COVER ARTICLE

Ritchie v. Williams and the complete preemption doctrine in copyright:
The new federal/state debate
By Amy J. Everhart

The law has long been settled that claims arising under the Copyright Act of 1976[1] are within the exclusive domain of the federal courts. Any claims brought in state court over works within the subject matter of copyright and that seek to enforce rights equivalent to any of the rights under the Copyright Act are “preempted.” Claims brought in state court over works within the subject matter of copyright but that do not seek to enforce rights equivalent to any of the rights under the Copyright Act, however, are not preempted. The consequence of a finding of preemption is the subject of a long-running debate that triggers important federalism issues. Should such preempted claims be dismissed, or should the federal courts decide them? And for that matter, determining which claims are preempted in the first place is not as easy as it sounds — should courts do so by examining the elements of the plaintiff’s claims or look beyond the claims to the facts underlying them?

The Sixth Circuit Court of Appeals recently entered this debate in Ritchie v. Williams.[2] In Ritchie, the Sixth Circuit applied the “complete preemption” doctrine to matters within the general scope of copyright, meaning that (1) courts must look beyond the four corners of the complaint to determine whether a claim is preempted by the Copyright Act, and (2) if it is, the claim is removable to federal court. At least one commentator has criticized the decision for expanding the scope of preemption beyond that intended by Congress, disrupting the balance of power between the federal and state courts and encroaching on plaintiffs’ rights. Further, Ritchie blurs the distinction between ordinary preemption and complete preemption, further muddying the already murky waters of preemption in the copyright context. What do Ritchie and its progeny mean to courts, practitioners and parties in Tennessee?

Ordinary preemption
Before considering Ritchie, the doctrines of preemption and complete preemption in the context of the Copyright Act are important to understand. “Preemption” is a general doctrine holding that certain matters are of such a national, as opposed to local, character that federal laws preempt state laws.[3] Preemption, ordinarily, is a defense to a state-law claim.[4]

Congress expressed directly in the Copyright Act that certain matters within the scope of copyright are to be preempted by the Act, providing at Section 301(a):

[A]ll legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by section 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any work under the common law or statutes of any state.[5]

So, for a claim to be preempted by the Copyright Act, (1) the work at issue must be within the subject matter of copyright[6] and (2) the rights sought to be enforced must be equivalent to the exclusive rights under the Copyright Act: the rights to reproduce, distribute, display, perform, and make derivative works.[7]

The Copyright Act also provides what it does not preempt, clarifying that “nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to … activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.” [8] In so providing, Congress expressed its intent that certain state claims shall be preserved for the state courts.

Although the preemption test may sound easy enough in principle, in practice the test has spawned multiple shades of grey. For example, a claim for breach of a license of a copyrighted work is typically not preempted by the Copyright Act. A classic example is a claim for failure to pay royalties. Courts generally hold that the promise to pay money for use of a protected work is an extra element not within the exclusive rights of the Copyright Act. In some instances, however, a breach claim may actually be a copyright infringement claim in disguise, such as when a plaintiff asserts that a defendant has breached a unilateral promise not to exploit a copyrighted work. Such claims are typically preempted.[9]

Most courts apply the “extra element” test to determine whether a claim is preempted by the Copyright Act. The essence of the test is that “if an extra element is required instead of or in addition to the acts of reproduction, performance, distribution or display in order to constitute a state-created cause of action, there is no preemption, provided that the extra element changes the nature of the action so that it is qualitatively different from a copyright infringement claim.”[10] While the “extra element” test has been criticized for its difficulty in application,[11] that test remains good law in the Sixth Circuit.[12]

Some courts, in applying the “extra element” test, have found that an element that appears to be “extra” on its face may be “illusory” and, in that case, is insufficient to avoid a preemption finding.[13] Other courts, including the Sixth Circuit in Ritchie, have been criticized for examining the facts underlying the claim, considering what claims could have been brought based on those facts rather than examining the elements of the claims the plaintiff alleged.[14]

Given the ordinary meaning of the words “complete” and “preemption,” one would think the phrase “complete preemption” is the total preemption of all claims having anything to do with the subject matter of copyright. This is a fundamental and dangerous misunderstanding of the doctrine that could lead to the wrongful expansion of the ordinary preemption test. Ritchie does nothing to lessen this confusion.

