DAUGHTRY v. ANDREWS et al
Filing
22
MEMORANDUM OPINION AND ORDER. Signed by JUDGE LORETTA C. BIGGS on 7/2/2015, that Defendants' Motion to Dismiss or Stay (ECF No. 9 ) is GRANTED IN PART AND DENIED IN PART, in that Defendants' Motion to Dismiss is DENIED and this action is STAYED pending the resolution of the state trial court proceeding. The parties shall provide the Court with a joint status report every 120 days following entry of this Memorandum Opinion and Order.(Daniel, J)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
CHRISTOPHER ADAM DAUGHTRY,
)
)
)
)
)
)
)
)
)
)
Plaintiff,
v.
RYAN ANDREWS, SCOTT
CRAWFORD, and MARK PERRY,
Defendants.
1:14-cv-984
MEMORANDUM OPINION AND ORDER
LORETTA C. BIGGS, District Judge.
Christopher
Adam
Daughtry
(“Daughtry”)
commenced
this
declaratory judgment action, pursuant to Rule 57 of the Federal
Rules
of
Civil
declaration
of
Procedure
and
28
U.S.C.
copyright
ownership
in
§ 2201,
certain
to
obtain
musical
a
works
based on authorship arising under the Copyright Act, 17 U.S.C.
§§ 101 et seq.
(ECF. No. 1 at 1, 5–6.)
Before the Court is
Defendants’ Motion to Dismiss or Stay this action pending the
outcome of a related state court proceeding.
(ECF No. 9.)
Court heard oral argument on April 30, 2015.
The
For the reasons
stated below, the Court grants Defendants’ Motion to Stay.
I.
BACKGROUND
Defendants
and
Daughtry
were
members
of
a
band
called
Absent Element from the fall of 2004 to the summer of 2006.
(ECF
No. 16-1
¶ 12;
ECF
No. 1
¶ 7.)
During
this
time,
parties wrote and recorded an album titled Uprooted.1
No. 1 ¶¶ 7-12.)
the
(See ECF
On April 4, 2006, Defendants filed a copyright
registration with respect to the songs on the Uprooted album,
listing all four members of Absent Element as “co-authors of all
lyrics,
music
Daughtry
and
denies
performance
that
he
had
on
any
all
7
songs.”
knowledge
of
(Id.
the
¶ 8.)
copyright
registrations, contending that the registrations were fraudulent
and that he first learned of them in March of 2012.
(Id. ¶¶ 8,
15.)
In April of 2012, Defendants filed a lawsuit in state court
in Guilford County, North Carolina, alleging among other things
that
the
band,
during
its
existence,
operated
under
a
partnership agreement in which all four members had agreed to
share equally in the band’s profits and songwriting credits for
songs
written
authorship.2
furtherance
of
the
(ECF No. 16-1 ¶¶ 20, 22.)
that Daughtry
authorship
in
has
credit
band,
irrespective
Defendants further claim
failed to account for profits and
as
required
by
the
of
partnership
provide
agreement.
1
This album contained seven songs: (1) Breakdown, (2) Conviction,
(3) Keep Me Close, (4) Weaker Side, (5) So I Lie Awake, (6) Let Me In,
and (7) Seven 4. (ECF No. 1 ¶ 7.)
2
Defendants’ state court lawsuit claims ownership in four songs, two
of which are on the album Uprooted. (ECF No. 16-1 ¶ 33; see ECF No. 1
¶ 7.) Defendants make no claim in connection with the remaining five
songs on Uprooted.
2
(ECF No. 10 at 5-6.)
On May 3, 2012, Daughtry removed the case
to federal court, alleging that Defendants’ claims arise under
the Copyright Act.
Notice of Removal ¶ 6, Andrews v. Daughtry,
No.
2013
1:12-cv-00441,
(“Andrews
I”),
ECF
WL
No. 1.
664564
On
(M.D.N.C.
February
22,
Feb.
