IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

ELLEN ROSENBLUM, the Attorney

General for the State of

Oregon; STATE OF OREGON, by

and through Ellen Rosenblum,

the Attorney General for the

State of Oregon, the Oregon

Health Authority, and the

Oregon Department of Human

Services; and the OREGON

HEALTH INSURANCE EXCHANGE

CORPORATION, dba Cover

Oregon, an Oregon public

corporation,

Plaintiffs,

v.

ORACLE AMERICA, INC., a

Delaware corporation; STEPHEN

BARTOLO, an individual;

THOMAS BUDNAR, an individual;

KEVIN CURRY, an individual;

SAFRA CATZ, an individual;

BRIAN KIM, an individual;

RAVI PURI, an individual; and

MYTHICS, INC., a Virginia

corporation,

Defendants.

6:14-CV-01926-BR

 

OPINION AND ORDER 

1 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 1 of 29
DAVID B. MARKOWITZ 

PETER H. GLADE

LISA A. KANER

DALLAS S. DELUCA

HARRY B. WILSON

Markowitz Herbold PC

Suite 3000 Pacwest Center

1211 S.W. Fifth Avenue

Portland, OR 97204-3730

(503) 295-3085 

Attorneys for Plaintiffs

BRENNA K. LEGAARD 

JEFFERY S. EDEN

Schwabe, Williamson & Wyatt, P.C.

1211 S.W. Fifth Avenue, Suite 1900

Portland, OR 97204

(503) 222-9981

KAREN JOHNSON-MCKEWAN

ROBERT S. SHWARTS

ERIN M. CONNELL

Orrick, Herrington & Sutcliffe LLP

The Orrick Building

405 Howard Street

San Francisco, CA 94105

(415) 773-5700

DORIAN E. DALEY

DEBORAH K. MILLER

PEGGY E. BRUGGMAN

Oracle Corporation

Legal Department

500 Redwood Shores, CA 94065

(650) 506-9534

Attorneys for Defendants Oracle America, Inc.; Stephen

Bartolo; Thomas Budnar; Kevin Curry; Safra Catz; and

Brian Kim

DAYNA E. UNDERHILL

Holland & Knight LLP

2300 U.S. Bancorp Tower

111 S.W. Fifth Avenue

Portland, OR 97204

(503) 243-2300

2 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 2 of 29
TIMOTHY D. BELEVETZ

Holland & Knight LLP

1600 Tysons Boulevard

Suite 700

Tysons Corner, VA 22102

(703) 720-8088 

Attorneys for Mythics, Inc.

BROWN, Judge.

This matter comes before the Court on Plaintiffs' Motion

(#15) to Remand Second Removal, Plaintiff’s request for

attorneys’ fees, and Defendants’ Motion (#9) to Consolidate. For

the reasons that follow, the Court GRANTS Plaintiffs’ Motion to

Remand, DENIES Plaintiffs’ request for attorneys’ fees, and

DENIES as moot Defendants’ Motion to Consolidate.

BACKGROUND

Although the parties are quite familiar with the facts

underlying this action, the Court sets forth the following

procedural history relevant to the pending Motion to Remand:

On August 8, 2014, Oracle America, Inc., filed a Complaint

in this Court against the Oregon Health Insurance Exchange

Corporation (Cover Oregon), 3:14-CV-01279-BR (the Federal

Action), asserting claims for breach of contract and quantum

meruit and basing federal jurisdiction on the parties’ diversity

of citizenship. Oracle alleged Cover Oregon has not paid for all

of the services that Oracle rendered, “continue[s] to use

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 3 of 29
Oracle’s work product[,] and . . . has transferred some or all of

that work product to others in violation of the parties’ written

agreements.” 

On August 22, 2014, Oregon Attorney General Ellen Rosenblum,

the State of Oregon (Oregon), and Cover Oregon filed an action in

Marion County Circuit Court (the State Action) against Oracle,

Mythics, Inc., and six Oracle employees1

 alleging claims for

fraud; breach of contract; breach of the Oregon False Claims Act

(OFCA), Oregon Revised Statutes § 180.750, et seq.; and

violations of Oregon Racketeer Influenced and Corrupt

Organizations Act (ORICO), Oregon Revised Statutes § 166.715, et

seq.

Also on August 22, 2014, Cover Oregon filed in the Federal

Action a Motion to Dismiss for Failure to State a Claim and

Failure to Join Necessary and Indispensable Party. Specifically,

Cover Oregon sought dismissal of the Federal Action because

Oracle failed to sue Oregon, who Cover Oregon contended was a

necessary and indispensable party to the Federal Action.

On September 8, 2014, Oracle filed an Amended Complaint2 in

the Federal Action in which Oracle added Oregon as a defendant

and asserted claims for copyright infringement (against Cover

1 The Oracle employees are Stephen Bartolo, Thomas Budnar,

Kevin Curry, Safra Catz, Brian Kim, and Ravi Puri.

2

 On September 17, 2014, Oracle filed an Amended Corrected

First Amended Complaint (#33) to correct the parties’ names.