The word “complete” refers not to what is preempted but to the extent of preemption. Once a claim is found to be preempted, then, only if the claim is brought under a statute that so occupies a regulatory field with respect to a particular subject and creates a superseding cause of action, is the claim removable to federal court and converted to a federal claim rather than dismissed.[15]

Complete preemption is a doctrine that has its roots not in copyright law but in the removal of claims from state to federal court. A state-court defendant may remove an action brought in state court to federal court if the action arises under federal law.[16] While a defendant’s power to remove is discretionary, what happens when, such as in the copyright context, a claim is exclusively within the province of the federal courts and cannot proceed in the state court? Should it simply be dismissed, or should it be converted to a federal claim and removed? The complete preemption doctrine answers this question.

Ordinarily, under the “well-pleaded complaint” rule, courts look only to the plaintiff’s complaint to determine whether a claim arises under federal law.[17] If the complaint relies only on state law, the district court generally lacks subject-matter jurisdiction and the action is not removable.[18] “The well-pleaded com-plaint rule generally provides that the plaintiff is the master of his complaint, and the fact that the wrong asserted could be addressed under either state or federal law does not ordinarily diminish the plaintiff’s right to choose a state law cause of action.”[19]

The complete preemption doctrine is an exception to the well-pleaded complaint rule. If Congress intends that a federal statute should completely preempt an area of state law, any complaint alleging claims under that area of state law is presumed to allege a claim arising under federal law.[20] “The complaint may thus be removed to federal court and will be treated as alleging a federal cause of action, notwithstanding that on its face, the plaintiff’s complaint alleges only a state-law cause of action.”[21]

Thus, a state action should not be converted to a federal claim simply because federal law is determined to preempt state law in a particular context.[22] “Rather, it is only when the federal statutory language demonstrates that Congress has manifested a clear intent that claims not only be preempted under the federal law, but also that they be removable, that they are deemed to be ‘completely preempted.’”[23]

“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.”[24] The Sixth Circuit in a case decided after Ritchie called the complete preemption doctrine “a sort of ‘super’ preemption which preempts not only state law, but also creates federal removal jurisdiction.”[25]

Complete preemption and copyright
The U.S. Supreme Court has never applied the complete preemption doctrine to the Copyright Act. The Supreme Court, in fact, has been reluctant to apply the doctrine at all, doing so only to a handful of federal statutes.[26] Justice Scalia in a recent opinion went even further, criticizing the first Supreme Court decision to apply the doctrine as “an unprecedented act of jurisdictional alchemy” lacking any justification.[27]

Despite Justice Scalia’s admonishment, three federal circuit courts have applied the complete preemption doctrine to the Copyright Act. The Fourth Circuit Court of Appeals was the first to do so in Rosciszewski v. Arete Associates, Inc.[28] There, the court first found that a state-law claim of unauthorized copying of a computer program under the Virginia Computer Crimes Act[29] was preempted.[30] The court then determined that removal had been proper, applying the complete preemption doctrine.[31]

In applying the doctrine, the court attempted to determine whether Congress intended for federal courts to decide all claims preempted by the Copyright Act, analyzing (1) the preemption test itself, or, as the court described it, Congress’s “broad mandatory preemption provision for causes of action equivalent to copyright claims …”; which the court interpreted as Congress’s dictating that claims meeting the test “should be litigated only as federal copyright claims”;[32] and (2) Congress’s affording exclusive rather than concurrent jurisdiction to the federal district courts over copyright matters.[33]