22,
2013)
2013,
the
Court
remanded the case to state court, explaining that Defendants’
claims were based on the alleged partnership agreement and that
Defendants had “carefully pleaded their claims to avoid federal
question
jurisdiction”
complaint rule.
consistent
with
the
well-pleaded
Andrews I, 2013 WL 664564, at *6, *8, *15.
Before filing his answer and counterclaims in the state
proceeding on May 17, 2013, (ECF No. 10-2 at 24), Daughtry filed
on or about January 31, 2013, a correction with the Copyright
Office, notifying the Office that not all of the band members
co-authored each song on Uprooted.
(ECF No. 1 ¶ 14.)
Daughtry
also filed a registration with respect to each of the songs on
Uprooted, outlining what he contends were the correct ownership
and authorship interests in each of the songs on the album.
(Id. ¶ 15.)
Daughtry then filed his Answer to the Complaint and
Counterclaims
Against
All
Plaintiffs
seeking,
among
other
relief, a declaration under the Copyright Act that he was the
sole author and original owner of four Uprooted songs and a coowner and co-author of the remaining three.
¶¶ 15-17.)
(ECF No. 10-2 at 20
On May 20, 2013, Daughtry once again removed the
3
action
to
federal
court,
premising
jurisdiction
counterclaim arising under the Copyright Act.
on
Notice of Removal
¶¶ 1–12, Andrews v. Daughtry, 994 F. Supp. 2d 728
2014) (“Andrews II”), ECF No. 1.
his
(M.D.N.C.
In January of 2014, the Court
for a second time remanded the case to state court, holding that
Daughtry’s removal was untimely and that he failed to show “good
cause”
for
an
§ 1454(b)(2).
of
time
pursuant
to
28
U.S.C.
Andrews II, 994 F. Supp. 2d at 734-36.
Daughtry
alleging
extension
initiated
that
the
this
copyright
action
on
November
registration
filed
24,
in
2014,
2006
was
fraudulent in that it does not reflect the correct ownership
interests
in
the
songs
on
Uprooted.
(ECF
No. 1
¶¶ 8–12.)
Daughtry seeks a declaration, among other things, that he is the
sole
author
and
original
owner
of
the
copyrights
in
four
Uprooted songs and is a co-owner and co-author in the other
three Uprooted songs.
II.
(Id. at 5-6 ¶¶ 2-4.)
DISCUSSION
A. Federal Declaratory Judgment Act
Defendants urge the Court to either dismiss or stay this
action pending the outcome of the state court proceeding because
they
contend
only
that
proceeding
controversy between the parties.
“are
correct
in
their
encompasses
the
entire
They also argue that if they
partnership
law
theories,
which
are
pending in the state lawsuit, then the question of who authored
4
the songs becomes moot.”
(ECF No. 10 at 13, 16.)
counters
the
by
arguing
that
Court
should
deny
Daughtry
Defendants’
request for dismissal or stay because this Court has exclusive
jurisdiction
over
his
“narrowly
tailored”
claims
such
that
“[n]one of the relief he seeks implicates any of the relief that
Defendants are seeking in state court.”3
(ECF No. 15 at 6-8.)
Daughtry further argues that if the Court dismisses this action
as urged by Defendants, it would effectively deny him any forum
to have his claims heard.4
The Federal Declaratory Judgment Act allows federal courts
to
“declare
interested
the
party
rights
seeking
and
other
such
legal
relations
declaration,
further relief is or could be sought.”
of
any
whether
or
not
28 U.S.C. § 2201 (2012).
The court’s power to grant declaratory relief is discretionary
and should be invoked for appropriate cases only.
Centennial
Life Ins. Co. v. Poston, 88 F.3d 255, 256-57 (4th Cir. 1996).
court
may
exercise
jurisdiction
in
a
federal
A
declaratory
3
Daughtry admits that his copyright claim asserted in this action was
also asserted by him as a counterclaim in the state action.
(ECF
No. 15 at 6.) Daughtry explains that when the Court remanded on the
second occasion, he had no choice but to assert his counterclaim
arising under the Copyright Act in state court because of the
uncertainties surrounding (1) the 2011 enactment of the America
Invents Act and (2) whether his claim qualified as compulsory
counterclaim under North Carolina law. (Id.)
