Gordon v. Kaiser Foundation Health Plan, Inc.

• Court: District Court, S.D. California
• Decided: December 15, 2023
• Docket: 3:23-cv-01507
• Status: Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 NANCY M. GORDON, an individual, Case No.: 23-cv-01507 W (SBC)

12 Plaintiff, ORDER (1) GRANTING IN PART 13 v. MOTION TO DISMISS [DOC. 6]; (2) GRANTING MOTION TO 14 KAISER FOUNDATION HEALTH REMAND [DOC. 5]; AND PLAN, INC., a California Corporation; 15 (3) REMANDING CASE TO THE KARA W. BARNETT; and SHETAL M. SAN DIEGO SUPERIOR COURT 16 PATEL, 17 Defendants. 18 19 Defendants removed this action from the San Diego Superior Court on August 16, 20 2023. (See Notice of Removal [Doc. 1].) Plaintiff Nancy M. Gordon moves to remand. 21 (Mot. [Doc. 5].) Defendants Kaiser Foundation Health Plan, Kara W. Barnett, and Shetal 22 M. Patel oppose the motion (Opp’n [Doc. 8]) and move to dismiss under Federal Rule of 23 Civil Procedure 12(b)(6) (MTD [Doc. 6]). 24 The Court decides the matter on the paper submitted and without oral argument. 25 See Civ. L.R. 7.1(d)(1). For the reasons stated below, the Court GRANTS IN PART 26 Defendants’ motion to dismiss [Doc. 6] and GRANTS Plaintiff’s motion to remand 27 [Doc. 5]. 28 1 I. BACKGROUND 2 According to the Complaint, Plaintiff Nancy M. Gordon is a licensed clinical 3 social worker and certified life coach who writes self-help books based on her personal 4 traumatic experiences. (Compl. ¶ 8.1) In approximately October 2014, Gordon created 5 and published 7 STEPS of HOPE Healing the Emotional, Mental, and Spiritual Impact of 6 Chronic Illness and Disability (the “Workbook”). (Id.) 7 In 2015, Gordon attended physical therapy at one of Defendant Kaiser Foundation 8 Health Plan, Inc.’s facilities to help manage her pain. (Compl. ¶ 9.) While in physical 9 therapy, she discussed her Workbook and desire to market it with her physical therapist, 10 who recommended she speak to a therapist in the pain department. (Id.) Gordon alleges 11 that her intent at all times was to offer the use of the concepts in her Workbook and/or her 12 services in exchange for compensation. (Id. ¶ 9.) 13 During a subsequent phone call between Gordon and Defendant Kara W. Barnett, a 14 physical therapist in Kaiser’s pain department, Barnett “expressed” Kaiser’s interest in 15 the Workbook for their pain program and asked to borrow it. (Compl. ¶ 10.) After lending 16 the Workbook to Barnett, the two met for lunch and Barnett asked if she could keep the 17 Workbook longer to show it to other decision-making authorities. (Id. ¶ 11.) Gordon 18 declined but agreed to sell the Workbook instead. (Id.) Gordon believes Defendant Shetal 19 M. Patel was one of the people who saw the Workbook. (Id.) 20 Subsequently, Gordon and Barnett met again for lunch. (Compl. ¶ 12.) At this 21 meeting, Gordon had Barnett execute a Nondisclosure Agreement (NDA) with the 22 intention of “prevent[ing] unauthorized use or disclosure of Plaintiff’s materials without 23 an agreement to pay for the same, including, without limitation, the Workbook.” (Id.) 24 Gordon also rescinded the sale of the Workbook and, “after a few months, returned the 25 money to defendant BARNETT, and acquired the Workbook back.” (Id. ¶ 13.) When 26 27 28 1 Gordon “requested the return of the Workbook, defendant BARNETT requested 2 [Gordon] destroy the NDA claiming additionally that, ‘I have not shared any of your 3 information.’” (Id.) 4 Gordon left Kaiser in 2018, but returned as a patient in January 2021. (Compl. ¶ 5 14.) While attending the program, Gordon realized the “content being used by defendants 6 BARNETT and PATEL for the pain program was the same as, or, at least, substantially 7 similar to, the content of her Workbook, including, but not limited to, the same phrases, 8 sentences, questions, and exercises.” (Id.) Gordon, therefore, alleges Barnett 9 misrepresented nonuse, and contends Defendants never credited her as the source of the 10 content or provided compensation for using her Workbook to help create the content for 11 the six-week pain program. (Id. ¶¶ 15, 16) 12 On June 15, 2023, Gordon filed this lawsuit in the San Diego Superior Court. The 13 Complaint asserts nine causes of action for: (1) Breach of Implied Contract; (2) Quasi- 14 Contract (Assumpsit); (3) Monetary and Punitive Damages Resulting from Fraud and 15 Deceit – Intentional Misrepresentation, Nondisclosure, and/or Concealment/Suppression; 16 (4) Monetary Damages Resulting from Fraud and Deceit – Negligent Misrepresentation; 17 (5) Intentional Infliction of Emotional Distress; (6) Negligent Infliction of Emotional 18 Distress; (7) Monetary Damages for Negligence; (8) Injunction and Restoration of 19 Money and/or Property Resulting from Violation of Business & Profession Code § 20 17200; and (9) Civil Conspiracy. (See Compl.) 