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Recif Resources, LLC v. Juniper Capital Advisors, L.P.

United States District Court, S.D. Texas, Houston Division

October 24, 2019




         This case is before the Court on the Motion to Remand and Request for Attorneys' Fees (“Motion”) [Doc. # 17] filed by Plaintiff Recif Resources, LLC (“Recif”). Defendant Juniper Capital Advisors, LP (“Juniper”) filed a Response [Doc. # 24], Recif filed a Reply [Doc. # 31], Juniper filed a Sur-Reply [Doc. # 38], and Recif filed a Sur-Sur-Reply [Doc. # 43]. Having reviewed the full record and the applicable legal authorities, the Court denies the Motion.

         I. BACKGROUND

         In 2017, Recif and Juniper discussed jointly pursuing a prospective oil and gas opportunity. In connection with the discussions, Juniper signed a confidentiality agreement. Each party made its intellectual property and other proprietary information available to the other. Recif alleges that Juniper “backed out of the deal in May 2018.” See Motion, p. 2. Recif alleges that it learned Juniper “was developing the [opportunity] without them in violation of the parties' confidentiality agreement.” Id.

         Recif filed this lawsuit in Texas state court, asserting only Texas law causes of action.[1] On August 8, 2019, Juniper filed a counterclaim against Recif, including a claim for copyright infringement.[2] That same day, Juniper filed a Notice of Removal [Doc. # 1].

         Recif moved to remand, arguing that the Notice of Removal was untimely. Recif argues that, even if the Court retains the copyright infringement counterclaim, Recif's state law claims and Juniper's state law counterclaims should be remanded. The Motion has been fully briefed and is now ripe for decision.


         It is undisputed that this lawsuit as originally filed by Recif was not removable. Therefore, Juniper's Notice of Removal was timely if “filed within thirty days after receipt by the defendant, through service or otherwise, of a copy of an amended pleading, motion, order or other paper from which it may first be ascertained that the case is one which is or has become removable.” 28 U.S.C. § 1446(b)(3).

         Juniper bases its removal of this case on its Copyright Act counterclaim. To state a claim for relief under the Copyright Act, a plaintiff must allege: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” BWP Media USA, Inc. v. T & S Software Assocs., Inc., 852 F.3d 436, 439 (5th Cir.), cert. denied, 138 S.Ct. 236 (2017) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)); see also Baisden v. I'm Ready Productions, Inc., 693 F.3d 491, 499 (5th Cir. 2012).

         Recif has established and, indeed, Juniper has admitted, that by March 26, 2019, Juniper had received a discovery response that “made clear that Recif had cut and pasted [Juniper's] maps and well log interpretations into a PowerPoint document.” See Response [Doc. # 24], p. 8. At that point, Juniper had received “other paper” from which it could ascertain that Recif had copied elements of a work as to which Juniper claims copyright protection. The Notice of Removal, filed August 8, 2019, was untimely pursuant to § 1446(b)(3).

         Juniper argues that it could not ascertain that it had a copyright infringement counterclaim until August 8, 2019, when it received a deposition transcript containing testimony regarding Recif's use of the PowerPoint containing copies of Juniper's work. “Use” of the allegedly infringing document, here the PowerPoint, is not a required element of a copyright infringement claim. One who makes a copy of a copyrighted work infringes even if he does not sell or otherwise distribute the copy. See Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 788 n.54 (5th Cir. 1999). Copyright infringement can occur even if the unauthorized copy is “solely for the private purposes of the reproducer.” Id. Therefore, the deposition testimony regarding Recif's use of the allegedly unauthorized copy did not constitute “other paper” from which Juniper could first ascertain that there were copyright infringement issues that made the case removable.

         The Notice of Removal was filed August 8, 2019, more than thirty days after Juniper's March 26, 2019 receipt of “other paper” that indicated the existence of a copyright infringement counterclaim against Recif. Consequently, removal was untimely pursuant to § 1446(b)(3).


         A civil action asserting a claim for relief under United States copyright law is removable pursuant to 28 U.S.C. § 1454(a). Therefore, the time limitation contained in § 1446(b)(3) “may be extended at any time for cause shown.” 28 U.S.C. § 1454(b)(2). In determining whether a removing party has shown cause under § 1454(b)(2), district courts in Texas look to Federal Rule of Procedure 6(b)(1)(B) for guidance. See Hill Country Tr. v. Silverberg, 2018 WL 6267880, *8 (W.D. Tex. Nov. 28, 2018), and cases cited therein. Relevant factors include (1) the potential for prejudice to the other parties, (2) the length of the delay and its impact on the case, (3) the reason for the delay and whether it was within the removing party's control, and (4) whether the ...

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