4 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 4 of 29
Oregon and Oregon), breach of contract (against Cover Oregon),

breach of the implied covenant of good faith and fair dealing

(against Cover Oregon), and quantum meruit (against Cover Oregon

and Oregon). 

On September 18, 2014, in light of Oracle’s amended

allegations in the Federal Action, this Court denied as moot

Cover Oregon’s Motion to Dismiss (#15) and directed Cover Oregon

and/or Oregon to file any motions against the Amended Corrected

First Amended Complaint no later than October 2, 2014.

On September 25, 2014, Oracle and Safra Catz removed the

State Action to this Court (3:14-CV-01532-BR) on the asserted

basis that this Court has jurisdiction over the State Action

because of Oracle’s copyright claims and state-law claims in the

Federal Action and because the claims in the State Action are

related to the claims in the Federal Action. 

On October 2, 2014, Oregon and Cover Oregon each filed in

the Federal Action separate Motions to Dismiss as well as a Joint

Motion to Dismiss or, in the Alternative, to Stay.

On October 16, 2014, Plaintiffs in the State Action filed a

Motion to Remand the State Action. On November 18, 2014, while

the Motion to Remand was still pending, Defendants filed for the

first time in the State Action an Answer, Affirmative Defenses

and Counterclaim in which they asserted a Counterclaim for

copyright infringement.

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 5 of 29
On November 21, 2014, the Court heard oral argument on

Plaintiffs' Motion to Remand the State Action and at the

conclusion of argument granted the Motion to Remand from the

bench on the grounds that (1) the Court did not have jurisdiction

over the State Action at the time of removal under 28 U.S.C. 

§ 1454(a) because the only copyright claims pending at the time

of removal were pleaded in the Federal Action and (2) the Court

did not have jurisdiction over the State Action under § 1454(a)

based on the copyright counterclaim that Oracle asserted in the

State Action after removal. On November 25, 2014, the Court

issued an Opinion and Order formally granting the Motion to

Remand and remanding the State Action to Marion County Circuit

Court.

On December 2, 2014, Oracle filed a copyright-infringement

counterclaim in the remanded State Action and on that same date

Oracle and Catz again removed the State Action to this Court

(6:14-CV-01926-BR) on the basis that this Court had jurisdiction

pursuant to § 1454 based on that counterclaim. 

On December 8, 2014, Oracle also filed Motions to

Consolidate in the State and Federal Actions, which were both

then pending in this Court because of the most recent removal. 

On December 10, 2014, however, the Court entered Orders in both

cases noting it was premature for the parties to brief and the

Court to decide the Motions to Consolidate due to the various

6 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 6 of 29
outstanding Motions to Dismiss pending in the Federal Action.

On December 15, 2014, Mythics filed in the re-removed State

Action a Joinder in Defendant Oracle America, Inc.’s and

Defendant Safra Catz’s Notice of Removal and Mythics, Inc.’s

Assertion of Additional, Independent Statutory Basis for Removal

of Action.

On December 16, 2014, the Plaintiffs in the “re-removed”

State Action filed a Motion to Remand Second Removal that also

includes a request for attorneys’ fees.

On December 19, 2014, the Court heard oral argument in the

Federal Action on Oregon’s Motion to Dismiss; the Joint Motion to

Dismiss or, in the Alternative, to Stay of Oregon and Cover

Oregon; and Cover Oregon's Motion to Dismiss. At oral argument

the Court granted Oregon’s Motion to Dismiss, denied Cover

Oregon's Motion to Dismiss, and took the Joint Motion to Dismiss

under advisement.

On January 13, 2015, the Court issued an Opinion and Order

in the Federal Action in which it formally granted Oregon’s

Motion to Dismiss and denied Cover Oregon's Motion to Dismiss

with leave to Oracle to file another Amended Complaint consistent

with the Court’s rulings. The Court also granted in part and

denied in part the Joint Motion to Dismiss as follows: 

(1) denied the Joint Motion to dismiss Oracle's copyrightinfringement claim on the ground of failure to state a claim; 

7 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 7 of 29
(2) granted the Joint Motion to dismiss Oracle's alternative

Fourth claim for quantum meruit; and (3) granted the Joint Motion

to dismiss the Doe Defendants.

On January 27, 2015, Oracle filed a Second Amended Complaint

in the Federal Action.

On February 13, 2015, the Court heard oral argument in the

State Action on Plaintiffs’ Motion to Remand Second Removal and

request for attorneys’ fees and took the matter under advisement.

STANDARDS

28 U.S.C. § 1446(a) provides in pertinent part: “A

defendant or defendants desiring to remove any civil action or

criminal prosecution from a State court shall file in the

district court of the United States for the district and division

within which such action is pending a notice of removal." 

28 U.S.C. § 1446(b) provides in pertinent part: "The notice of

removal of a civil action . . . shall be filed within thirty days

after the receipt by the defendant, through service or otherwise,

of a copy of the initial pleading setting forth the claim for

relief upon which such action or proceeding is based."

