1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 7 SWEET CICELY DANIHER, Case No. 22-cv-00372-BLF

8 Plaintiff,

ORDER DENYING PLAINTIFF

9 v. SWEET CICELY DANIHER’S

MOTION TO REMAND

10 PIXAR ANIMATION STUDIOS, et al., [Re: ECF No. 21] 11 Defendants.

12 13 Before the Court is Plaintiff Sweet Cicely Daniher’s motion to remand the above-captioned 14 case to California State Court. Ms. Daniher’s case alleges that Defendants Pixar Animation Studios, 15 Pixar Talking Pictures, Walt Disney Motion Pictures Group, and Kori Rae (collectively, “Pixar”) 16 improperly used her unicorn-painted van (or “Vanicorn”) in the 2020 animated feature film Onward. 17 Ms. Daniher filed the present action against Pixar in Alameda County Superior Court, asserting state 18 law claims. See Complaint, ECF No. 1-2. Pixar removed the action, asserting that the Court has 19 federal subject matter jurisdiction because at least one of Ms. Daniher’s claims is preempted by 20 federal copyright law. See Notice of Removal, ECF No. 1. Ms. Daniher now seeks to remand the 21 action, arguing that Pixar waived its right to federal jurisdiction by opposing her copyright claim in 22 a prior federal action and that her claims are otherwise not preempted. See Motion, ECF No. 21; 23 Reply, ECF No. 28. Pixar opposes, arguing that Ms. Daniher’s claims do not contain any elements 24 qualitatively different from federal copyright claims, so they are preempted. See Opposition, 25 ECF No. 27. 26 Based on the below reasoning, the Court DENIES Ms. Daniher’s motion to remand. 27 I. BACKGROUND 1 ECF No. 1-2 ¶ 1. Defendants Pixar Animation Studios, Pixar Talking Pictures, and Walt Disney 2 Motion Pictures Group, Inc. are California corporations headquartered in California. See id. ¶¶ 2–5. 3 Defendant Kori Rae is a California resident and the producer of the movie Onward. See id. 4 ¶¶ 6, 32, 41. 5 In January 2014, Ms. Daniher bought a dark blue 1972 Chevrolet G10 van with red shag 6 carpeting, red velour walls and seating, and a white shag carpet roof. See id. ¶ 11. Ms. Daniher 7 designed a unicorn mural to be painted on the side of the van and had it applied in November 2014— 8 dubbing the end product her “Vanicorn.” See id. ¶¶ 15–17. On September 4, 2018, Jane Clausen, 9 a Pixar representative, contacted Ms. Daniher about renting the van for a one-day social event at a 10 Pixar facility. See id. ¶ 20. During their subsequent correspondence, Ms. Clausen indicated that the 11 van “would just be a show piece and not used in any way other than a visual prop” for a “one day 12 music festival/activity day for Pixar employees and families.” See id. ¶ 22; see id., Ex. C. 13 Ms. Daniher agreed to lease the Vanicorn to Pixar for three and a half days—from 14 September 12 to September 15. See id. ¶¶ 26–27. The agreement was memorialized in a lease 15 contract (the “Lease Contract”) prepared by Pixar and executed on September 10, 2018. See id. 16 ¶¶ 25–26. The Lease Contract stated that Pixar would rent the Vanicorn “in connection with the 17 Pixar event, to be held on September 14, 2018 (the ‘Production’).” See id. ¶ 26. In exchange, Pixar 18 agreed to pay Ms. Daniher a confidential sum of money. See id. ¶ 27. The Lease Contract included 19 the following provisions: 20 All rights of every kind in and to all of the results and proceeds 21 (including, without limitation, photography, filming and sound recordings) arising out of the use of the Vehicle in connection with 22 the Production shall be solely owned in perpetuity, throughout the universe, by any means, devices, or methods, now known and 23 unknown and in any media, now known and unknown, by Producer [Pixar] and its successors and assigns, and neither Lessor [Ms. 24 Daniher] or any of its employees, agents or affiliates or other party now or hereafter having an interest in said Vehicle shall have any right 25 of action, including without limitation any right to injunctive relief against Producer [Pixar], its successors, assigns and/or any other party 26 arising out of any use or non-use of said photography, filming and/or sound recordings. Neither Producer [Pixar], nor its successors, 27 assignees or licensees shall be obligated to make any actual use of any 1 See id. ¶ 29. 