine and the Copyright Act: Is This What Congress Really Wanted?

• Jurisdiction: United States,Federal
• Citation: Vol. 7 No. 2005
• Publication year: 2005

Elizabeth Helmer⁰

This comment explores the ways in which the doctrines of preemption, and more recently, complete preemption are being applied to the Copyright Act. In deciding whether claims are preempted by the Copyright Act, courts apply the "Extra Element Test." However, courts are increasingly applying this test by looking at the facts underlying the claim, rather than the elements needed to prove the claim, and preempting more readily. Once satisfied that the claim is preempted, some courts are allowing complete preemption to take hold, and removing the claim to federal court. Courts have traditionally tried to determine whether Congress intended to allow removal, since Congressional intent is the touchstone of removal jurisdiction. However, in light of the Supreme Court's decision in Beneficial National Bank v. Anderson, some courts have departed with the Congressional intent requirement, holding that by wholly displacing an area of law, Congress intended to create complete preemption. This lax application of the complete preemption doctrine has led to unexplainable results, undermines Congressional intent to preserve various state law claims, and threatens to erode long standing jurisdictional principles.

I. Introduction

Under the long established "well pleaded complaint" rule, a cause of action arises under federal law only when the face of the complaint raises a federal issue.¹ A complaint presents a federal question by invoking federal law as the basis for relief.² It does not suffice that the facts alleged in support of an asserted state-law claim would also support a federal claim.³ Thus the plaintiff, as "master of the complaint,"⁴ can craft a cause of action as arising under state rather than federal law and "a defendant cannot remove on the basis of a federal question even if the plaintiff could have asserted a federal claim."⁵ As this pertains to cases falling within the scope of the Copyright Act, the "well pleaded complaint" doctrine suggests that by bringing a cause of action under state law, rather than the Copyright Act,⁶ the plaintiff can effectively avoid federal question jurisdiction.⁷

Although the well pleaded complaint requirement continues to apply in most cases, in limited circumstances it has been supplanted by the doctrine of "complete preemption." Complete preemption is distinct from the doctrine of ordinary preemption and has significant differences in terms of removal jurisdiction. Ordinarily, preemption is raised as a defense and does not serve as a basis for removal because the plaintiff's claims do not raise any federal issue and do not satisfy the "well pleaded complaint" rule. Rather, if the court finds that the plaintiff's state law claim is preempted by federal law, the claim is simply dismissed.⁸ A claim may be preempted expressly or impliedly. Express preemption occurs when Congress authorizes preemption within the statute itself.⁹ Implied preemption applies in situations where Congress has expressed intent to entirely occupy a field of legislation.

Preemption has long-been held to apply to claims falling within the scope and general subject matter of the Copyright Act.¹⁰ In other words, when a claim is brought in state court that involves an original work of authorship fixed in a tangible medium of expression, and the right asserted is equivalent to one of the rights protected by federal copyright law, the claim is preempted and consequently dismissed.¹¹

"Complete preemption," on the other hand, is a term used to define those situations in which preemption does provide a basis for removal. The complete preemption doctrine, which has been invoked in an ever-increasing number of cases and contexts, holds that narrow classes of claims are so "necessarily federal" that they will always permit removal to federal court, even if a federal issue is not raised on the face of the complaint.¹² Thus, if a plaintiff files suit in state court based upon a state cause of action, and the defendant removes the case on the basis of a valid complete preemption defense, the federal district court will re-characterize the plaintiff's claim as arising under federal law, making removal proper on the basis of federal question jurisdiction.¹³ in this way, the complete preemption doctrine overrides longstanding values of federalism as well as important limiting doctrines of federal subject matter jurisdiction, such as the "well pleaded complaint" rule and the principle that the plaintiff is master of the complaint.¹⁴

Since the emergence of the complete preemption doctrine, the Supreme Court has held that complete preemption applies in three types of cases: those that fall under the scope of the Labor and Management Relations Act ("LMRA"),¹⁵ the Employee Retirement income Security Act ("ERiSA"),¹⁶ and most recently, the National Bank Act ("NBA").¹⁷ The Supreme Court has not, however, addressed complete preemption under the Copyright Act. As a result, lower courts have been forced to grapple with the doctrine, fashioning various tests in an attempt to identify when, if ever, it would apply to the Act.¹⁸

This Comment will argue that in light of evolving legal methodologies, the once narrow doctrine of complete preemption is being applied more liberally, and in effect, denying plaintiffs the long-held freedom to act as the master of the complaint in deciding whether to bring a cause of action under state or federal law. Part i explores the differences in the doctrines of ordinary and complete preemption. Since the Supreme Court has not expressly ruled on complete preemption under the Copyright Act, lower courts have struggled with a number of tests that often hinged on whether Congress intended not only to preempt claims under the Act, but more specifically, allow for complete preemption and removal.¹⁹

Part ii outlines the test lower courts have applied to determine whether a claim is preempted and expresses dissatisfaction with their application of the "extra element" test.²⁰ Rather than comparing the elements needed to prove a state law claim with the elements needed to prove a Copyright claim, courts are scrutinizing claims to determine whether the facts giving rise to a state claim could theoretically give rise to a Copyright claim and then allowing preemption to take hold.

Part III argues that the Supreme Court's ruling in Beneficial National Bank v. Anderson²¹ virtually eliminates the need to delve into Congressional intent before applying complete preemption, suggesting that by wholly displacing an area of law, Congress intended to allow removal. This more lenient standard essentially blurs the justifications that once separated ordinary and complete preemption doctrines. Complete preemption historically required a more explicit finding of Congressional intent because it represents a more drastic deviation from well-settled jurisdictional principles and should therefore be applied sparingly.²²

Part IV attempts to distinguish the Copyright Act from other statutes which the Supreme Court has held warrant complete preemption. Because the Copyright Act was drafted after the emergence of the doctrine of complete preemption, courts should continue to defer to Congressional intent, and find that Congress did not intend to allow for removal of claims under the Copyright Act.

Part v argues that the increasingly lax application of the complete preemption doctrine leads to unexplainable results, undermines Congressional intent to preserve various state law claims, and threatens to erode long-standing jurisdictional doctrines such as the "well pleaded complaint rule."

This Comment concludes by summarizing the developments that have led to the expansion of the complete preemption doctrine and emphasizes the need to use a more rigorous standard that will ensure that our jurisdictional values are not ultimately eclipsed by it.

II. Ordinary Preemption under the Copyright Act

Although ordinary preemption does not confer subject matter jurisdiction on a federal court, finding that ordinary preemption applies is a necessary predicate to the doctrine of complete preemption. In essence, complete preemption requires a more explicit finding of Congressional intent to control an area of the law than ordinary preemption. Therefore, lower courts must find that ordinary preemption applies before considering whether "Congress desired to control the adjudication of the federal cause of action to such an extent" that it not only provided preemption as a defense, but "replaced the state law with federal law and made it clear that the defendant has the ability to seek adjudication of the federal claim in a federal forum."²³

Ordinary preemption applies to claims that fall under the Copyright Act. However, determining whether a claim actually falls under the Copyright Act is a task that has caused confusion among lower courts. Most courts apply a two part test: (1) the work must fall under the subject matter of copyright as an original work of authorship fixed in a tangible medium of expression (subject matter prong); and (2) the right asserted must be equivalent to one of the rights protected by federal copyright law (general scope prong).²⁴ Consequently, in a situation where the rights asserted under state or common law are not equivalent to a right protected under federal copyright law, ordinary preemption will not take hold.

A. Subject Matter Prong

The "subject matter" prong requires that the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103. Copyright protection subsists, in accordance with § 102:

in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical...