Don Johnson Wins State Venue for Royalty Claim


     (CN) – Actor Don Johnson can litigate a dispute over copyright royalties in state court, because the underlying claims do not involve federal law, a federal judge in Los Angeles ruled.




     Johnson, who starred in the 1980s hit show “Miami Vice” and the 1990s television show “Nash Bridges,” filed suit against three companies in state court in California seeking an accounting of royalties Johnson claims he is owed for money earned by the show “Nash Bridges.”
     In 1994 CBS entered into an agreement with Don Johnson Productions (DJP) to buy 22 episodes of “Nash Bridges.” DJP then entered into an agreement with Rysher Entertainment to produce the episodes; under the terms of this agreement DJP was to receive a 50 percent ownership interest in the series if CBS agreed to purchase 66 episodes, the amount necessary for a show to enter syndication. Eventually, 122 episodes of the show were produced and aired between 1996 and 2001.
     The same year the television show ended, Rysher was purchased by 2929 Entertainment, which subsequently sold Rysher to Qualia Capital LLC.
     Johnson filed suit against Rysher, 2929 Entertainment and Qualia Capital in state court, claiming that since 1999 DJP has been denied its half-ownership interest in “Nash Bridges.” DJP also claimed it was contractually entitled to half the gross receipts from the series.
     The defendants removed the case on grounds that the claims were pre-empted by the Copyright Act. DJP moved to remand, saying its claims are entirely based on the term agreement between itself and Rysher.
     U.S. District Judge Margaret Morrow granted the motion.
     “Whether a complaint asserting factually related copyright and contract claims arises under the federal copyright laws poses among the knottiest procedural problems in copyright jurisprudence,” Morrow wrote. “Federal courts have exclusive jurisdiction over any civil action arising under any act of Congress relating to copyrights. At the same time, it is well established that just because a case involves a copyright does not mean that federal subject matter jurisdiction exists.
     Morrow applied the 9th Circuit’s test in T.B. Harms Co. v. Eliscu, which states that “an action arises under the Copyright Act if and only if the complaint is for a remedy expressly granted by the Act … or at the very least and perhaps more doubtfully, presents a case where a distinctive policy of the act requires that federal principles control the disposition of the claim.”
     “DJP’s rights in the Nash Bridges copyright derive entirely from the term agreement; the case is thus essentially a contract dispute,” Morrow concluded.
     The defendants nonetheless argued that an accounting action gives rise to federal question jurisdiction.
     Morrow again pointed to 9th Circuit precedent, this time citing Oddo v. Ries, which held “a suit to bring the co-owner of a copyright to account does not fall within the district court’s jurisdiction over actions arising under the copyright law.”
     The judge dismissed the defendants’ final argument – that state control over copyright ownership would hinder federal copyright law – as “speculative.”
     “Further, courts regularly look to state law to fill gaps left by Congress in the Copyright Act,” Morrow added.
     “More fundamentally, even if defendants’ policy and historical arguments were compelling, the court would still be bound to follow 9th Circuit precedent. Accordingly, DJP’s cause of action for an accounting does not give rise to federal question jurisdiction.”

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