Perez Pizzaro et al v. Synectrust, LLC et al

Filing 41

OPINION AND ORDER granted 5 Motion Submitting Certified Translation of State Court Complaint; granted 30 Motion to Remand; granted 31 Motion to Dismiss Third Party Complaint. Signed by Judge Carmen C. Cerezo on 3/12/2019. (mld)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
ANA MARIA PEREZ PIZARRO;
ISRAEL RIVERA GADDY
Plaintiffs/Counterclaim-Defendants
vs
SYNECTRUST, LLC; JACK
HIRSBRUNNER
Defendants, Counterclaimants and
Third-Party Plaintiffs
vs
URAYOAN CAMACHO; EFREN
GONZALEZ; YAMIL GOTAY;
ALVARO ADRIAN LOPEZ ROCHE;
DTE, LLC
Third-Party Defendants

CIVIL 18-1147CCC

OPINION AND ORDER
These two civil actions were removed to this Court from the District Court
of Toa Baja, Court of First Instance of the Commonwealth of Puerto Rico, on
March 17, 2018 by defendants Synectrust, LLC and Jack Hirsbrunner (together
the “defendants or third party plaintiffs”).1 See d.e. 2. Plaintiffs Ana María
Pérez Pizarro and Israel Rivera Gaddy (together the “plaintiffs”) filed separate
summary process complaints under 32 L.P.R.A. sec. 2871 (“Law 140”) on
March 5, 2017 respectively seeking the return of personal/confidential

1

Defendants cannot remove two separate state cases in one fell swoop as if they had been
consolidated. They have not shown the Court of First Instance consolidated them before removal.
In order to correct the procedural status of each case, the Court must enter a Remand order
advising the Commonwealth Court to refile each case separately.

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2

documents and a personal computer.

See d.e. 5-1.2

Pérez Pizarro’s

commonwealth claim was TBQ 18-031. Rivera Gaddy’s commonwealth claim
was TBQ-030. The same day they removed these two separate state case,
defendants filed an Answer, Counterclaim, and Third Party Complaint (d.e. 1)
which, read in the light most favorable to defendants, attempt to assert claims
of copyright and patent infringement against plaintiffs and Urayoan Camacho,
DTE, LLC, Efren Gonzalez, Alvaro Adrian Lopez Roche, and Yamil Gotay.
Before the Court are plaintiffs’ Motion to Remand (d.e. 30) filed on
May 28, 2018 and defendants’ Opposition (d.e. 33) filed on June 13, 2018. In
their motion, plaintiffs claim that neither of plaintiffs’ summary complaints under
Law 140 assert a federal cause of action that would give this Court jurisdiction
upon their removal. Defendants having improperly removed the complaints,
plaintiffs’ motion is GRANTED.
I.

LEGAL BACKGROUND
A.

Federal Question Jurisdiction and Removal

28 U.S.C. § 1441 enables “[a] defendant [to] remove a case to federal
court only when the action could have originally been filed in federal court.
When a notice of removal is presented, ‘defendants have the burden of
showing the federal court's jurisdiction.’ If there are any doubts about the
propriety of the removal, however, ‘all doubts should be resolved in favor of
remand.’” Colon-Rodriguez v. Astra/Zeneca Pharm., LP, 831 F. Supp. 2d 545,
548-49 (D.P.R. 2011) (referring to 28 U.S.C. § 1441 and Danca v. Private

2

Defendants’ Motion Submitti[n]g Certified Translation of State Court Complaint (d.e. 5) filed
on March 19, 2018 is GRANTED.

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Health Care Sys., 185 F.3d 1, 4 (1st Cir. 1999); citing Boyer v. Snap-on Tools
Corp., 913 F.2d 108, 111 (3d Cir. 1990)).
Both plaintiffs and defendants are residents of Puerto Rico. “Absent
diversity of citizenship, federal-question jurisdiction is required. The presence
or absence of federal-question jurisdiction is governed by the ‘well-pleaded
complaint rule,’ which provides that federal jurisdiction exists only when a
federal question is presented on the face of the plaintiff's properly pleaded
complaint. The rule makes the plaintiff the master of the claim; he or she may
avoid federal jurisdiction by exclusive reliance on state law.” Caterpillar Inc. v.
Williams, 482 U.S. 386, 392, 107 S.Ct. 2425, 2429, 96 L.Ed. 2d 318 (1987)
(referring to Gully v. First National Bank, 299 U.S. 109, 112-113,
57 S.Ct. 96, 97-98, 81 L.Ed. 70 (1936)).
“[I]t is now settled law that a case may not be removed to federal court
on the basis of a federal defense, including the defense of pre-emption, even
if the defense is anticipated in the plaintiff's complaint, and even if both parties
concede that the federal defense is the only question truly at issue.” Caterpillar
Inc., 482 U.S. at 393 (referring to Franchise Tax Board of Cal. v. Construction
Laborers Vacation Trust for Southern Cal., 463 U.S. 1, 12, 103 S.Ct. 2841,
2847-2848, 77 L.Ed. 2d 420 (1983)). Nor can “a counterclaim—which appears
as part of the defendant's answer, not as part of the plaintiff's complaint—[]
serve as the basis for ‘arising under’ jurisdiction.” Holmes Grp., Inc. v. Vornado
Air Circulation Sys., Inc., 535 U.S. 826, 831, 122 S.Ct. 1889, 1894,
153 L.Ed. 2d 13 (2002) (internal citations omitted).