4
According to Daughtry, the statute of limitations for him to
challenge the alleged fraudulent copyright registrations ran in March
of 2015. (ECF No. 15 at 7).
5
judgment proceeding when (1) the complaint shows that there is
an actual controversy between the parties, (2) the claim arises
under federal law, and (3) the exercise of jurisdiction is not
an abuse of discretion.
See Volvo Constr. Equip. N. Am., Inc.
v. CLM Equip. Co., 386 F.3d 581, 592 (4th Cir. 2004).
Neither party has raised any issues related to the first
two
requirements
necessary
for
this
Court
to
jurisdiction in this declaratory judgment proceeding.
exercise
Thus, the
issue to be decided here is whether the exercise of jurisdiction
by
this
Court,
in
light
of
the
pending
related
state
court
proceeding and the unique procedural posture of the parties’
claims, would amount to an abuse of discretion.
It
is
discretion
well
in
settled
determining
that
district
whether
to
courts
entertain
enjoy
a
broad
declaratory
judgment action. See Wilton v. Seven Falls Co., 515 U.S. 277,
286-87 (1995); Brillhart v. Excess Ins. Co. of Am., 316 U.S.
491, 494 (1942).
While such discretion is not limitless, “a
district court’s discretion ‘is especially crucial when . . .
[a] related proceeding is pending in state court.’”
Riley v.
Dozier Internet Law, PC, 371 F. App’x 399, 401 (2010) (quoting
New Wellington Fin. Corp. v. Flagship Resort Dev. Corp., 416
F.3d 290, 297 (4th Cir. 2005)).
Within the declaratory judgment
context, the United States Supreme Court has explained that “the
normal principle that federal courts should adjudicate claims
6
within
their
practicality
jurisdiction
and
wise
yields
judicial
to
considerations
administration.”
of
Wilton,
515
U.S. at 288; see also Brillhart, 316 U.S. at 494 (“Although the
District Court had jurisdiction of the suit under the Federal
Declaratory
Judgments
Act,
it
was
exercise that jurisdiction.”).
stated
that
it
is
under
no
compulsion
to
The Supreme Court in Brillhart
“uneconomical
as
well
as
vexatious
for
a
federal court to proceed in a declaratory judgment suit where
another suit is pending in a state court presenting the same
issues, not governed by federal law, between the same parties.”
Brillhart, 316 U.S. at 495.
The court must therefore determine
whether the controversy “can better be settled in the proceeding
pending in the state court.”
requires
the
court
to
take
Wilton, 515 U.S. at 282.
into
federalism, efficiency, and comity.”
account
This
“considerations
of
United Capitol Ins. Co. v.
Kapiloff, 155 F.3d 488, 493 (4th Cir. 1998).
To assist district courts with balancing the federal and
state principles articulated by Brillhart and Wilton, the Fourth
Circuit
has
set
forth
four
factors
that
the
court
should
consider:
(1) whether the state has a strong interest in
having the issues decided in its courts; (2)
whether the state courts could resolve the issues
more efficiently than the federal courts; (3)
whether the presence of “overlapping issues of
fact
or
law”
might
create
unnecessary
“entanglement” between the state and federal
7
courts; and (4) whether the federal action is
mere “procedural fencing,” in the sense that the
action is merely the product of forum-shopping.
Kapiloff, 155 F.3d at 493–94 (“Kapiloff factors”).
not
to
“treat
the
factors
as
a
‘mechanical
Courts are
checklist,’ but
rather should apply them flexibly in light of the particular
circumstances
of
each
case.”
VRCompliance
LLC
v.
HomeAway,
Inc., 715 F.3d 570, 573 (4th Cir. 2013).