21 On August 16, 2023, Defendants removed the case to this Court based on federal 22 question jurisdiction, 28 U.S.C. § 1331. (Notice of Removal ¶ 4.) Although the Complaint 23 does not assert any federal claims, Defendants contend all of Gordon’s causes of action 24 are preempted by the Copyright Act, 17 U.S.C. § 301(a). (Id.) 25 On September 5, 2023, Gordon filed the motion to remand. (See Remand Mot. 26 [Doc 5].) On September 11, 2023, Defendants filed the motion to dismiss. (See MTD 27 [Doc. 6].) 28 1 II. LEGAL STANDARD 2 A. Motion to Remand 3 The removal statute, 28 U.S.C. § 1441, allows a defendant to remove an action 4 when a case originally filed in state court presents a federal question or is between 5 citizens of different states, involving an amount in controversy that exceeds $75,000. See 6 28 U.S.C. §§ 1331, 1332(a), 1441(a)-(b), 1446. “Absent diversity of citizenship, federal- 7 question jurisdiction is required.” Caterpillar Inc. v. Williams, 482 U.S. 386, 392 (1987). 8 Only state court actions that could originally have been filed in federal court can be 9 removed. 28 U.S.C. § 1441(a); Caterpillar Inc., 482 U.S. at 392. 10 The Ninth Circuit strictly construes the removal statute “against removal 11 jurisdiction,” and “[f]ederal jurisdiction must be rejected if there is any doubt as to the 12 right of removal in the first instance.” Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th 13 Cir.1992). The strong presumption against removal jurisdiction means that the defendant 14 always has the burden of establishing that removal is proper. Id. 15 Federal question jurisdiction is governed by the well-pleaded complaint, providing 16 that federal jurisdiction exists only when a federal question is presented on the basis of 17 the plaintiff’s properly pleaded complaint. Caterpillar Inc., 482 U.S. at 392. “It must be 18 clear from the face of plaintiff’s well-pleaded complaint that there is a federal question.” 19 Swipe & Bite, Inc. v. Chow, 147 F. Supp. 3d 924, 929 (N.D. Cal. 2015) (quoting Duncan 20 v. Stuetzle, 76 F.3d 1480, 1485 (9th Cir. 2010)). A plaintiff “may not defeat removal by 21 omitting to plead necessary federal questions in a complaint.” Regents of University of 22 California v. Aisen, 143 F.Supp.3d 1055, 1056-57 (S.D. Cal. 2015) (quoting JustMed v. 23 Byce, 600 F.3d 1118, 1124 (9th Cir. 2010)). While generally an affirmative defense may 24 not serve as the basis for federal question jurisdiction, federal copyright preemption does. 25 See Dielsi v. Falk, 916 F.Supp. 985, 993 (C.D.Cal. 1996) (citing Caterpillar, Inc. v. 26 Williams, 482 U.S. 386, 392 (1987) and Rosciszewski v. Arete Associates, Inc., 1 F.3d 27 225, 232–33 (4th Cir. 1993)). 28 1 B. Motion to Dismiss 2 Federal Rule of Civil Procedure 12(b)(6) allows a defendant to file a motion to 3 dismiss for failing “to state a claim upon which relief can be granted.” Fed.R.Civ.P. 4 12(b)(6). To survive dismissal, a complaint must contain “a short and plain statement of 5 the claim showing that the pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). To do so, it 6 must offer sufficient factual allegations that, if true, “raise the right to relief above the 7 speculative level” and render the claim “plausible on its face.” Bell Atl. Corp. v. 8 Twombly, 550 U.S. 554, 555, 570 (2007). “A claim has facial plausibility when the 9 pleaded factual content allows the court to draw the reasonable inference that the 10 defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 663 11 (2009) (citing Twombly, 550 U.S. at 556). If, however, the “well-pleaded facts do not 12 permit the court to infer more than the mere possibility of misconduct, the complaint has 13 alleged—but it has not ‘show[n]’—‘that the pleader is entitled to relief.’” Id. at 679 14 (alteration in original) (citation omitted). 15 In evaluating the motion, the court “must accept all well-pleaded material facts as 16 true and draw all reasonable inferences in favor of the plaintiff.” Caltex Plastics, Inc. v. 17 Lockheed Martin Corp., 842 F.3d 1156, 1159 (9th Cir. 2016). But this presumption of 18 validity does not extend to legal conclusions couched as facts, unwarranted deductions, or 19 unreasonable inferences. Papasan v. Allain, 478 U.S. 265, 286 (1986); Sprewell v. 20 Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). Thus, the pleading analysis 21 requires the court to eliminate all of plaintiff’s conclusory allegations and evaluate the 22 remaining claims for facial plausibility. 