CIVIL 18-1147CCC
B.

4

Complete Preemption Doctrine

Nonetheless, “an ‘independent corollary’ to the well-pleaded complaint
rule known as the ‘complete pre-emption’ doctrine [applies when] the
pre-emptive force of a statute is so ‘extraordinary’ that it ‘converts an ordinary
state common-law complaint into one stating a federal claim for purposes of
the well-pleaded complaint rule.’

Once an area of state law has been

completely pre-empted, any claim purportedly based on that pre-empted state
law is considered, from its inception, a federal claim, and therefore arises
under federal law.” Caterpillar Inc., 482 U.S. at 393, 107 S.Ct. at 2430,
96 L.Ed. 2d 318 (1987) (citing Franchise Tax Board, 463 U.S., at 22-24,
103 S.Ct., at 2853-2854 and Metropolitan Life Insurance Co. v. Taylor,
481 U.S. 58, 65, 107 S.Ct. 1542, 1547, 95 L.Ed. 2d 55 (1987)).
For that to be true, Congress must provide a cause of action parallel to
the preempted state-law claim. See Beneficial Natl Bank v. Anderson,
539 U.S. 1, 7-8 (2003). Congress has done that, for example, with causes of
action which are “equivalent to” those for copyright infringement.

See

Ritchie v. Williams, 395 F.3d 283, 285-87 (6th Cir. 2005). It has not done so,
however, for run-of-the-mill common-law claims, e.g., for wrongful termination.
See Long v. Bando Mfg. of America, Inc., 201 F.3d 754, 759 (6th Cir. 2000).
“Because it represents an ‘extraordinary preemptive power,’ complete
preemption is ‘quite rare.’

Inselberg v. New York Football Giants, Inc.,

No. 2:14-CV-01317 WJM, 2014 WL 5814268, at *3 (D.N.J. Nov. 10, 2014),
aff'd, 661 F. App'x 776 (3d Cir. 2016) (citing Metropolitan Life Ins. Co. v. Taylor,

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5

481 U.S. 58, 65, 107 S.Ct. 1542, 1547, 95 L.Ed. 2d 55 (1987) and Johnson v.
MRA Petroleum Co., 701 F.3d 243, 248 (8th Cir. 2012)).
C.

Substantial Federal Question Doctrine

In addition to the ‘complete preemption doctrine,’ “[t]here is . . . another
longstanding, if less frequently encountered, variety of federal ‘arising under’
jurisdiction . . . in certain cases [where] federal-question jurisdiction will lie over
state-law claims that implicate significant federal issues. The doctrine captures
the commonsense notion that a federal court ought to be able to hear claims
recognized under state law that nonetheless turn on substantial questions of
federal law, and thus justify resort to the experience, solicitude, and hope of
uniformity that a federal forum offers on federal issues.” Grable & Sons Metal
Prod., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 312, 125 S.Ct. 2363, 2366-67,
162 L.Ed. 2d 257 (2005) (referring to Hopkins v. Walker, 244 U.S. 486,
490-491, 37 S.Ct. 711, 61 L.Ed. 1270 (1917)). Known in the First Circuit as the
‘federal ingredient doctrine,’ “[it] applies in a ‘special and small category of
cases’ where a ‘state-law claim necessarily raise[s] a stated federal issue,
actually disputed and substantial, which a federal forum may entertain without
disturbing any congressionally approved balance of federal and state judicial
responsibilities.’” One & Ken Valley Hous. Grp. v. Maine State Hous. Auth.,
716 F.3d 218, 224 (1st Cir. 2013) (citing Gunn v. Minton, 568 U.S. 251, 258,
133 S.Ct. 1059, 1065, 185 L.Ed. 2d 72 (2013)).
In their Opposition, defendants allude to these two bases for federal
jurisdiction without naming them or elaborating on either. See d.e. 33 at p. 2,
stating: “[t]here is not only federal jurisdiction over the controversies among the

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parties; there is exclusive federal jurisdiction” and at p. 3, relying on One & Ken
Valley Housing Grp. v. Me. State Hous. Auth., 716 F.3d 218, 224
(1st Cir. 2013) in support of their argument that: “the issue of who owns the
copyrighted code is decisive to the dispute among the parties.” But as the
following discussion illustrates, neither apply to the complaints, making their
removal here inappropriate.
II.