B. Kapiloff Factors
Analysis
of
the
Kapiloff
factors
leads
this
Court
to
conclude that this action should be stayed pending resolution of
the state court trial proceeding.5
1. The State’s Interest
It is undisputed that North Carolina has a strong interest
in
resolving
the
dispute
concerning
5
the
alleged
partnership
Daughtry argues that the presence of a federal claim and the lack of
a parallel state proceeding compel the Court to entertain his claims
brought under the Federal Declaratory Judgment Act.
(See ECF No. 15
at 20.)
“[E]ven in cases involving federal law, ‘[t]he Declaratory
Judgment Act [i]s an authorization, not a command.
It g[ives] the
federal courts competence to make a declaration of rights; it d[oes]
not impose a duty to do so.’” Riley, 371 F. App’x at 405 (alterations,
except first, in original) (quoting Pub. Affairs Assocs., Inc., v.
Rickover, 369 U.S. 111, 112 (1962) (per curiam)). Moreover, “[t]here
is no requirement that a parallel proceeding be pending in state court
before a federal court should decline to exercise jurisdiction over a
declaratory judgment action.” Aetna Cas. & Sur. Co. v. Ind-Com Elec.
Co., 139 F.3d 419, 423 (4th Cir. 1998). Although the existence of a
parallel state action is “a significant factor in the district court’s
determination[,] . . . it is not dispositive.”
Id.
The Kapiloff
factors continue to be the criteria the Court should balance in
determining whether to entertain a federal declaratory action.
See
id. at 423-24; see also Riley, 371 F. App’x at 405-06.
8
agreement.
Who owns the present interest in the songs at issue
turns on whether they are assets of the alleged partnership
agreement, a disputed issue in the state court proceeding that
implicates North Carolina partnership law.
The Chief Justice of
the North Carolina Supreme Court has designated the state case
as
an
“exceptional”
civil
case
under
Rule
2.1
of
the
North
Carolina General Rules of Practice for the Superior and District
Courts.
(ECF No. 10 at 4.)
To qualify as an “exceptional civil
case,” the Chief Justice considers a number of factors, which
include,
among
other
things,
the
diverse
interests
of
the
parties, the amount and nature of pretrial discovery, and the
complexity of legal issues involved.
Cts.
2.1(d).
Had
Daughtry’s
N.C. R. Super. & Dist.
complaint
in
this
federal
declaratory judgment action requested relief that can only be
provided
through
application
of
the
Copyright
Act,
state would likely have no interest in this action.
then
the
However,
because certain relief sought by Daughtry in this action could
overlap with resolution of the partnership issue,6 which is a
state law matter, North Carolina has a strong interest in having
6
(See ECF No. 1 ¶ 20 (“Plaintiff brings this claim for a judgment
declaring that Defendants . . . do not hold equal undivided interests
in the copyright and publishing rights to . . . Breakdown, [and]
Conviction . . . .”).) At the hearing, Daughtry’s counsel represented
to the Court that Daughtry did not intend to plead relief that would
conflict with a ruling in the state court action, but he has not
amended his Complaint to reflect his stated intention.
9
its courts first resolve these complex issues of North Carolina
law.
2. Efficiency
As
a
general
rule,
the
first
priority over a later filed suit.
suit
filed
should
have
Riley, 371 F. App’x at 403.
Here, the state court proceeding was filed first.
In addition,
in the state proceeding, the parties have completed nine months
of
fact
discovery,
which
included
extensive written discovery.
eleven
depositions
(ECF No. 10 at 4.)
and
A mediation,
though unsuccessful, was held on January 7, 2015, which was
followed by briefing and a hearing on Daughtry’s motion for
summary judgment on March 11, 2015.
September 14, 2015.
(Id.)
Trial is set for
(Id.)
Defendants claim that if the Court exercised jurisdiction
over Daughtry’s complaint for a declaratory judgment, then it
would lead to a piecemeal resolution of this case.
The
Court
does
circumstances
claims
are
determination
of
not
this
pending
of
find
this
case.
in
copyright
argument
Although
the
(Id. at 14.)
compelling
under
Daughtry’s
state
court
ownership
based
copyright
proceeding,
on
a
the
a
disputed
allegation of co-authorship presents a federal question under
the Copyright Act that Congress has expressly stated cannot be
resolved by a state court.