The Second Circuit Court of Appeals followed suit in Briarpatch Limited LP v. Phoenix Pictures Inc.[34] Briarpatch involved a dispute over the copyrights to the motion picture The Thin Red Line. The court held that the plaintiff’s claims for unjust enrichment and a declaration that the defendant has no rights in the work were preempted.[35] The court then extended the complete preemption doctrine to copyright claims, basing its decision on the recent Supreme Court case of Beneficial Nat’l Bank v. Anderson.[36]

The court in Briarpatch held that, prior to Anderson, the court would have hesitated to extend the doctrine into the copyright field because the court previously understood the Supreme Court to have restricted the doctrine to “the very narrow range of cases where Congress has clearly manifested an intent to make specific action within a particular area removable.” [37] But, the court continued, the Supreme Court in Anderson changed the inquiry to whether Congress intended to provide an exclusive federal cause of action, not whether Congress intended to make the cause of action removable.[38] The court concluded, given Anderson, that the Supreme Court “means to extend the complete preemption doctrine to any federal statute that both preempts state law and substitutes a federal remedy for that law, thereby creating an exclusive federal cause of action.”[39]

The Sixth Circuit followed Rosciszewski and Briarpatch in Ritchie v. Williams.

Ritchie v. Williams
In Ritchie, promoter Alvin Williams sued singer-songwriter Robert Ritchie, known publicly as “Kid Rock,” based on a series of music contracts.[40] Williams claims that Kid Rock breached the contracts by performing the songs controlled by the contracts and transferring to third parties the right to record and distribute the songs.[41] Williams brought various state-law contract and tort claims against Kid Rock in Michigan state court, including breach of contract, unjust enrichment, misrepresentation, conversion, and injunctive relief against further misappropriation of income derived from the songs.[42] The defendants removed the claims to the United States District Court for the Eastern District of Michigan.[43]

The district court held that Williams basically asserted that Kid Rock infringed the publication, performance and distribution rights of the plaintiffs and that the claims must, therefore, be re-characterized as copyright claims and governed by federal copyright law.[44]

The Sixth Circuit agreed, holding that the claims are “equivalent” to infringement claims, and that there is no meaningful “extra element” “that removes the reformulated claims from the policy of national uniformity established by the preemption provisions of §301(a).”[45] The court concluded that Williams’s claims are “‘infused with … national interests’ … because the various publishing and performance rights of Kid Rock’s songs should be the same in Michigan as they are in New York and other states.”[46]

Despite applying the test, the court observed in a footnote that the “extra element” test has been criticized, noting the difficulty in applying the test where the extra element is illusory.[47] The court quoted the concern of certain commentators that the test “‘cannot be applied with any certainty’”[48] and “does not provide any real guidance to the courts.” [49]

After determining that Williams’s claims were preempted by the Copyright Act, the court converted them to federal copyright claims, having determined that the complete preemption doctrine should apply to claims involving copyrighted works. The court applied the same rationale as the Fourth Circuit in Rosciszewski, relying on the preemptive force of Section 301(a) of the Copyright Act and Congress’s grant of exclusive jurisdiction to the federal courts in copyright matters.[50]

The court agreed with the Second and Fourth Circuits that “Congress has indicated that ‘national uniformity’ in the strong sense of ‘complete preemption’ is necessary in this field.”[51] “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.”[52]

After converting Williams’s claims to federal copyright claims, the Sixth Circuit applied the three-year statute of limitations set forth in the Copyright Act and dismissed the claims.[53]

Can Ritchie and Harms be reconciled?
In finding Williams’s state contract and tort claims preempted because they were “infused with national interests,”[54] the Sixth Circuit quoted Judge Friendly in T. B. Harms Co. v. Eliscu,[55] the landmark case most often cited in determining when a claim arises under the Copyright Act for purposes of subject-matter jurisdiction.[56] Ironically, the context of the quoted phrase in Harms focused more on what claims do not arise under the act than what claims do, clarifying that ordinary contract claims do not: “[T]he federal grant of a patent or copyright has not been thought to infuse with any national interest a dispute as to ownership or contractual enforcement turning on the facts or on ordinary principles of contract law.”[57] The court continued: “Indeed, the case for an unexpansive reading of the provision conferring exclusive jurisdiction with respect to patents and copyrights has been especially strong since expansion would entail depriving the state courts of any jurisdiction over matters having so little federal significance.” Id.

