Long v. Cordain
2014 COA 177
Colo. Ct. App.2014Background
- Long (former grad student) and Cordain (professor, author of Paleo Diet works) formed Paleo Diet Enterprises, LLC (PDE) under an LLC agreement; Cordain granted PDE an exclusive worldwide license to develop and market products based on his prior written work.
- After a falling out, Cordain dissolved PDE and formed The Paleo Diet, LLC (TPD) without Long; Long sued Cordain in state court for breach of contract, breach of fiduciary duty (derivative), civil theft (derivative), and an accounting.
- Cordain moved to dismiss for lack of subject-matter jurisdiction, arguing the claims "arise under" federal copyright law and thus fall within exclusive federal jurisdiction; the district court granted the motion and dismissed the case.
- Cordain sought attorney fees under Colorado statutes after dismissal; the district court initially awarded fees, then reconsidered and vacated; appeals followed (one appeal from dismissal, one from the fee ruling).
- A related federal action by Long was pending during these appeals; the Colorado Court of Appeals considered whether to stay but declined and addressed the appeals on the state record.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether state court had subject-matter jurisdiction or the claims "arise under" the Copyright Act | Long: claims are state-law (contract, fiduciary breach, civil theft, accounting) and do not require construction of the Copyright Act | Cordain: claims depend on copyright ownership/use under the License and thus arise under federal copyright law, so federal courts have exclusive jurisdiction | Reversed dismissal: state court has jurisdiction; claims are not federal copyright actions |
| Whether breach of contract claim is preempted by Copyright Act | Long: contract claim enforces LLC Agreement and alleges self-dealing, access denial, distribution of assets — extra elements beyond copyright infringement | Cordain: License concerns copyrighted works and royalties, so contract claim effectively seeks copyright remedies | Held not preempted: breach of contract contains extra elements and concerns broader LLC obligations; contract interpretation is state-law matter |
| Whether derivative breach of fiduciary duty and civil theft claims are preempted | Long: derivative duties and theft claims require proof of fiduciary breach/theft — elements distinct from copyright infringement | Cordain: allegations about exploiting copyrighted material make the claims dependent on copyright law | Held not preempted: fiduciary breach and civil theft include extra elements (breach of duty; theft) that change nature of action and fall within state jurisdiction |
| Whether defendant is entitled to attorney fees under Colorado statutes following dismissal | Cordain: statutory fees apply to tort actions dismissed on defendant's motion under C.R.C.P. 12(b) | Long: statutory fee entitlement depends on a dismissal that stands; if dismissal reversed, fees statute doesn’t apply | Because dismissal reversed, fee award vacated; statutes not applicable on reversal |
Key Cases Cited
- Image Software, Inc. v. Reynolds & Reynolds Co., 459 F.3d 1044 (10th Cir. 2006) (adopts Second Circuit approach for determining when a case "arises under" copyright law)
- Jasper v. Bovina Music, Inc., 314 F.3d 42 (2d Cir. 2002) (state courts may determine matters of state law that concern copyrights)
- Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993) (applies the "extra element" test to preemption analysis)
- Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001) (discusses extra-element test and when a state claim is equivalent to a copyright claim)
- T.B. Harms Co. v. Eliscu, 389 F.2d 828 (2d Cir. 1968) (frames the rule that a claim "arises under" copyright law only if it seeks a remedy granted by the Copyright Act or requires construction of the Act)
- Knickerbocker Toy Co. v. Foultless Starch Co., 467 F.2d 501 (C.C.P.A. 1972) (state courts may pass on the validity of a copyright when necessary to decide a state-law case)