23 24 III. DISCUSSION 25 Gordon moves to remand arguing that removal was improper because the 26 Complaint does not contain any federal causes of action and thus there is no federal 27 question jurisdiction. (Remand P&A [Doc. 5-1] at 1–15.) Defendants oppose arguing that 28 1 removal was proper because the Federal Copyright Act preempts all of Gordon’s state- 2 based causes of action. (Remand Opp’n [Doc. 8] at 1:2—6.) For the same reason, 3 Defendants seek to dismiss all of Gordon’s causes of action. (MTD P&A [Doc. 6-1] at 4 1:7–12.) Accordingly, resolution of both motions turns in whether Gordon’s causes of 5 action are preempted by the Copyright Act. 6 7 A. Preemption Analysis 8 The Copyright Act provides that “Congress shall have the Power … To promote 9 the Progress of Science and useful Arts, by securing for limited Times to Authors and 10 Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const. 11 art. 1, § 8, cl. 8. Pursuant to this authority, Congress enacted the Copyright Act, 17 12 U.S.C. §§ 101–1332, to define and protect the rights of copyright holders. For instance, 13 under the Act, the owner of a copyright has exclusive rights to do and to authorize others 14 to display, perform, reproduce, distribute, and prepare derivative works. 17 U.S.C. § 106. 15 Because Congress intended federal law to occupy the entire field of copyright, Section 16 301(a) of the Act preempts all state-based causes of action as follows: 17 all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of 18 authorship that are fixed in a tangible medium of expression and come 19 within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or 20 unpublished, are governed exclusively by this title. 21 Id. 22 A two-part test is used to determine whether a state-law cause of action is 23 preempted by the Copyright Act. See Laws v. Sony Music Ent., Inc., 448 F.3d 1134, 1137 24 (9th Cir. 2006); see also Maloney v. T3Media, Inc., 853 F.3d 1004, 1010 (9th Cir. 2017). 25 First, the court must determine whether the subject matter of the state law claim falls 26 within the subject matter of copyright as described in 17 U.S.C. §§ 102–103. Laws, 448 27 F.3d at 1137. Second, the court must determine whether the rights asserted under the 28 1 state-law cause of action are equivalent to the rights contained in 17 U.S.C. § 106. Id. at 2 1137–38. 3 4 1. The subject matter of Gordon’s state-law causes of action. 5 The first prong in the preemption analysis is whether Gordon’s causes of action 6 “come within the subject matter of copyright.” 17 U.S.C. § 201(b). Relevant to this 7 issue is that “the scope of the subject matter of copyright law is broader than the 8 protections it affords.” Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975, 979 (9th 9 Cir. 2011) (citing 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON 10 COPYRIGHT § 19D.03[A][2][b] (rev. ed. 2010)). Thus, state-law claims that are not 11 preempted under the second prong of the analysis may still fall within the subject-matter 12 of copyright. Id. (“state-law protection for fixed ideas falls within the subject matter of 13 copyright… despite the exclusion of fixed ideas from the scope of actual copyright 14 protection.”) The central issue is whether the claim is based on ideas that have been 15 written down: “Ideas that are still purely airborne are… not even within the subject 16 matter of copyright. Once an idea has been written down or otherwise recorded… we 17 have recognized that it satisfies the Copyright Act’s writing requirement because it is 18 fixed in a tangible medium.” Id. (citing In re World Auxiliary Power Co., 303 F.3d 1120, 19 1131 (9th Cir. 2002)). 20 Gordon argues her causes of action are not within the subject matter of copyright 21 because she is not suing Defendants “for distributing portions of her Workbook in a pain 22 management program (a copyright claim), but for abusing the relationship of confidence 23 reposed in Defendants by using her system, process, or method in a workshop setting….” 24 (Remand Reply [Doc. 9] at 2:6–9; MTD Opp’n [Doc. 10] at 4:13–16.) But Defendants’ 25 alleged abuse of confidence is premised on their use of her system, process, or ideas that 26 are “fixed” in her Workbook. For example, the Complaint alleges that Defendants used 27 “the content of her Workbook, including, but not limited to, the same phrases, sentences, 28 questions, and exercises.” (Compl. ¶ 14.) Each of the causes of action then reference 1 Defendants’ use of the Workbook, its content or materials. (Id. ¶¶ 25, 27, 29, 30, 37, 38, 2 46, 55.) Accordingly, the Court finds Gordon’s causes of action all fall within the subject 3 matter of copyright. 