Harms involved claims for declaration of copyright ownership based on the alleged assignment of renewal copyrights to certain songs used in a motion picture.[58] The court made its opinion known immediately in the introduction, writing:

A layman would doubtless be surprised to learn that an action wherein the purported sole owner of a copyright alleged that persons claiming partial ownership had recorded their claim in the Copyright Office and had warned his licensees against disregarding their interests was not one “arising under any Act of Congress relating to copyrights” over which 28 U.S.C. § 1338 gives the federal courts exclusive jurisdiction. Yet precedents going back for more than a century teach that lesson.[59]

The court held that an action “arises under” the Copyright Act “if and only if” (1) “the complaint is for a remedy expressly granted by the Act,” (2) “or asserts a claim requiring construction of the Act,” or (3) “at the very least and perhaps more doubtfully, presents a case where a distinctive policy of the Act requires that federal principles control the disposition of the claim.”[60] The court proceeded to find that the claims did not arise under the Copyright Act because they did not meet the test.[61]

The Sixth Circuit obviously endorsed Harms by quoting it in Ritchie, yet the results of the two cases appear at odds. Ritchie may be reconciled with Harms if one considers that, in Harms, the essence of the claims was declaratory and equitable relief based on contract principles while, in Ritchie, the essence of the claims was unauthorized exploitation of copyrighted works, a complaint clearly “for a remedy expressly granted by the Act …”[62] To the extent the court in Ritchie went too far in finding the claims preempted, it contradicts Harms, the very case on which it relies, or at least quotes.

Ritchie’s impact in the Sixth Circuit?
Ritchie’s impact is twofold: 1) it applied the complete preemption doctrine to matters already specifically preempted by the Copyright Act under the ordinary preemption test, and 2) it may have broadened the scope of the ordinary preemption test. Both holdings may expand preemption beyond what Congress intended.

The practical result of courts’, such as those in Anderson, Briarpatch and Ritchie, extending complete preemption to all matters over which Congress intended the federal courts to have exclusive jurisdiction is that they are merging unnecessarily the concepts of ordinary and complete preemption.[63]

The Copyright Act of 1976 was enacted long after the inception of removal, and Congress could have expressed its intent to make removable all matters within the scope of the Act if Congress so desired. Congress did not do so.[64] In contrast, the Supreme Court in Anderson analyzed a statute, the National Bank Act,[65] that could not address whether actions preempted by it should be removable because the relevant provisions of the statute were enacted before the removal procedure was available.[66]

Further, Ritchie “cannot be squared with bedrock principles of removal jurisdiction,” including (1) the principle “that merely setting forth in state court facts that would support a federal cause of action does not produce a federal question supporting removal,” and (2) the principle that a federal defense to a state claim does not support federal-question jurisdiction.[67] Ritchie, like Anderson in Justice Scalia’s view, “represents a sharp break from [the federal courts’] long tradition of respect for the autonomy and authority of state courts.”[68]

Ritchie also may have broadened the scope of the ordinary preemption test beyond that intended by Congress. If the complete preemption doctrine applies to all matters ordinarily preempted by the act, then strictly construing the ordinary preemption test to preserve those matters that should be within the domain of state courts is of utmost importance.