2 Ms. Daniher produced the Vanicorn according to the terms of the Lease Contract, and Pixar 3 held its event on September 14, 2018. See id. ¶ 31. Around May 31, 2019, Ms. Daniher discovered 4 that Pixar was producing Onward. See id. ¶ 32. Onward features a character named Guinevere, 5 which is a dark blue 1972 Chevrolet G10 van with a red interior, and “a big mural of a unicorn on 6 its side . . . that is clearly a direct copy and/or visual duplication and/or doppelgänger” of Ms. 7 Daniher’s Vanicorn. See id. ¶ 34. On May 31, 2019, Ms. Daniher posted a photo of the Vanicorn 8 alongside an image of the Onward Guinevere character on Instagram. See id. ¶ 39; id., Ex. G. In 9 the caption, Ms. Daniher indicated that Pixar had copied the Vanicorn for the Guinevere character. 10 See id. 11 On June 3, 2019, Defendant Kori Rae, the producer of Onward, telephoned Ms. Daniher. 12 See id. ¶ 40. Ms. Rae “apologized to the Plaintiff for the theft of the Vanicorn for its use as the 13 Guinevere character.” See id. ¶ 41. Ms. Rae “admitted to the Plaintiff that the Defendants 14 intentionally did not inform her . . . that they, in fact, intended to use the Vanicorn as the Guinevere 15 character in Onward, because at that time, the movie had no title, and the Defendants believed they 16 couldn’t have the Plaintiff sign a non-disclosure agreement without a title, and so the Defendants 17 simply did not reveal their intentions[.]” See id. ¶ 42. 18 On January 27, 2020, Ms. Daniher filed a copyright infringement action in this District— 19 Daniher v. Rae, No. 20–cv–612 (N.D. Cal.) (the “Copyright Action”). See Copyright Action 20 Complaint, ECF No. 21-2. On March 13, 2020, Pixar’s counsel telephoned Ms. Daniher’s counsel 21 to advise of his belief that she did not have a federal claim for copyright infringement. See Motion, 22 ECF No. 21 at 2. Pixar’s counsel memorialized his belief in a March 16, 2020 email. See id., 23 Ex. C. Pixar’s counsel indicated that the flaws in Ms. Daniher’s copyright claim included that 24 (1) she was not the author of the Vanicorn, because she hired someone to paint the unicorn mural 25 and (2) the unicorn design was copied from a preexisting work—“Moonlight Magic” by Sharlene 26 Lindskog-Osorio. See id., Ex. C at 2–3. On March 19, 2020, Ms. Daniher filed a Notice of 27 Voluntary Dismissal of the Copyright Action. See id., Ex. D. Further, Ms. Daniher cancelled her 1 On November 18, 2021, Ms. Daniher filed the present action against Pixar in Alameda 2 County Superior Court. See Complaint, ECF No. 1-2. Ms. Daniher exclusively asserts state law 3 claims. First, Ms. Daniher alleges breach of contract based on Pixar’s alleged violation of the Lease 4 Contract. See id. ¶ 62. Ms. Daniher’s allegations include that Pixar failed to limit the use of the 5 Vanicorn to the one-day event or to make any “appropriate adjustment of the confidential fee” for 6 use of the Vanicorn in Onward. See id. Second, Ms. Daniher alleges fraudulent misrepresentation, 7 fraudulent concealment, and constructive fraud based on Pixar’s representation to Ms. Daniher that 8 it would only use the Vanicorn for the one-day event. See id. ¶¶ 64–86. Third, Ms. Daniher asserts 9 a claim for promissory estoppel, alleging that Pixar “made a clear and unambiguous promise” to 10 only use the Vanicorn for the one-day event. See id. ¶¶ 87–93. Fourth, Ms. Daniher asserts a claim 11 for unjust enrichment, alleging that Pixar received a benefit from their use of the Vanicorn without 12 remunerating Ms. Daniher for that use. See id. ¶¶ 94–99. 13 Pixar removed the action to federal court on January 19, 2022, asserting that removal was 14 justified under the complete preemption doctrine because one or more of Ms. Daniher’s claims was 15 preempted by the Copyright Act. See Notice of Removal, ECF No. 1. Ms. Daniher seeks to remand 16 the case to California State Court, arguing that Pixar waived its right to removal through its conduct 17 during the Copyright Action and that Ms. Daniher’s claims are state law claims that are not 18 preempted by federal law. See Motion, ECF No. 21. Pixar opposes. See Opposition, ECF No. 27. 