See 28 U.S.C. § 1338(a) (“No State
court shall have jurisdiction over any claim for relief arising
10
under
any
Act
Cambridge
of
Congress
Literary
Props.,
relating
Ltd.
v.
to . . .
W.
copyrights.”);
Goebel
Porzellanfabrik
G.m.b.H. & Co. Kg., 510 F.3d 77, 86 (1st Cir. 2007) (“[T]he
federal
circuit
courts
of
determination
of
allegation
co-authorship
of
copyright
appeal . . .
ownership
presents
agree
on
based
a
that
disputed
federal
a
question
a
that
arises under, and must be determined according to, the Copyright
Act.”).
theory
Defendants have advanced the argument that if their
of
the
proceeding,
partnership
then
the
are
agreement
prevails
question
of
silent
what
on
in
the
is
authorship
happens
state
moot.
Interestingly,
they
if
they
are
unsuccessful.
If the state court concludes that there is no
partnership agreement that governs the present ownership of the
disputed
songs,
then
it
would
appear
that
resolution
of
ownership of the songs based on authorship, including present
ownership, will be determined pursuant to the Copyright Act and,
therefore,
in
this
Court.
Consequently,
a
stay
pending
resolution of the state court proceeding could prevent needless
duplication of effort and minimize the unnecessary expenditure
of
judicial
resources
while
at
the
federal forum for Daughtry’s claims.
Co.,
88
F.3d
at
258.
Thus,
the
time
preserving
a
See Centennial Life Ins.
stay
resolution of the entire controversy.
11
same
allows
for
an
orderly
3. Entanglement
Requiring
simultaneous
litigation
in
state
court often invites unnecessary entanglement.
state
proceeding
and
this
declaratory
and
federal
Here, both the
judgment
proceeding
include the same parties as well as common issues of law and
fact.
In addition, it is uncertain what impact the alleged
partnership
agreement
entitled to receive
will
have
on
any
relief
Daughtry
is
in this action, assuming that the state
court finds that such an agreement exists, is valid, and is
enforceable.
entanglement
Daughtry
because
contends
his
that
original
there
ownership
is
no
claims
risk
of
based
on
authorship have no bearing on the issues pending in state court,
specifically
partnership
the
state
agreement.
issue
Even
of
whether
though
or
the
not
Court
there
has
is
a
exclusive
jurisdiction over original ownership claims based on authorship
pursuant to the Copyright Act, the similarity of issues between
the
same
parties
inconsistent
proceed
in
rulings
both
should
simultaneously,
proceedings
this
“thereby
progress of the [] proceedings.”
Court
increases
and
the
frustrat[ing]
the
risk
state
the
of
court
orderly
Riley, 371 F. App’x at 403
(alterations in original) (internal quotation mark omitted).
4. Procedural Fencing
Defendants claim that this action “appears to be an end run
around
the
Court’s
two
remand
12
decisions”
in
Andrews
I
and
Andrews II.
(ECF No. 10 at 16-17.)
While this Court does not
take lightly the fact that Daughtry has unsuccessfully sought
removal to federal court twice, this Court cannot conclude that
Daughtry is engaging in “mere” procedural fencing by filing this
federal action, as Defendants argue.
“Procedural fencing occurs
when . . . ‘a party has raced to federal court in an effort to
get certain issues that are already pending before the state
courts resolved first in a more favorable forum’” or when a
party files suit directly in federal court to secure a federal
forum in a case that is otherwise not removable.
Riley, 371 F.
App’x at 403–04 (quoting Great Am. Ins. Co. v. Gross, 468 F.3d
199, 212 (4th Cir. 2006)).
While procedural fencing generally
contemplates a litigant shopping for a more favorable forum, it
appears that Daughtry seeks to ensure that he is not foreclosed
from having his claims heard in any forum.
