United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
Honorable Patti B. Saris United States District Judge
29, 2018, the Plaintiffs, Open Text Corporation and Open
Text, Inc. (“Open Text”) brought suit against the
defendant, SAS C6 (“C6”), in Massachusetts
Superior Court alleging, among other things, breach of
contract based on an Exclusive License Agreement
(“ELA”) signed by the parties and breach of the
associated covenant of good faith and fair dealing. Under the
ELA, C6 conveyed to EMC Corporation (“EMC”) an
irrevocable exclusive, worldwide and perpetual license to
certain software and any derivative works thereof and
described additional services and software development work
to be provided by C6. EMC subsequently assigned its rights
under the ELA to Open Text.
August 13, 2018, C6 removed the case to the United States
District Court for the District of Massachusetts. C6
contended that this Court had jurisdiction due to diversity
of citizenship pursuant to 28 U.S.C. § 1332 and
jurisdiction because the case raised a question arising under
federal copyright law pursuant to 28 U.S.C. § 1331. The
parties now agree that there is no diversity of citizenship,
so the only remaining ground for jurisdiction is if the case
arises under federal law.
before the Court is Open Text's motion to remand. Open
Text contends that its complaint raises only a contract claim
under state law. C6 argues that Open Text's contract
claim is simply a copyright claim in disguise.
October 25, 2011, EMC and C6 executed the ELA by which C6
conveyed to EMC all rights to a software product known as
“D2.” Dkt. No. 1, Ex. A ¶ 1. D2 is a
web-based application and interface designed for enterprise
content management that allows users to quickly and easily
customize functionality for various business needs, including
content creation, publishing and workflow. Id.
¶ 9. Subsequently, EMC conveyed its rights under the ELA
to Open Text. Id. ¶ 1.
Text alleges that C6 has developed, made, marketed and sold
three products in violation of the ELA: C6 Mobile for D2
(“D2 Mobile”), C6 Office for D2 (“D2
Office”) and C6 Any. Id. ¶ 15.
actions are removable from state court to federal court if
the federal court has original jurisdiction over the action.
28 U.S.C. § 1441. United States district courts have
original jurisdiction of civil actions “arising
under” the laws of the United States, 28 U.S.C. §
1331, as well as of any civil action arising under any act of
Congress relating to copyrights. 28 U.S.C. § 1338.
Whether the claim arises under federal law is determined by
reference to the complaint alone; the existence of a
potential defense based on federal law does not confer a
right to remove. See Caterpillar, Inc. v. Williams,
482 U.S. 386, 399 (1987) (“[A] defendant cannot, merely
by injecting a federal question into an action that asserts
what is plainly a state-law claim, transform the action into
one arising under federal law, thereby selecting the forum in
which the claim shall be litigated.”)
the plaintiff is the master of his claim.
Caterpillar, 482 U.S. at 392; see also The Fair
v. Kohler Die & Specialty Co., 228 U.S. 22, 25
(1913) (“Of course, the party who brings a suit is
master to decide what law he will rely upon....”).
“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.”
Caterpillar, 482 U.S. at 392 (citing Gully v.
First Nat'l Bank, 299 U.S. 109, 112-13 (1936)).
First Circuit has cautioned that “Federal courts, as
courts of limited jurisdiction, should implement federal
preemption doctrines as narrowly as possible....[T]he
Copyright Act does not encompass all claims simply because
the parties' dispute happens to involve a copyrighted
work.” Cambridge Literary Properties, Ltd. v. W.
Goebel Porzellanfabrik G.m.b.H. & Co. KG., 510 F.3d
77, 99-100 (1st Cir. 2007). See also
Venegas-Hernández v. Association De Compositores
Editores De Música Latinoamericana, 424 F.3d 50,
58 (1st Cir. 2005) (“The Copyright Act does not draw
into federal court all matters that pertain to
Text urges the court to find that the ELA is not preempted by
the Copyright Act, arguing that the contract promise and the
conditions underlying the contract constitute extra elements
which distinguish state contract law from federal copyright
law. C6 contends that the exclusive license at issue in ...