At least one commentator has read Ritchie to construe the ordinary preemption test too broadly by considering the facts underlying the claims and what claims could have been brought based on those facts, rather than analyzing the elements of the claims to determine whether they are equivalent to those of a copyright claim.[69]

The commentator construed Ritchie’s holding in this manner based on the court’s discussion of the “illusory element,” suggesting that, while a plaintiff may have pled an element beyond that comprising a copyright claim, such element may merely disguise a claim for unauthorized use or violation of one of the fundamental rights under the Copyright Act. Recognizing that an extra element may be illusory, however, is not the same as determining preemption based on the facts, and, if recognized accurately, is a necessary part of the preemption analysis, which requires a finding of a qualitative difference between the claim asserted and a copyright claim. For example, as discussed above, while Congress clearly intended to preserve state contract claims for state courts, claims for breach of implied-in-law contracts, or contracts for breach of a promise not to exploit a work without consideration, are typically preempted because they are not qualitatively different than a claim for copyright infringement.

The scant discussion in Ritchie of each individual claim makes it difficult to draw a conclusion whether a finding of preemption was correct for each claim. The extra element in the breach-of-contract claim of a promise to pay does not appear to be illusory. “If the promise amounts only to a promise to refrain from reproducing, performing, distributing or displaying the work, then the contract claim is preempted.” To the extent that a promise is for more, such as to pay a royalty, the claim is not preempted.[70] While certain of the individual claims in Ritchie, such as the breach claim, may not be preempted, Williams undisputedly sought damages for unauthorized exploitation of a copyrighted work in pleading claims such as unjust enrichment and conversion. Thus, the court properly had exclusive federal jurisdiction over at least certain of the claims.[71]

Setting aside the application of complete preemption, the practical effect of Ritchie with respect to ordinary preemption is in the sweeping statements about jurisdiction that could, intentionally or not, broaden the ordinary preemption test. For example, the court states:

The Copyright Act is unusually broad in its assertion of federal authority. Rather than sharing jurisdiction with the state courts as is normally the case, the statute expressly withdraws from the state courts any jurisdiction to enforce the provisions of the Act and converts all state common or statutory law “within the general scope of copyright” into federal law to be uniformly applied throughout the nation.[72]

Despite such broad statements, Ritchie does ultimately endorse the preemption test in Section 301 of the Copyright Act, including both the subject-matter and equivalency requirements.[73] If phrases such as “within the general scope of copyright” are taken out of context, however, the two-part preemption requirements could be overshadowed.

The bottom line is that, if a state remedy is available, the plaintiff — the master of the complaint — should be permitted to choose which cause of action to pursue based on the facts, rather than the facts choosing for him.[74] Otherwise, given a certain set of facts, a plaintiff is always confined to a federal copyright remedy. Given the procedural requirements of a copyright claim, such as the statute of limitations and the registration requirements, a plaintiff may have no remedy at all.[75] “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.” The effect in the context of copyright is even broader, potentially chilling expression.[76] Analyzing preemption based on the elements, then, rather than the facts underlying the claims, is essential.[77]

In the wake of Ritchie
At least two federal district courts within the Sixth Circuit have rendered opinions since Ritchie, exemplifying some of the concerns set forth here.

The court in Proffitt v. Owensboro Med. Health System[78] clarified that, despite Ritchie’s application of the complete preemption doctrine to copyright matters, the doctrine does not apply to all matters involving a copyrighted work, but only those preempted pursuant to the Section 301(a) test.[79] The court held that claims of wrongful and retaliatory discharge, allegedly based on the plaintiff’s notifying the employer that its failure to register as a licensed user of certain software programs, were not preempted by the Copyright Act and so were not removable.[80] The court compared the elements of the claims and deliberately avoided analyzing the facts underlying the claims, emphasizing that the plaintiff was only concerned with recovering damages for wrongful discharge and would “leave it to others to seek relief for damages relating to copyright infringements.” [81]

The court in Stanford v. Caesar’s Entertainment Inc.,[82] on the other hand, followed Ritchie and found preemption. There, the plaintiff alleged that the defendants unlawfully used his image, voice, likeness and persona in an advertising campaign featuring a fictional character named “Loose Slot Louie.”[83] The court quoted from the overly broad language of Ritchie that “all state common or statutory law ‘within the general scope of copyright’ must be withdrawn from the state courts and converted into federal law to be uniformly applied throughout the nation.”[84]