19 II. LEGAL STANDARD 20 A defendant may remove to federal court any civil action over which “the district courts of 21 the United States have original jurisdiction.” 28 U.S.C. § 1441(a). “Only state-court actions that 22 originally could have been filed in federal court may be removed to federal court by the defendant.” 23 Caterpillar Inc. v. Williams, 482 U.S. 386, 392 (1987). “Absent diversity of citizenship, federal- 24 question jurisdiction is required.” Id. 25 Federal question jurisdiction exists for “all civil actions arising under the Constitution, laws, 26 or treaties of the United States.” 28 U.S.C. § 1331. “The presence or absence of federal-question 27 jurisdiction is governed by the ‘well-pleaded complaint rule,’ which provides that federal 1 pleaded complaint.” Caterpillar, 482 U.S. at 392. “[A] case may not be removed to federal court 2 on the basis of a federal defense, including the defense of pre-emption, even if the defense is 3 anticipated in the plaintiff’s complaint, and even if both parties concede that the federal defense is 4 the only question truly at issue.” Id. at 393. 5 There are two exceptions to the well-pleaded complaint rule. See City of Oakland v. BP 6 PLC, 969 F.3d 895, 904–05 (9th Cir. 2020). First, “the Supreme Court has recognized a special and 7 small category of state-law claims that arise under federal law for purposes of § 1331 because federal 8 law is a necessary element of the . . . claim for relief.” Id. at 904 (quotation marks and citation 9 omitted). “A second exception to the well-pleaded-complaint rule is referred to as the ‘artful- 10 pleading doctrine.’” Id. at 905. “This doctrine allows removal where federal law completely 11 preempts a plaintiff’s state-law claim.” Id. (quotation marks and citation omitted). 12 III. DISCUSSION 13 The parties have two primary disputes: (1) whether Pixar waived its right to remove this 14 action to federal court and (2) whether any of Ms. Daniher’s claims is completely preempted by 15 federal copyright law. The Court considers each issue in turn. 16 A. Waiver of Right to Removal 17 Ms. Daniher argues that Pixar waived the right to remove this action. “A party, generally 18 the defendant, may waive the right to remove to federal court where, after it is apparent that the case 19 is removable, the defendant takes actions in state court that manifest his or her intent to have the 20 matter adjudicated there, and to abandon his or her right to a federal forum.” Resolution Tr. Corp. v. 21 Bayside Devs., 43 F.3d 1230, 1240 (9th Cir. 1994) (citations omitted). A waiver of the right of 22 removal must be clear and unequivocal. See id. 23 Ms. Daniher argues that Pixar waived the right to remove the present action to federal court 24 because in the Prior Copyright Action, Pixar asserted in correspondence with Ms. Daniher that she 25 did not have a copyright claim. See Motion, ECF No. 21 at 4–6; id., Ex. C. Pixar argues that it did 26 not take actions in state court that manifested its intent to have the matter adjudicated there. See 27 Opposition, ECF No. 27 at 3. Pixar points out that the only action it took in state court was filing 1 correspondence regarding its prior federal action cannot serve to waive removal of Ms. Daniher’s 2 subsequent state action. See id. at 4. Additionally, Pixar argues that the correspondence Ms. 3 Daniher identifies addressed the lack of merit of her copyright claim—not the issue of subject matter 4 jurisdiction. See id. 5 The Court agrees with Pixar. Pixar’s conduct in the Prior Copyright Action did not constitute 6 “actions in state court that manifest[ed] [its] intent to have the matter adjudicated there”—let alone 7 a “clear and unequivocal” waiver. Bayside, 43 F.3d at 1240. Daniher can point to no authority 8 finding waiver of a party’s right of removal based on that party’s conduct in a prior federal action 9 preexisting a state court action the party seeks to remove to federal court. 