DEAD KENNEDYS v. BIAFRA 1151 Cite as 37 F.Supp.2d 1151 (N.D.Cal. 1999) of rock band against fourth member, given DEAD KENNEDYS d/b/a Decay Music, that plaintiffs’ allegations of conversion of, a California general partnership; and failure to pay, royalties did not allege East Bay Ray a/k/a Ray Pepperell; unfair use or conversion of copyrighted Klaus Flouride a/k/a Geoffrey Lyall; works themselves, and, thus, were based D.H. Peligro a/k/a Darren Henley on state contract law. 17 U.S.C.A. § 204. Plaintiffs, 4. Copyrights and Intellectual Property v. O109 Jello BIAFRA a/k/a Eric Reed Boucher, States O18.87 individually and d/b/a Alternative Ten- State law right is completely preempt- tacles Records; Mordam Records, a ed by Copyright Act only if work at issue California business entity; and Does 1 is copyrightable, and state law grants right through 30, inclusive Defendants. equivalent in scope to rights granted under No. C–98–4543 DLJ. copyright. 17 U.S.C.A. § 204. United States District Court, 5. Copyrights and Intellectual Property N.D. California. O79 Feb. 8, 1999. Ownership and title rights are matters of common law and do not arise under Rock band partnership and three of Copyright Act. 17 U.S.C.A. § 204. its four members brought state action against fourth member, alleging breach of David C. Phillips, David M. Given, Paul fiduciary duty, conversion, breach of con- Karl Lukacs, Phillips & Erlewine, LLP, tract, unjust enrichment, and unfair busi- San Francisco, CA, for Dead Kennedys, a ness practices, and seeking damages and California general partnership dba Decay injunctive relief. Fourth member counter- Music, East Bay Ray aka Ray Pepperell, claimed. Upon removal, plaintiffs moved Klaus Flouride aka Geoffrey Lyall, D.H. for remand. The District Court, Jensen, J., Peligro aka Darren Henley, Plaintiffs. held that Copyright Act did not preempt state claims. Michael V. Lirocchi, Lanahan & Reilly LLP, Santa Rosa, CA, Jeffrey A. Berchen- Motion granted. ko, Berchenko & Korn, Paul Raynor Keat- ing, Thomas Kevin Konicek, Lanahan & 1. Copyrights and Intellectual Property Reilley LLP, Marc H. Greenberg, Nelsen O77 Greenberg & Cohen, San Francisco, CA, Co-owners of copyright, and their li- for Jello Biafra, individually aka Eric Reed censees, cannot be liable to one another for Boucher aka Eric Reed dba Alternative infringement of that copyright as matter of Tenacles Records, Mordam Records, a law. California Business entity, defendants. 2. Copyrights and Intellectual Property O79 ORDER Action for accounting or determina- JENSEN, District Judge. tion of ownership as between alleged co- On February 3, 1999, the Court heard owners of copyright is founded in state law argument on plaintiffs’ motion to remand and does not arise under copyright laws. this case to the state courts. David M. 3. Copyrights and Intellectual Property Given and Paul Karl Lukacs appeared on O107 behalf of plaintiffs; Paul Raynor Keating States O18.87 appeared for defendant Jello Biafra. Hav- Copyright Act did not preempt state ing considered the arguments of counsel, claims brought by three of four members the papers submitted, the applicable law, 1152 37 FEDERAL SUPPLEMENT, 2d SERIES and the record in this case, the Court his approval or the existence of a court hereby GRANTS the motion. order requiring him to release the funds. On October 29, 1998, plaintiffs brought I. BACKGROUND an action in San Francisco Superior Court A. Factual Background and Procedural against Mordam Records and against Biaf- History ra, both in his status as an individual and Plaintiffs are Decay Music, a general as the owner of the sole proprietorship 1 partnership, and three of its four partners. Alternative Tentacles Records. The com- The four partners in Decay Music once plaint alleges seven state law causes of comprised the rock music band called the action: (1) a declaratory judgment that Dead Kennedys. The three individual Decay Music validly terminated Alterna- plaintiffs are three of the former members tive Tentacles’ right to exploit the Catalog; of the Dead Kennedys and three of the (2) breach of Biafra’s fiduciary duties to partners in Decay Music: East Bay Ray, his partners through self-dealing; (3) con- Klaus Flouride, and D.H. Peligro. Defen- version by Biafra of income that rightfully dant is the fourth member and partner, belongs to the partnership; (4) breach of Jello Biafra. All of the parties are Califor- the oral agreement that transferred own- nia domicilaries. In 1986, the band ended ership of Alternative Tentacles to Biafra its recording and touring activities because from Decay Music; (5) unjust enrichment of differences among the band members. of Biafra at the expense of his partners; (6) engagement in unfair business prac- Decay Music was formed as a California tices by Biafra and Mordam Records; and general partnership in 1981 by the four (7) injunctive relief to preserve Decay Mu- members of the Dead Kennedys. The four sic’s exclusive rights to exploit the Catalog band members are equal partners, each having a one-quarter voting and ownership against Biafra and Mordam. interest. Plaintiffs describe Decay Music Defendant Mordam counter-claimed in as the ‘‘exclusive business and administra- interpleader for resolution of to whom it tive entity for all Dead Kennedys business should pay royalties: Decay Music or Al- endeavors.’’ Complaint ¶ 12. Plaintiffs ternative Tentacles. Mordam distributes claim Decay Music has exclusive rights records at wholesale for Alternative Tenta- over the Dead Kennedys’ musical composi- cles pursuant to an oral agreement with tions and sound recordings (‘‘the Catalog’’). Biafra. Mordam has filed a notice of non- In 1979, the Dead Kennedys formed Al- opposition to the motion to remand. ternative Tentacles to act as their own Defendant Biafra removed the case to record label. An oral agreement in 1986 federal court on the basis that the com- among the band members transferred plaint, in particular counts one and seven, ownership of Alternative Tentacles from pled a claim arising under the Copyright Decay Music to Biafra individually. On Act. As one of his affirmative defenses, September 30, 1998, plaintiffs met during a Biafra contends that plaintiffs’ claims are Decay Music partnership meeting and on a barred in whole or in part by Biafra’s 3–0 vote terminated Alternative Tentacles’ rights as an author in the sound and video right to administer and exploit the Cata- recordings and in the underlying musical log, effective October 1, 1998. Biafra compositions. According to Biafra, he re- claims that he offered to send a proxy to tained individual title to his rights in the the meeting, which he was unable to at- works and licensed his rights to Alterna- tend, but that his offer was refused. tive Tentacles. Biafra claims that Decay Around October 23, 1998, Biafra paid a Music merely acts as an administrator for sum of royalties into a trust account. He the purposes of distributing royalties and conditioned release of that money to the that the partnership has no rights in the partnership and the individual partners on underlying works. 1. Plaintiffs also filed suit against Does 1 through 30, who are not yet before the Court. DEAD KENNEDYS v. BIAFRA 1153 Cite as 37 F.Supp.2d 1151 (N.D.Cal. 1999) Biafra has counterclaimed with ten granted by the [Copyright] Act’’; (2) the causes of action: (1) declaratory judgment complaint ‘‘asserts a claim requiring con- that he is an author with rights in the struction of the Act’’; or (3) the case works that have not been assigned or li- ‘‘presents a case where a distinctive policy censed and which he is free to exercise; of the Act requires that federal principles (2) breach of fiduciary duty; (3) breach of control the disposition of the case.’’ See contract; (4) conversion; (5) defamation; id. (quoting T.B. Harms Co. v. Eliscu, 339 (6) intentional inducement of breach of F.2d 823, 828 (2d Cir.1964)). ‘‘Contract contract; (7) intentional interference with questions that depend on common law or prospective economic advantage; (8) con- equitable principles belong in state court.’’ spiracy; (9) unfair competition under Cali- Dolch v. United Cal. Bank, 702 F.2d 178, fornia Business and Professions Code 180 (9th Cir.1983) (addressing the validity § 17200; and (10) injunctive relief under of an assignment). the Copyright Act. [1, 2] Co-owners of a copyright, and Plaintiffs now move to have the case their licensees, cannot be liable to one remanded to state court for lack of federal another for infringement of that copyright subject matter jurisdiction. as a matter of law. See Oddo v. Ries, 743 F.2d 630, 632 (9th Cir.1984).2 ‘‘[E]ach co- B. Legal Standard owner has an independent right to use or ‘‘Only state-court actions that originally license the use of the copyrights.’’ See id. could have been filed in federal court may at 633. An action for an accounting or be removed to federal court by the defen- determination of ownership as between al- dant. Absent diversity of citizenship, fed- leged co-owners is founded in state law eral-question jurisdiction is required.’’ and does not arise under the copyright laws. See id. These rules apply whether Caterpillar Inc. v. Williams, 482 U.S. 386, co-ownership arises from joint authorship 392, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987); or through co-ownership of rights through see 28 U.S.C. § 1441 (removal jurisdiction). a partnership. See id. To invoke federal-question jurisdiction, this action must ‘‘arise under federal copy- II. DISCUSSION right law.’’ Vestron, Inc. v. Home Box All of the parties to this action are Cali- Office, Inc., 839 F.2d 1380, 1381 (9th Cir.