4 5 2. Equivalent rights analysis. 6 The second prong of the preemption analysis focuses on whether Gordon’s state- 7 law causes of action “assert rights that are qualitatively different from the rights protected 8 by copyright: whether the asserted state right is equivalent to any of the exclusive rights 9 within the general scope of copyright.” Montz, 649 F.3d at 980 (citing Grosso v. Miramax 10 Film Corp., 383 F.3d 965, 968 (9th Cir. 2004)). In other words, to “survive preemption, a 11 state cause of action must assert rights that are qualitatively different from the rights 12 protected by copyright.” Id. 13 To determine whether the state law claims are equivalent, courts look for an extra 14 element that is required in addition to or in place of reproduction, performance, 15 distribution, or display of derivative works protected under Section 106. Laws, 448 F.3d 16 at 1137–1138. If a state law claim includes an extra element that makes the rights 17 asserted qualitatively different from those protected under the Copyright Act, the state 18 law claim is not preempted. Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 (9th 19 Cir. 2005). But the additional element must transform the nature of the action. Laws, 448 20 F.3d at 1145. This means that even if the elements of the state law cause of action differ 21 from those of a copyright action, if the underlying nature of the state law cause of action 22 is part and parcel of a copyright claim, then it is preempted. Id. 23 24 i. First Cause of Action: Breach of Implied Contract 25 Gordon argues her cause of action for breach of implied contract is not preempted 26 under Desny v. Wilder, 46 Cal. 2d 715, 738 (1956). (Remand Reply at 5:1–18; MTD 27 Opp’n at 7:10–27.) Defendants argue Desny does not apply because her claim is not 28 1 based on the “procurement of Plaintiff’s idea… but rather the unauthorized use of parts of 2 Plaintiff’s copyrighted Workbook….” (Remand Opp’n at 11:14–19.) 3 A Desny claim for breach of an implied contract is not preempted by the Copyright 4 Act. Montz, 649 F.3d at 976. To plead a Desny claim, the plaintiff must allege facts 5 showing “that the plaintiff prepared the work, disclosed the work to the offeree for sale, 6 and did so under circumstances from which it could be concluded that the offeree 7 voluntarily accepted the disclosure knowing the conditions on which it was tendered and 8 the reasonable value of the work.” Grosso, 383 F.3d at 968. In Montz, the Ninth Circuit 9 explained that the “essential element” for a Desny claim is demonstrating a “bilateral 10 expectation that [plaintiff] would be compensated for use of the idea.” Id. at 977. The 11 bilateral expectation of payment “constitutes an additional element that transforms a 12 claim from one asserting a right exclusively protected by federal copyright law, to a 13 contractual claim that is not preempted by copyright law.” Id. at 976 (citing Grosso, 383 14 F.3d 965 (9th Cir. 2004)). However, if disclosure occurs before it is known that 15 compensation is a condition for use of the idea, no contract will be implied. Landsberg v. 16 Scrabble Crossword Game Players, Inc., 802 F.2d 1193, 1196 (9th Cir. 1986). 17 Here, the Complaint alleges Gordon “created the Workbook from her personal 18 knowledge and experience and published the Workbook.” (Compl. ¶ 8.) In short, Gordon 19 prepared the work. Next, the Complaint alleges Gordon “discussed her Workbook and 20 desire to market it and her services for remuneration with her physical therapist who 21 recommended that she speak to defendant BARNETT.” (Id. ¶ 9, emphasis added.) This 22 allegation is sufficient to establish that Gordon disclosed the work to Defendants for sale. 23 Finally, the Complaint alleges Defendants “accepted the Workbook with the 24 understanding that Plaintiff wanted to market her materials and services and work 25 together with said defendants for compensation.” (Id. ¶ 19.) This indicates that 26 Defendants voluntarily accepted Gordon’s disclosure of the Workbook and understood 27 the conditions on which it was tendered to them. Based on these allegations, Gordon has 28 alleged a Desny claim for breach of an implied contract. 