DISCUSSION
A.

Complete Preemption
1.

Plaintiffs’ Complaints are not Preempted by Copyright
Law

28 U.S.C. § 1338(a) provides that: “[t]he district courts shall have original
jurisdiction of any civil action arising under any Act of Congress relating to
patents, plant variety protection, copyrights and trademarks.” Nonetheless, “[i]t
is well-settled that not every case involving federal copyright laws ‘arises under’
those laws such that federal jurisdiction is proper pursuant to § 1338(a).”
Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d 926, 931 (2d Cir. 1992).
“[A]n action does not ‘arise under’ the federal copyright laws merely because
it relates to a product that is the subject of a copyright. The question of
whether the suit ‘arises under’ the copyright law is considerably more
sophisticated . . .”

Royal v. Leading Edge Prod., Inc., 833 F.2d 1, 2

(1st Cir. 1987) (referring to Topolos v. Caldewey, 698 F.2d 991, 993
(9th Cir. 1983)).
In the area of copyright, a state law claim is not preempted if an “extra
element” exists that changes the nature of the action such that it is qualitatively
different from a copyright infringement claim. See Computer Associates Int'l,

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Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992). To determine whether a
claim meets such standard, the court must determine what the plaintiff seeks
to protect, the theories in which that matter is thought to be protected, and the
rights sought to be enforced. See id.
A quick review of plaintiffs’ summary complaints shows they are not
preempted by Copyright law. Plaintiff Ana María Pérez Pizarro alleges that:
Today, March 5, I reported to work, as usual. When I got to the
reception at the building. I was told that I could not go up. An
employee from another company came down to tell me that we
could no longer work there. To which I told her to let me go up to
get my personal documents and confidential documents of another
company, to which they did not have to have access since it is
private information of other clients. I was not allowed to go in, in
spite of providing this information. The documents that are
requested have nothing to do with the company in question here
and it is necessary and vital in order to continue with the project
and functions related to that information.
(d.e. 5-1).
Plaintiff Israel Rivera Gaddy in turn alleges that:
When I reported to work, I was told of the definite break with the
company and that subsequently my access to the facilities would
be revoke. As part of the process, I tried to take with me the
physical equipment that I had brought before of a personal nature,
that does not belong to the company. This equipment is a personal
computer (tower) and a USP battery. These are my professional
tools, without which I am able [sic] of obtaining a livelihood. In
addition, that computer contains documents and work related to
other clients before them.
Id.
Plaintiffs are the masters of their complaint, and in this case, neither has
made any allegations that present a federal question. A federal question
simply does not appear on the face of either summary complaint. This is not
a case where plaintiffs have no viable state law cause of action, but only a

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federal claim. Because plaintiffs have viable state law claims, they are not
completely preempted such that their removal was permissible.
2.

Plaintiffs’ Complaints are not Preempted by Patent Law

“[W]hether a claim ‘arises under’ patent law ‘must be determined from
what necessarily appears in the plaintiff's statement of his own claim in the bill
or declaration, unaided by anything alleged in anticipation or avoidance of
defenses which it is thought the defendant may interpose.’ Thus, a case
raising a federal patent-law defense does not, for that reason alone, ‘arise
under’ patent law, ‘even if the defense is anticipated in the plaintiff's complaint,
and even if both parties admit that the defense is the only question truly at
issue in the case.’” Christianson v. Colt Indus. Operating Corp., 486 U.S. 800,
808-10, 108 S.Ct. 2166, 2173-74, 100 L.Ed. 2d 811 (1988) (citing Franchise
Tax Board, 463 U.S., at 10, 14, 103 S.Ct., at 2846, 2848)).
The Federal Circuit applied the well-plead complaint rule to patent cases
for purposes in Wawrzynski v. H.J. Heinz Co., 728 F.3d 1374 (Fed. Cir. 2013).
In so doing, it did not even reach the complete preemption issue, but instead
focused solely on whether the complaint alleged a cause of action arising
under federal law. [I]t took into account a number of factors: (1) the complaint
did not use the words ‘infringe’ or ‘infringement’; (2) the complaint did not
reference 35 U.S.C. § 271; (3) the remedy sought; (4) whether the plaintiff
alleged an entitlement to exclusivity; (5) whether the complaint referenced
ideas and materials not found in a patent; and (6) the plaintiff filed his action
in state court. See id. at 1379-1382.

