9 F.4th 256
5th Cir.2021Background
- Kelley, a makeup artist, contracted with Di Angelo in 2015 for publishing services; Kelley provided a three-page manuscript and Di Angelo allegedly developed, wrote, illustrated, photographed, and laid out the finished Book and an intended update.
- The published Book lists Kelley as the sole copyright holder; Di Angelo claims it acquired copyrights by substantive creative contributions.
- Kelley sued Di Angelo in Harris County alleging Di Angelo misled her on publishing costs and asserting she is the sole owner of all copyrights in the Book; Di Angelo counterclaimed in state court.
- Di Angelo then sued in federal court seeking a declaratory judgment that Di Angelo owns copyrights in the Book and its update, asserting authorship-based ownership that requires construction of the Copyright Act.
- The district court dismissed for lack of federal jurisdiction, reasoning the dispute was contract-based because the contract referenced Kelley as the “author.”
- The Fifth Circuit reviewed de novo and reversed, holding that Di Angelo’s allegations of authorship/co-authorship raise federal copyright questions under 17 U.S.C. § 201 and therefore federal jurisdiction exists.
Issues
| Issue | Plaintiff's Argument (Di Angelo) | Defendant's Argument (Kelley) | Held |
|---|---|---|---|
| Whether the declaratory claim arises under federal copyright law | Di Angelo: claim alleges it wrote/illustrated/photographed and therefore acquired copyrights; resolution requires statutory construction of §201 | Kelley: dispute is contract-based; contract designates Kelley as author so state law governs | Federal jurisdiction exists because alleged authorship/co-authorship requires construction of the Copyright Act |
| Whether the Contract’s reference to Kelley as “author” removes federal question jurisdiction | Di Angelo: contract does not define “author” and allows inference of substantive development; no merger clause; parties may have agreed to collaborative creation | Kelley: contractual language labels Kelley the author and shows parties intended Kelley as sole author | Court: the contract reference does not preclude Di Angelo’s plausible allegations of co-authorship; term “author” is not dispositive at pleading stage |
| Whether disputed rights overlap entirely with contractual remedies (i.e., claim is merely a contract dispute) | Di Angelo: seeks copyright rights in the update not addressed by the Contract (update/revision not covered), so federal adjudication may be required | Kelley: Di Angelo seeks to vindicate contractual rights and is forum-shopping after adverse state-court rulings | Court: Some rights (e.g., rights in the update) are not co-extensive with contractual rights, so copyright determination is not purely contractual |
Key Cases Cited
- Goodman v. Lee, 815 F.2d 1030 (5th Cir. 1987) (declaratory actions to establish joint authorship implicate Copyright Act and federal jurisdiction)
- T. B. Harms Co. v. Eliscu, 339 F.2d 823 (2d Cir. 1964) (articulated test for when claims "arise under" copyright law)
- Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) (disputed co-authorship claims require application of the Copyright Act)
- Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (registration not a prerequisite to hold copyright; discusses aspects of copyright procedural prerequisites)
- Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co. KG., 510 F.3d 77 (1st Cir. 2007) (courts consistently treat contested authorship as a federal question)