1 Defendants nevertheless argue that Desny does not apply because Gordon’s claims 2 “stem from the use and/or distribution of Plaintiff’s copyrighted work without permission 3 and/or compensation.” (MTD P&A at 8:14–17.) According to Defendants, where, “as in 4 this case, … an implied contract purports to regulate the right to reproduce, distribute, 5 and/or sell copyrighted works, such an implied contract is found to involve rights 6 ‘equivalent’ to those protected by the Copyright Act.” (Remand Opp’n at 10:2–5.) In 7 support of this argument, Defendants point to “[n]umerous federal decisions analyzing 8 state claims under ‘implied contact’ theories [that] have held such state claims are 9 preempted by the Copyright Act.” (Id. at 10:24–11:4.) 10 The problem with Defendants’ argument is that the “numerous federal [district 11 court] decisions” cited predate the Ninths Circuit’s decisions in Grosso (2004) and Montz 12 (2011) and, therefore used a different approach to evaluate the equivalent-rights prong. 13 For example, in Selby v. New Line Cinema Corp., 96 F.Supp.2d 1053 (C.D. Cal. 2000), 14 the district court began its analysis by recognizing that “the Ninth Circuit has not decided 15 under what circumstance, if any, the [Copyright] Act preempts a claim for breach of an 16 express contract or implied-in-fact contract.” Id. at 1059. As a result, the district court 17 was forced to come-up with an approach for evaluating the issue. Id. at 1061. The court 18 settled on a “fact-specific approach” requiring an analysis of whether “the right in 19 question is ‘infringed by the mere act of reproduction, performance, distribution or 20 display.’” Id. (citing National Car Rental v. Computer Associates, 991 F.2d 426, 431 21 (1993)). Ultimately, the court found the claim was preempted because the “alleged 22 implied-in-fact contract between Selby and defendants did not regulate the parties’ 23 conduct beyond mere use of Selby’s ideas,” and therefore “the rights protected by that 24 contract were equivalent to the exclusive rights protected by the Act.” Id. at 1062. 25 In the context of a breach of implied contract claim, Selby’s approach seems to be 26 at odds with Grosso or Montz, which both emphasize that the critical issue is whether 27 there existed a bilateral understanding of payment before the idea or manuscript was 28 shared with the defendant. See Montz, 649 F.3d at 976 (citing Grosso, 383 F.3d 965 (9th 1 Cir. 2004)). Moreover, Montz cited Selby as an example of a time when litigation moved 2 from California courts to federal courts as “defendants … hoped for greater success in 3 pressing the copyright preemption issue.” Id. at 980. Montz explained, however, that 4 after Selby, another “district court held that an implied-in-fact contract claim survived 5 Copyright Act preemption because it was substantively different from a copyright claim.” 6 Id. at 980–981 (citing Groubert v. Spyglass Entm’t Group, 2002 WL 2031271, at *4 7 (C.D.Cal. July 23, 2002)) Montz explicitly stated: “[w]e agreed with this [i.e., 8 Groubert’s] assessment when we decided in Grosso that copyright law does not preempt 9 an implied contractual claim to compensation for use of a submitted idea. We reaffirm 10 that rule today.” Id. at 981. Thus, neither Selby nor the other district court cases 11 Defendants cite (most of which rely on Selby) reflect the current state of this Circuit’s 12 equivalent-rights analysis in the context of breach of implied contract causes of action. 13 Next, Defendants argue Desny does not apply because Gordon’s breach of contract 14 claim is based on their alleged use of the Workbook as opposed to the ideas expressed in 15 the Workbook. (Remand Opp’n at 11:5–13.) As support, Defendants point out that “the 16 word ‘idea’ cannot even be found in the Complaint.” (Id. at 11:14–16.) The Court is not 17 persuaded for several reasons. 18 First, the elements set forth in Grosso for a Desny claim do not include alleging the 19 use of an idea. Instead, Grosso instructs that plaintiff must establish he or she “prepared 20 the work, disclosed the work to the offeree for sale, and did so under circumstances from 21 which it could be concluded that the offeree voluntarily accepted the disclosure knowing 22 the conditions on which it was tendered and the reasonable value of the work.” Id., 383 23 F.3d at 968. The court’s reference to “the work” is at odds with Defendants’ hyper- 24 technical argument that Gordon’s reference to Defendants’ use of her Workbook as 25 opposed to the ideas in her Workbook make Desny inapplicable. 