10 Accordingly, the Court finds that Pixar did not waive its right to remove the present action 11 to federal court. 12 B. Preemption 13 The parties dispute whether Ms. Daniher’s claims are preempted by federal copyright law. 14 Under 17 U.S.C. § 301(a), a state claim is preempted by the Copyright Act if (1) it pertains to a 15 work within the subject matter of copyright under Sections 102 and 103 and (2) it asserts “legal or 16 equitable rights that are equivalent to any of the exclusive rights within the general scope of 17 copyright” under Section 106. See 17 U.S.C. § 301(a); Montz v. Pilgrim Films & Television, Inc., 18 649 F.3d 975, 979 (9th Cir. 2011) (citing Grosso v. Miramax Film Corp., 383 F.3d 965, 968 19 (9th Cir. 2004)). If a state law claim includes an “extra element” that makes the right asserted 20 qualitatively different from those protected under the Copyright Act, the state law claim is not 21 preempted by the Copyright Act. See Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 22 (9th Cir. 2005). 23 Ms. Daniher argues that her claim for breach of the Lease Contract is not preempted by 24 federal copyright law. See Motion, ECF No. 21 at 6–9. Under the first prong of the 25 17 U.S.C. § 301(a) preemption test, Ms. Daniher argues that the Vanicorn is not within the subject 26 matter of copyright because she cancelled her copyright registration after the parties agreed that she 27 did not have a federal copyright claim. See id. at 7. Under the second prong of the 1 equivalent to the exclusive rights within the scope of copyright, because the contract required that 2 Pixar use it only for the one-day event on September 14, 2018. See id. at 7–9. 3 In response, Pixar argues that the determinative test for the first prong of the 4 17 U.S.C. § 301(a) preemption test is whether the Vanicorn is a kind of work that comes within the 5 subject matter of the Copyright Act—not whether it is actually protected. See Opposition, ECF No. 6 27 at 5–6. Pixar argues that the Vanicorn is unquestionably a kind of work covered by the Copyright 7 Act, since as a van with an airbrushed mural it is an artwork that “falls within a category that is 8 eligible for protection in certain instances.” See Opposition, ECF No. 27 at 6 (quoting Firoozye v. 9 Earthlink Network, 153 F.Supp.2d 1115, 1124–25 (N.D. Cal. 2001)). Under the second prong of 10 the 17 U.S.C. § 301(a) preemption test, Pixar argues that the rights asserted in each of Ms. Daniher’s 11 claims are equivalent to rights within the scope of the Copyright Act. See id. at 6–10. Pixar argues 12 that Ms. Daniher’s breach of contract claim is preempted because there is no “extra element” 13 qualitatively different than the rights under the Copyright Act—Ms. Daniher is merely alleging that 14 Pixar unlawfully duplicated the Vanicorn. See id. at 7–8. Further, Pixar argues that Ms. Daniher’s 15 non-contract claims are preempted. See id. at 9–10. Pixar argues that Ms. Daniher’s unjust 16 enrichment claim merely alleges that Pixar unfairly benefitted from its unauthorized use of the 17 Vanicorn without remunerating Ms. Daniher. See id. at 9. Pixar argues that Ninth Circuit courts 18 have repeatedly found such claims preempted. See id. Further, Pixar argues that Ms. Daniher’s 19 fraud and promissory estoppel claims are preempted, since they are not qualitatively different from 20 copyright claims. See id. at 9–10. 21 Under the first prong of the 17 U.S.C. § 301(a) preemption test, the Court agrees with Pixar. 