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Plaintiffs’ allegations show their claims were not created by patent law.
Based on these factors, neither of plaintiffs’ summary complaints state a claim
of patent infringement for purposes of ‘arising under’ jurisdiction.

Their

complaints are not completely preempted by patent law either.
B.

Substantial Federal Question

“Federal jurisdiction over a state law claim will lie if a federal issue is:
(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of
resolution in federal court without disrupting the federal-state balance approved
by Congress.

Where all four of these requirements are met, we held,

jurisdiction is proper because there is a “serious federal interest in claiming the
advantages thought to be inherent in a federal forum,” which can be vindicated
without disrupting Congress's intended division of labor between state and
federal courts.” Gunn, 568 U.S. at 258, 133 S.Ct. at 1065 (citing Grable &
Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U.S. 308,
313-314, 125 S.Ct. 2363, 2367-2368 (2005)).
We do not consider the determination of who owns any copyright or
patent to be ‘necessary’ to decide the dispute among the parties.

But

assuming for the sake of argument it is, “[i]n its most recent pronouncements
on the question of substantiality in this context, the Supreme Court []
emphasized that the ‘substantiality’ inquiry is wholly separate from the
‘necessary’ inquiry, and demands that a federal question must be not only
important to the parties, but important to the federal system. In Gunn, for
example, the Court explained that for a case to be ‘substantial in the relevant
sense,’ ‘it is not enough that the federal issue be significant to the particular

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10

parties in the immediate suit . . . The substantiality inquiry . . . looks instead
to the importance of the issue to the federal system as a whole.’” Municipality
of Mayaguez v. Corporacion para el Desarrollo del Oeste, Inc.,
726 F.3d 8, 13-14 (1st Cir. 2013) (citing Gunn, 133 S.Ct. at 1066).
“An issue may be substantial where the outcome of the claim could turn
on a new interpretation of a federal statute or regulation which will govern a
large number of cases. In other words, a case is more likely to be important to
the federal system as a whole if it presents ‘a nearly ‘pure issue of law . . . that
could be settled once and for all’ rather than an issue that is ‘fact-bound and
situation-specific’ and whose holding will more likely be limited to the facts of
the case.

Id. (citing Empire Healthchoice Assur., Inc. v. McVeigh,

547 U.S. 677, 700-701, 126 S.Ct. 2121, 2137, 165 L.Ed. 2d 131 (2006)). “A
federal issue may also be substantial where the resolution of the issue has
‘broader significance . . . for the Federal Government.’ That is, because ‘[t]he
Government has a direct interest in the availability of a federal forum to
vindicate its own administrative action[.]’ [T]he Court has repeatedly suggested
that a federal issue is more likely to be substantial where a claim between two
private parties, though based in state law, directly challenges the propriety of
an action taken by ‘a federal department, agency, or service.’ Municipality of
Mayaguez, 726 F.3d at 13-14 (citing Empire Healthchoice Assurance, 547 U.S.
at 700, 126 S.Ct. 2121. Gunn, 133 S.Ct. at 1066 and Grable, 545 U.S. at 315,
125 S.Ct. 2363).
The plaintiffs’ summary complaints simply do not indicate that their
outcome is important to or of broader significance to the federal system as a

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whole. Nor would it impact the ability of any federal agency to carry out its
business. See e.g. Administracion de Seguros de Salud de Puerto Rico v.
Triple-S Salud, Inc., 212 F. Supp. 3d 283, 288 (D.P.R. 2015). Because
plaintiffs’ claims do not raise a substantial federal question, their removal here
was inappropriate.
III.

CONCLUSION
For the foregoing reasons, plaintiffs’ Motion to Remand (d.e. 30) is

GRANTED.
Having determined that this court lacks jurisdiction over plaintiffs’
summary complaints, third party defendants’ Motion to Dismiss (d.e. 31) filed
on May 28, 2018, moving to dismiss the third party complaint that joined them
to this action, is also GRANTED. “[A] Third Party Complaint cannot serve as
the basis for ‘arising under’ jurisdiction.”

Chang-Nein Ho v. Sie,

No. CIV.A. 12-7857 MAS, 2013 WL 4538221, at *2 (D.N.J. Aug. 27, 2013)
(referring to Franchise Tax Board, 463 U.S., at 9-10, 103 S.Ct., at 2846-2847).
SO ORDERED.
At San Juan, Puerto Rico, on March 12, 2019.

S/CARMEN CONSUELO CEREZO
United States District Judge