26 Second, similar to Gordon’s claim, both Grosso and Montz involved implied 27 breach of contract claims that followed plaintiff’s submission of written manuscripts to 28 defendants. In Grosso, the ideas were taken from a screenplay entitled The Shell Game 1 that plaintiff provided to defendants. Id. 383 F.3d at 967. In Montz, plaintiff’s idea was 2 embodied in screenplays, videos and other material. Id. 649 F.3d at 977; see also 3 Landsberg v. Scrabble Crossword Game Players, Inc., 802 F.2d 1193 (9th Cir. 1986) 4 (finding breach of implied contract claim not preempted because plaintiff’s “initial 5 disclosure of his manuscript was confidential and for the limited purpose of obtaining 6 approval for the use of the Scrabble mark.”). 7 Third, Defendants fail to cite any authority supporting the theory that a Desny 8 claim requires plaintiff to allege use of an idea opposed to use of the manuscript. And 9 finally, while Gordon’s Complaint is not a model of clarity on this issue, she alleges her 10 “express intent at all times … was to offer the use of the concepts contained in her 11 Workbook and/or services in exchange for compensation….” (Compl. ¶ 9, emphasis 12 added.) Based on this allegation, it is reasonable to infer that Gordon is suing for 13 Defendants’ use of the “concepts” in her Workbook. 14 For all these reasons, the Court finds Gordon’s breach of the implied contract 15 claim is not preempted under Desny. 16 17 ii. Second Cause of Action: Quasi-Contract 18 Gordon’s second cause of action is for quasi contract, as an alternative to the 19 breach of implied contract. Defendants raise the same preemption arguments with 20 respect to this claim. (See Remand Opp’n at 12:1–22; See MTD P&A at 9:12–10:5.) For 21 the reasons stated above, the Court finds the quasi contract claim is not preempted. 22 23 iii. Third and Fourth Causes of Action: Fraud and Deceit- 24 Intentional and Negligent Misrepresentation 25 Gordon contends her fraud, and intentional and negligent misrepresentation causes 26 of action are not preempted because the misrepresentation or deception element is not a 27 part of a copyright cause of action. (Remand Reply at 6:3–5.) Gordon also argues her 28 claim differs given her relationship with Defendants as a Kaiser member (i.e., patient) 1 and use of the NDA. (Id.) Defendants argue Gordon’s misrepresentation claims are 2 preempted because they are entirely premised on rights protected by the Copyright Act. 3 (Remand Opp’n at 19:7–8.) 4 Under California law, misrepresentation is a necessary element of any fraud claim. 5 Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 776 (9th Cir. 1989). In general, the 6 Copyright Act does not preempt common law or statutory fraud claims because 7 misrepresentation is a necessary element. Id. at 776. However, to the extent the 8 misrepresentation claim is merely reasserting defendant’s liability for copyright, it is 9 preempted. McCormick v. Sony Pictures Entm't, 2008 WL 11336160, at *10 (C.D. Cal. 10 Nov. 17, 2008). 11 In Valente-Kritzer, the Ninth Circuit found that plaintiff’s allegation that defendant 12 “intentionally misrepresented its intent to perform the contract” was sufficient to 13 establish that the fraud cause of action was not substantially equivalent to a claim for 14 copyright infringement. Id., 881 F.2d at 776. Relying on this holding, the district court in 15 Dielsi found plaintiff’s fraud and negligent misrepresentation causes of action were not 16 preempted because he alleged that “Defendants fraudulently promised not to violate his 17 authorship rights.” Id., 916 F. Supp. at 992. 18 Here, Gordon’s fraud, and intentional and negligent misrepresentation claims 19 allege that Defendants made the following false statements in relation to the NDA: 20 … that they would keep such information in strictest confidence, restrict access, and not (without Plaintiff’s approval) use, publish, copy, or 21 otherwise disclose it, or permit others to use it, and to return it to Plaintiff 22 upon request; and then represented to Plaintiff that they had not shared the materials with others (while simultaneously requesting that Plaintiff destroy 23 the NDA). 24 (Compl. ¶¶ 29, 30, 37, 38, emphasis added.) This allegation is analogous to the 25 allegations in Valente-Kritzer and Dielsi. Because the “element of misrepresentation … is 26 irrelevant to the cause of action for copyright infringement,” these causes of action are 27 28 1 not preempted. Tracy v. Skate Key, Inc., 697 F.Supp. 748, 751 (S.D. N.Y. 1988) (cited 2 with approval in Valente-Kritzer, 881 F.2d at 776). 