The court then proceeded, however, to apply the classic “extra element” preemption test and find the plaintiff’s right of publicity and misappropriation claims preempted.[85] The court emphasized that the crux of the claims was a challenge to the right to use the copyrighted work and that the plaintiff’s claims were merely a vehicle to enforce such rights. The court distinguished this type of right-of-publicity claim from a claim over rights to personal identity, which is not amenable to copyright protection.[86]

These cases demonstrate that, if courts are wary of the overly broad language of Ritchie and the overlapping references to ordinary and complete preemption, and if courts focus on the elements of a plaintiff’s claims and avoid considering only the facts underlying those claims, they should reach the correct conclusion as to preemption. This will not prevent preempted claims from being the subject of removal — only the Sixth Circuit’s changing its mind or the Supreme Court’s addressing whether the complete preemption doctrine applies to the Copyright Act will change how preempted claims are treated in the Sixth Circuit. A strict application of the ordinary preemption test, however, will help to preserve the federal/state jurisdictional balance that Congress intended.[87]

• • •

Notes

1. 17 U.S.C. § 101, et seq.
2. 395 F.3d 283, 286 (6th Cir. 2005).
3. Black’s Law Dictionary 1060 (5th ed. 1979).
4. Caterpillar Inc. v. Williams, 482 U.S. 386, 393 (1987).
5. 17 U.S.C. § 301(a).
6. Federal copyright protection subsists “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.” 17 U.S.C. § 102. Works of authorship include, for example, literary works, musical works, dramatic works, pictorial works, motion pictures, sound recordings and architectural works. Id.
7. Section 106 of the Copyright Act sets forth the bundle of rights the Copyright Act confers, providing:

   the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

   1. to reproduce the copyrighted work in copies or phonorecords;
   2. to prepare derivative works based upon the copyrighted work;
   3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
   4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
   5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictoral, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
   6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission. 17 U.S.C. § 106.