Defendants maintain, however, that the Court in Andrews II
rejected Daughtry’s argument that his copyright claims can only
be heard in federal court, contending that the Court observed
“that if Congress had in fact intended there to be exclusive
federal
jurisdiction
over
a
counterclaim
for
copyright
ownership, Congress would not have imposed the ordinary time
limits applicable to removal.”
in
Andrews
University
II
of
made
no
Kentucky
such
(ECF No. 10 at 18.)
observation.
Research
13
Foundation,
Nor
The Court
does
Inc.
v.
it
cite
Niadyne
Inc., No. 13-16-GFVT, 2013 WL 5943921, (E.D. Ky. Nov. 5, 2013),
for such observation.
The actual language in Andrews II to
which Defendants refer is as follows:
Daughtry urges the court to find cause for
removal on the ground that the federal courts are
the exclusive forum for his copyright claims.
But, as noted by the Niadyne court, if Congress
shared that view, “it would have simply removed
all time limitations” in section 1454.
It did
not.
Andrews
II,
994
F.
Supp.
2d
at
735-36
(emphasis
added)
(citations omitted) (quoting Niadyne, 2013 WL 5943921, at *10).
The Court made that statement as it was rejecting Daughtry’s
argument that the “cause” standard set forth in 28 U.S.C. § 1454
could be satisfied based on an argument that federal courts are
the exclusive forum for claims arising under the Copyright Act.
The Court did not rule, as Defendants proclaim, that the state
court had jurisdiction over Daughtry’s copyright claims under
the Copyright Act.
Defendants’ expansive reading of Andrews II
must be rejected by this Court.
Moreover, Daughtry offers a reason for filing this federal
suit
after
statute
of
the
Court’s
limitations
second
for
remand
him
to
decision—that
challenge
the
is,
the
alleged
fraudulent copyright registrations ran in March of 2015, (ECF
No. 15 at 7), and that he would be precluded from having his
copyright issues heard, (id. at 19).
explanation
reasonable.
The Court finds Daughtry’s
Accordingly,
14
in
light
of
Daughtry’s
concern about the statute of limitations and his well-founded
belief that the state court will likely be unable to resolve his
copyright counterclaim, the Court cannot say that this action
represents procedural fencing on the part of Daughtry.
However, if for the sake of argument, there is procedural
fencing by Daughtry in attempting to secure a federal forum on a
case that is not removable, its effect is minimized by a stay of
this action pending resolution of the state court proceeding.
For the reasons outlined above, the Kapiloff factors weigh
in favor of staying this action pending the outcome of the state
trial court proceeding.7
This result is consistent with the
Court’s inherent power to stay proceedings to “maintain an even
balance” between the parties, Landis v. N. Am. Co., 299 U.S.
248, 254-55 (1936), and to control the progress of a case in the
interest of justice, Carlisle v. United States., 517 U.S. 416,
438 n.1 (1996) (quoting Enelow v. N.Y. Life Ins. Co., 293 U.S.
379, 381–82 (1935)).
7
The Court also rejects Daughtry’s argument that this Court cannot
stay or dismiss this action under the Colorado River Doctrine.
(See
ECF No. 15 at 20.)
In Colorado River Water Conservation District v.
United States, 424 U.S. 800 (1976), the Supreme Court held that a
federal court may abstain from hearing non-declaratory claims in favor
of a parallel suit under certain circumstances.
See id. at 814-17.
However, this doctrine is inapplicable to cases seeking only
declaratory relief under the Federal Declaratory Judgment Act.
See
VonRosenberg v. Lawrence, 781 F.3d 731, 735 (4th Cir. 2015).
15
ORDER
IT IS THEREFORE ORDERED that Defendants’ Motion to Dismiss
or Stay (ECF No. 9) is GRANTED IN PART AND DENIED IN PART, in
that Defendants’ Motion to Dismiss is DENIED and this action is
STAYED
pending
proceeding.
the
resolution
of
the
state
trial
court
The parties shall provide the Court with a joint
status report every 120 days following entry of this Memorandum
Opinion and Order.
This, the 2nd day of July, 2015.
/s/ Loretta C. Biggs
United States District Judge
16
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