3 4 iv. Fifth and Sixth Causes of Action: Intentional and Negligent 5 Infliction of Emotional Distress 6 Defendants argue Gordon’s intentional infliction of emotional distress (“IIED”) 7 and negligent infliction of emotional distress (“NIED”) causes of action are preempted 8 because they rely solely on the alleged unauthorized use and distribution of her 9 Workbook, and do not contain an extra element that transforms the nature of the claims 10 beyond copyright infringement. (Remand Opp’n at 20:25–27.) Gordon responds that the 11 claims are not preempted because they are “based on the abuse of a confidential 12 relationship and Defendants’ actions towards Plaintiff as a member-patient (‘extra 13 element’), and not on the mere infringement of Plaintiff’s Workbook.” (Remand Reply at 14 6:7–10.) 15 In Giddings v. Vison House Prod., Inc., 2007 WL 2274800, at *2 (D. Ariz. Aug. 7, 16 2007), the district court evaluated whether the intentional infliction of emotional distress 17 cause of action was preempted. In finding the claim was preempted, the court explained: 18 “[a]lthough the Ninth Circuit has never ruled on this particular issue, courts in other 19 circuits have held that a claim is still preempted if the required extreme and outrageous 20 conduct is rooted in the unauthorized reproduction and distribution of the plaintiff's 21 work.” Id. at *2; see also Evans v. NBCUniversal Media, LLC, 2021 WL 5413624 22 (C.D.Cal. July 23, 2021) (finding plaintiff’s IIED and NIED claims preempted because 23 the claims arise from defendants’ alleged infringement of plaintiff’s screenplay); Mills v. 24 Alphabet Inc., 2018 WL 1569838 (S.D.N.Y. March 20, 2018) (finding plaintiff’s claims 25 for IIED and NIED preempted because they “arise from the same underlying conduct as 26 his copyright infringement claim—that Defendants copied and used Plaintiff’s purported 27 work without permission—and do nothing more than seek to vindicate the same rights 28 1 that federal copyright law protect.”). Although not bound by these cases, this Court 2 agrees with their analysis. 3 Gordon’s IIED and NIED causes of action allege Defendants “obtained and held 4 onto Plaintiff’s Workbook (causing Plaintiff to believe she would be compensated 5 therefor), claimed they were uninterested therein, and then used Plaintiff’s Workbook 6 without permission demonstrating an intent to cause severe emotional distress to Plaintiff 7 and/or they acted in a conscious disregard of the probability that Plaintiff would suffer 8 severe emotional distress.” (Compl. ¶ 46.) Because the conduct causing the severe 9 emotional distress is rooted in Defendants’ unauthorized use of Gordon’s Workbook, her 10 IIED and NIED claims are preempted. 11 Nor is the Court persuaded by Gordon’s contention that the confidential nature of 12 her relationship with Defendants changes the nature of her claims. In Del Madera 13 Properties v. Rhodes and Gardner, Inc., 820 F.2d 973 (9th Cir. 1987), the plaintiff sued 14 for unfair competition, alleging misappropriation of time and effort in creating the 15 copyrighted materials and supporting documents. Id. at 977. Plaintiff argued the claim 16 was not preempted because the misappropriation was based on the breach of a fiduciary 17 duty, which was induced by defendants. The Ninth Circuit rejected plaintiff’s argument: 18 This argument, however, does not add any ‘extra element’ which changes the nature of the action. The argument is constructed upon the premise that 19 the documents and information McCart furnished to the defendants belonged 20 to Del Madera and were misappropriated by the defendants. Del Madera’s ownership of this material, and the alleged misappropriation by the 21 defendants, are part and parcel of the copyright claim. Thus, Del Madera’s 22 unfair competition claim for misappropriation of its time and effort expended in producing the Tentative map and supporting documents is 23 preempted. 24 Id. at 977. Under Del Madera, the proper focus of the equivalent-right prong is not the 25 nature of the parties’ relationship, but on the conduct giving rise to the claim. 26 Accordingly, Gordon’s reliance on the confidential relationship between her and 27 Defendants is not sufficient to avoid preemption. 