8. 17 U.S.C. § 301(b)(3).
9. See Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 457 (6th Cir. 2001) (quoting Nimmer on Copyright § 1.01[B][1][a] at 1-15 to 1-16) (“Adverting first to contract rights, an author’s right to royalties under a publication contract may be conditioned upon the publisher’s acts of reproduction and distribution of copies of the work, but there is also another crucial act that stands as a condition to the publisher’s liability: the publisher’s promise to pay the stated royalty.”).
10. See, e.g., id. at 456.
11. See Ritchie, 395 F.3d at 288 n.3 (citing Schuyler Moore, “Straightening Out Copyright Preemption,” 9 UCLA Ent. L. Rev. 201 (2002) (hereinafter “Moore”)).
12. Id. at 287-88.
13. Id. (citing Bowers v. Baystate Technologies Inc, 320 F.3d 1317, 1324 (Fed. Cir. 2003)).
14. See Elizabeth Helmer, “Comment: The Ever-Expanding Complete Preemption Doctrine and the Copyright Act: Is This What Congress Really Wanted?” 7 N.C. J.L. & Tech. 205, 228 (2005) (hereinafter “Helmer”).
15. See Roddy v. Grand Trunk Western R.R. Inc., 395 F.3d 318, 323 (6th Cir. 2005).
16. See 28 U.S.C. § 1441(b).
17. Palkow v. CSX Transp. Inc., 431 F.3d 543, 552 (6th Cir. 2006) (citing Gully v. First Nat’l Bank, 299 U.S. 109 (1936); Louisville v. N.R. Co. v. Mottley, 211 U.S. 149 (1908)). In such cases the action is typically remanded. See, e.g., id. at 556.
18. Id.
19. Loftis v. United Parcel Service Inc, 342 F.3d 509, 515 (6th Cir. 2003) (quoting Alexander v. Elec. Data Sys. Corp., 13 F.3d 940, 943 (6th Cir. 1994)).
20. Palkow, 431 F.3d at 552 (citing Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 63-64 (1987)).
21. Id.
22. Id. at 552-53.
23. Id. at 553.
24. Ritchie, 395 F.3d at 286.
25. Palkow, 431 F.3d at 553.
26. See Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58 (1987) (applying complete preemption doctrine to the Employee Retirement Income Security Act, 29 U.S.C. § 1144(a) (ERISA)); Caterpillar Inc. v. Williams, 482 U.S. 386 (1987) (applying complete preemption doctrine to the Labor Management Relations Act, 29 U.S.C. § 185(a) (LMRA), but holding that the state-law claims in that case did not arise under the Act and were not preempted); Avco Corp. v. Aero Lodge No. 735, 390 U.S. 557 (1968) (applying the doctrine to the LMRA); Beneficial Nat’l Bank v. Anderson, 539 U.S. 1 (2003) (holding a state-law usury claim against a national bank is completely preempted under the National Bank Act, 12 U.S.C. §§ 85, 86); El Paso Natural Gas v. Neztosie, 526 U.S. 473 (1999) (Price-Anderson Act, 42 U.S.C. § 2014(hh), provides for removal of tort actions arising out of nuclear accidents).
27. See Anderson, 539 U.S. at 14 (Scalia, J., dissenting). Justice Scalia questioned the landmark decision of Avco Corp., 390 U.S. at 557, in which the Supreme Court first applied the complete preemption doctrine, as inappropriately based on a statement “wrenched out of context” from Textile Workers v. Lincoln Mills of Ala., 353 U.S. 448 (1957).
28. 1 F.3d 225 (4th Cir. 1993).
29. Va. Code Ann. §§ 18.2-152.3.
30. Rosciszewski, 1 F.3d at 229-30.
31. Id. at 230-31.
32. Id. at 232.
33. Id. (quoting 28 U.S.C. § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to … copyrights … Such jurisdiction shall be exclusive of the courts of the states in … copyright cases.”)).
34. 373 F.3d 296 (2d Cir. 2004).
35. Id. at 306-07. The court concluded that, on the other hand, the plaintiff’s claim for breach of fiduciary duty was not preempted. Id. at 307.
36. Id. at 304-05 (citing 539 U.S. 1 (2003)).
37. Id. at 304.
38. Id. at 305-06.
39. Id. at 305.
40. 395 F.3d at 285.
41. Id.
42. Id. at 289.
43. Id. at 286.
44. Id. at 287.
45. Id. at 287-88.
46. Id. at 288 (quoting T. B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2d Cir. 1964)).
47. Id. at 288, n.3.
48. Id. (quoting Marshall A. Leaffer, Understanding Copyright Law § 11.7[C] (3rd ed. 1999)).
49. Id. (quoting Moore at 204).
50. Id. at 285-86 (quoting 28 U.S.C. § 1388(a)).
51. Id. at 286-87.
52. Id. at 286.
53. Id. at 288-89. Williams brought two additional claims that the Sixth Circuit did not find preempted, applying the ordinary preemption test of Section 301 of the Copyright Act. The claims included a claim for breach of fiduciary duty and breach of a supplemental employment-type contract. The court ultimately found both claims barred under the applicable Michigan statutes of limitations. Id. at 289-90.
54. Id. at 288.
55. Harms, 339 F.2d at 826.
56. See Kane v. NACE Internat’l, 117 F. Supp. 2d 592, 594 (S.D. Tex. 2000) (“All the circuits that have considered the question whether a suit with issues including non-copyright matters arises under the Copyright Act for purposes of section 1338 … have adopted the Harms test”).