22 The question here is not whether a work is protected by copyright, but rather whether it is the kind 23 of work covered by the Copyright Act. See Firoozye, 153 F.Supp.2d at 1125 (“Whether this 24 particular piece of software is copyrightable is not the relevant question, however. Instead, the issue 25 for the purpose of a preemption analysis is whether the work involved is a kind of work that comes 26 within the subject matter of the Copyright Act. Even uncopyrightable ideas that are part of 27 copyrighted works come within the subject matter of copyright.”); Chesler/Perlmutter Prods., Inc. 1 not alleged that its written treatment and scripts were copyrighted, the Court finds it sufficient that 2 they were in copyrightable form for the purpose of determining that Plaintiff’s work falls within the 3 subject matter of copyright.”); 17 U.S.C. § 301(a) (Copyright Act preemption applies for “works of 4 authorship that are fixed in a tangible medium of expression and come within the subject matter of 5 copyright as specified by sections 102 and 103”). The Vanicorn clearly is. See 17 U.S.C. § 102 6 (“Works of authorship include . . . pictorial, graphic, and sculptural works[.]”); 17 U.S.C. § 103 7 (“The subject matter of copyright as specified by section 102 includes compilations and derivative 8 works[.]”). Ms. Daniher can point to no authority in support of her position that the Vanicorn is not 9 within the subject matter of copyright under Sections 102 and 103 of the Copyright Act because she 10 cancelled her registered copyright and the parties agree that she does not have a copyright claim 11 based on the Vanicorn. 12 Moving to the second prong of the 17 U.S.C. § 301 preemption test, the Court notes that Ms. 13 Daniher did not provide any briefing on whether her non-contract claims are preempted by the 14 Copyright Act. See Motion, ECF No. 21; Reply, ECF No. 28. Nonetheless, it is still Pixar’s burden 15 to show that removal is appropriate. See Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th Cir. 1992) 16 (“[T]he defendant always has the burden of establishing that removal is proper.”). 17 The Court finds that at least as to Ms. Daniher’s unjust enrichment claim, Pixar has met its 18 burden for showing that Ms. Daniher’s claim is preempted by federal law. There is no “extra 19 element” to Ms. Daniher’s unjust enrichment claim qualitatively different than a copyright claim. 20 See Altera., 424 F.3d at 1089 (9th Cir. 2005). Ms. Daniher’s unjust enrichment claim is solely 21 predicated on Pixar’s alleged “benefit” from its “use of the Vanicorn as a central character in 22 Onward” without remunerating Ms. Daniher for that use. See Complaint, ECF No. 1-2 ¶¶ 94–96. 23 The Court does not see how such a claim is qualitatively different than a copyright claim, 24 particularly without any briefing from Ms. Daniher on the issue. See AJ Mgmt. Consulting, LLC v. 25 MBC FZ-LLC, No. 13–cv–03213–BLF, 2014 WL 2878891, at *6 (N.D. Cal. June 24, 2014) (finding 26 unjust enrichment claim preempted that “at its core alleges that the defendant[] unfairly benefitted 27 from their unauthorized” distribution of plaintiff’s work) (quoting Firoozye, 1 (9th Cir. 1987) (finding unjust enrichment claim preempted by the Copyright Act); see also Selby v. 2 || New Line Cinema Corp., 96 F.Supp.2d 1053, 1062 (C.D. Cal. 2000) (‘Plaintiffs breach of implied 3 contract claim falls squarely into the category of contract claims that allege no additional rights other 4 || than promising not to benefit from the [plaintiff’s] work”) (quoting Endemol Entm’t B.V. v. 5 Twentieth Television, Inc., 48 U.S.P.Q.2d 1524, 1528 (C.D. Cal. 1998)). 6 Accordingly, the Court finds that Ms. Daniher’s unjust enrichment claim is preempted by 7 || the Copyright Act. Since denial of a motion to remand is warranted if any of Ms. Daniher’s claims 8 || is preempted by federal law, the Court DENIES Ms. Daniher’s motion. See Firoozye, 9 153 F.Supp.2d at 1123 (“[I]f any of the plaintiff’s claims are preempted under the Copyright Act, 10 ... [t]his Court would then possess subject matter jurisdiction over the entire complaint, thereby 11 requiring the Court to deny the plaintiff's motion to remand.”). The Court does not need to consider 12 || whether any of Ms. Daniher’s other claims are preempted. See id. 13 || IV. ORDER 14 For the foregoing reasons, IT IS HEREBY ORDERED that Ms. Daniher’s motion to remand 3 15 || is DENIED. 2 16

17 |) Dated: May 10, 2022 kom Lh han tn) 18 NS

BETH LABSON FREEMAN

19 United States District Judge 20 21 22 23 24 25 26 27 28