28 1 v. Seventh Cause of Action: Negligence 2 Gordon’s negligence cause of action is also based, in part, on Defendants’ 3 improper use of Plaintiff’s materials, which includes Defendants’ use of “the same 4 phrases, sentences, questions, and exercises” contained in her Workbook.2 (Compl. ¶¶ 14, 5 55.) Accordingly, this cause of action is also preempted. See Dielsi, 916 F. Supp. at 992 6 (when “the essential allegation is still that Defendants unlawfully copied Plaintiff's ideas, 7 it is still a copyright infringement claim”); McCormick, 2008 WL 11336160, at *10 8 (“because [plaintiff’s] reference to negligence depends on acts of unauthorized 9 reproduction, performance, distribution, or display—already proscribed by the Copyright 10 Act—the claim is preempted”) 11 12 vi. Eighth Cause of Action: Business and Professions Code § 17200 13 Gordon’s cause of action for violation of California’s Business and Professions 14 Code § 17200 (the “UCL” claim) is based on the wrongful acts alleged in the first seven 15 causes of action: “Said defendants have committed: unlawful acts as described 16 hereinabove; unfair acts that offend established public policies; and fraudulent acts as 17 pled hereinabove.” (Compl. ¶ 59.) Defendants, therefore, argue this claim is preempted 18 because it based on copyright infringement. (Remand Opp’n 17:21–27; MTD P&A at 19 13:6–23.) As set forth above, the Court finds Gordon’s first, second, third and fourth 20 causes of action are not preempted. Accordingly, to the extent the UCL claim is based on 21 those causes of action, it is not preempted. 22 // 23 // 24 // 25

26 2 The cause of action is also based on Defendants alleged “false, neglectful, and misleading 27 statements….” (Compl. ¶ 55.) To this extent, her cause of action is duplicative of the negligent and intentional misrepresentation causes of action. 28 1 vii. Ninth Cause of Action: Civil Conspiracy 2 Gordon’s ninth cause of action asserts Defendants “had and have an agreement to 3 perform the wrongful acts described hereinabove such that the law imposes civil liability 4 for the resulting damage on all of them.” (Compl. ¶¶ 62–63.) Defendants argue Gordon’s 5 civil conspiracy claim is nothing more than a dressed-up copyright infringement claim. 6 (Remand Opp’n at 24:27–28; 25:1–2.) 7 Civil conspiracy is not a cause of action under California Law. See Broidy Cap. 8 Mgmt., LLC v. State of Qatar, 982 F.3d 582, 588 (9th Cir. 2020) (“complaint also alleged 9 a cause of action for “civil conspiracy,” but as the district court correctly noted, there is 10 no such cause of action under California law”). “Conspiracy is not a cause of action. It is 11 a theory of liability under which persons who, although they do not actually commit a tort 12 themselves, share with the tortfeasor or tortfeasors a common plan or design in its 13 perpetration.” Id. (quoting Kenne v. Stennis, 230 Cal. App. 4th 953, 967 (2014)). “[A] 14 civil conspiracy does not give rise to a cause of action unless an independent civil wrong 15 has been committed. Rusheen v. Cohen, 37 Cal. 4th 1048, 1062 (2006). 16 Like the UCL claim, Gordon broadly alleges civil conspiracy. (See Compl. ¶¶ 62– 17 63.) Gordon’s cause of action does not contain any additional substantive allegations and 18 instead is based on her earlier causes of action. To the extent the civil conspiracy is based 19 on the causes of action that are not preempted, it is also not preempted. 20 21 B. Attorneys’ Fees and Costs 22 Gordon seeks an order requiring Defendants to pay her costs and any actual 23 expenses, including attorney fees, incurred by the removal. (Remand P&A 6:13–7:11.) 24 A court may award attorney’s fees under 28 U.S.C. § 1447(c) only where the 25 removing party lacked an objectively reasonable basis for removal. Lussier v. Dollar Tree 26 Stores, Inc., 518 F.3d 1062, 1065 (9th Cir. 2008). When an objectively reasonable basis 27 exists, fees should be denied. Id. 28 1 Because Gordon’s fifth, sixth and seventh causes of action are preempted under the 2 Copyright Act, Defendants had an objectively reasonable basis to remove this case. 3 || Gordon is, therefore, not entitled to attorneys’ fees. 4 IV. CONCLUSION ° For the above stated reasons, the Court GRANTS IN PART Defendants’ motion ° to dismiss [Doc. 6] and DISMISSES WITHOUT LEAVE TO AMEND Gordon’s Fifth, Sixth and Seventh Causes of Action. Although the removal was proper, the Court declines to exercise supplemental jurisdiction over the remaining causes of action (the First, Second, Third, Fourth, Eighth and Ninth) and instead GRANTS Gordon’s motion

to remand [Doc. 5] these remaining causes of action to the San Diego Superior □□□□□□ IT IS SO ORDERED. Dated: December 15, 2023 \ 14 Hn. 1 omas J. Whelan I5 United States District Judge 16 17 18 19 20 21 22 23 24 25 26 27 28 3 Because the Court declines to exercise supplemental jurisdiction, it also declines to resolve Defendants’ alternative arguments for dismissal (i.e., those not based on copyright preemption).