57. Harms, 339 F.2d at 826.
58. Id. at 824.
59. Id. at 824.
60. Id. at 828.
61. Id.
62. Id.
63. See Helmer at 209.
64. See id. at 226-27.
65. Rev. Stat. § 5917, as amended, 12 U.S.C. § 85.
66. Id.; see Anderson, 539 U.S. at 9, n.5 (“Because the proper inquiry focuses on whether Congress intended the federal cause of action to be exclusive rather than on whether Congress intended that the cause of action be removable, the fact that these sections of the National Bank Act were passed in 1864, 11 years prior to the passage of the statute authorizing removal, is irrelevant, contrary to respondents’ assertions.”).
67. Id. at 14 (Scalia, J., dissenting) (quoting Caterpillar, 482 U.S. at 391).
68. Id.
69. See Helmer at 214. Ms. Helmer also criticized Briarpatch on this basis. Id. at 213-14. In Briarpatch, the Second Circuit held that a claim for unjust enrichment was preempted because the extra element of enrichment was not enough to distinguish the claim qualitatively from a copyright claim. Briarpatch, 373 F.3d at 305. Both Briarpatch and Ritchie disregarded elements that appeared illusory when the essence of the claim was a violation of the fundamental rights under the Copyright Act. In certain instances this may be the correct result. The incorrect result may be reached, however, when courts focus not on the elements but on the facts alleged and what claims could have been brought. An example is when the facts present a contractual dispute over ownership of a copyrighted work, when claims could be brought for declaration of ownership based on interpretation of a contract or go further and seek damages for unauthorized use. Arguably the former claims are not preempted by the Copyright Act, while the latter claims are preempted. Courts should consider the elements of the claims brought and the relief sought rather than what claims could have been brought or what relief could have been sought.
70. Wrench LLC, 256 F.3d at 457-58. See also Black v. Kos, 2005 U.S. Dist. LEXIS 8304, ** 7-10 (D. N.M. March 28, 2005) (deliberately considering the elements of the claim and not the facts underlying it, finding the existence of a contract an extra element so that a breach-of-contract claim was not preempted).
71. The outcome if additional claims had been found not preempted likely would have been the same, depending on the state statute of limitations applicable to any such claims.
72. Ritchie, 395 F.3d at 286.
73. See id. at 285.
74. See Harolds Stores v. Dillard Dep’t Stores, 82 F.3d 1533, 1543 (10th Cir. 1996), cert. denied, 519 U.S. 928 (1996) (A court “takes the wrong approach by focusing its preemption analysis on the conduct alleged to support the two causes of action”) (internal quotations and citation omitted).
75. Ritchie demonstrates this where, once the state-law claims were found preempted and were converted to federal copyright claims, the court found them to be barred by the Copyright Act’s three-year statute of limitations. See 395 F.3d at 288-89.
76. See Helmer at 229. “Certainly the rights to rely on one’s contracts, be free from misrepresentations, and be able to vindicate unlawful conversions involve legal and equitable rights and remedies that are not equivalent to those protected under the Copyright Act.” Id. at 228.
77. Helmer at 208. Ms. Helmer argues that courts’ application of the complete preemption doctrine to copyright claims “disrupts the balance of power between state and federal courts” and denies “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.” Id. at 208-09, 223.
78. 2005 U.S. Dist. LEXIS 22659, ** 6-7 (W.D. Ky. Oct. 3, 2005).
79. Id. at * 6.
80. Id. at ** 9-10.
81. Id. (quoting the plaintiff’s brief).
82. 2006 U.S. Dist. LEXIS 26959 (W.D. Tenn. May 1, 2006).
83. Id. at ** 2-3.
84. Id. at ** 13-14.
85. Id. at ** 22-27.
86. Id. at ** 24-27.
87. See Helmer at 231 (“In this way, a plaintiff will be free to frame claims as he chooses, courts will not unjustifiably deprive plaintiffs of a remedy under the law, and the balance of power between state and federal courts will be preserved.”).

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Amy Everhart is an associate at Bowen Riley Warnock & Jacobson, PLC, in Nashville, where her practice focuses on intellectual property and entertainment. She received her law degree from Vanderbilt University School of Law in 1998. This article was submitted on behalf of the Tennessee Bar Association’s Federal Practice Section.