A motion to remand is the proper procedure for challenging

removal. Babasa v. LensCrafters, Inc., 498 F.3d 972, 974 (9th

Cir. 2007). “Removal and subject matter jurisdiction statutes

are strictly construed, and a defendant seeking removal has the

8 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 8 of 29
burden to establish that removal is proper and any doubt is

resolved against removability.” Hawaii ex rel. Louie v. HSBC

Bank Nevada, N.A., 761 F.3d 1027, 1034 (9th Cir. 2014)(quotation

omitted). 

There is a “strong presumption against removal jurisdiction

[which] means that the defendant always has the burden of

establishing that removal is proper.”3

 Geographic Expeditions,

Inc. v. Estate of Lhotka ex rel. Lhotka, 599 F.3d 1102, 1107 (9th

Cir. 2010)(quotation omitted).

DISCUSSION

Plaintiffs in the re-removed State Action move to remand on

the grounds that (1) the re-removal was not timely, (2) the reremoval contravenes the Supreme Court’s prohibition on successive

removals, and (3) Oracle’s removed copyright claim is “a

nullity.” In the alternative, Plaintiffs assert the Court should

decline to exercise supplemental jurisdiction over the state-law

claims in the re-removed State Action. Because the Court

concludes the re-removal was not timely, the Court does not

address Plaintiffs’ additional bases for remand.

3 Although Oracle relies on a Seventh Circuit case (Back

Doctors Ltd. v. Metro Prop & Cas. Ins. Co., 637 F.3d 827 (7th

Cir. 2011)) for the proposition that there is not any presumption

against removal, the Ninth Circuit continues to hold that such a

presumption exists.

9 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 9 of 29
I. Timeliness of Re-Removal

Plaintiffs assert the Court should remand the State Action

because Defendants filed their December 2, 2014, Notice of

Removal after the 30-day deadline set out in § 1446. 

Specifically, Plaintiffs assert Oracle did not remove this matter

within 30 days of the time in which it believed the matter became

removable, and Mythics and Catz did not have any right to remove

the matter based on Oracle’s copyright counterclaim in the State

Action.

A. Timeliness

As noted, 28 U.S.C. 1446(b)(1) provides “[t]he notice

of removal of a civil action or proceeding shall be filed within

30 days after the receipt by the defendant . . . of a copy of the

initial pleading setting forth the claim for relief upon which

such action or proceeding is based.” In addition, under 

§ 1446(b)(3) when the initial pleading does not provide a basis

for removal, “a notice of removal may be filed within 30 days

after receipt by the defendant . . . 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.” Accordingly, § 1446 “provides two thirty-day windows

during which a case may be removed—during the first thirty days

after the defendant receives the initial pleading or during the

first thirty days after the defendant receives a paper ‘from

10 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 10 of 29
which it may first be ascertained that the case is one which is

or has become removable’ if ‘the case stated by the initial

pleading is not removable.’” Harris v. Bankers Life & Cas. Co.,

425 F.3d 689, 692 (9th Cir. 2005)(quoting 28 U.S.C. § 1446). The

“first thirty-day requirement is triggered by defendant’s receipt

of an ‘initial pleading’ that reveals a basis for removal.” Id.

at 694. The “second thirty-day removal period is triggered if

the initial pleading does not indicate that the case is

removable, and the defendant receives a copy of an amended

pleading, motion, order or other paper from which removability

may first be ascertained.” Carvalho v. Equifax Info. Servs.,

LLC, 629 F.3d 876, 885 (9th Cir. 2010)(quotation omitted). 

“Without such a paper, removal is premature.” Owen v.

L’Occitane, Inc., No. CV 12-09841 MMM JCGX, 2013 WL 941967, at *8

(C.D. Cal. Mar. 8, 2013). 

Although “removability under § 1446(b) is determined

through examination of the four corners of the applicable

pleadings” (Harris, 425 F.3d at 694), Defendants note that 

28 U.S.C. § 1454(a) extended the basis of removability to permit

a defendant to remove an action in which “any party asserts a”

copyright claim. According to Defendants, therefore, the time to

remove the State Action under § 1454(a) began to run only after

Oracle actually asserted its copyright-infringement counterclaim

in the remanded State Action on December 2, 2014. Because Oracle

11 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 11 of 29
and Catz re-removed the matter on the basis of § 1454 later that

same day, Defendants contend removal was timely. 

Plaintiffs, on the other hand, argue Defendants’

contention that the 30-day removal period under § 1446 does not

begin to run until a defendant has asserted a counterclaim in an

action “effectively reads the 30-day time limit of § 1446 out of 

§ 1454.” According to Plaintiffs, when Congress enacted § 1454,

it did not intend to “fix open the federal courthouse doors for

all defendants with a copyright claim. . . . [A] defendant must

be timely.” Andrews v. Daughtry, 994 F. Supp. 2d 728 (M.D.N.C.

2014). Plaintiffs note courts that have addressed the interplay

between §§ 1446 and 1454(a) have held the “thirty-day clock [of 

§ 1446] beg[ins] to run when [the defendant] attained ‘solid and

unambiguous information’ that the case was removable - that is to

say, when [defendant] had solid and unambiguous information that

it could assert a claim” for copyright infringement. Univ. of

Ky. Research Found., Inc. v. Niadyne, Inc., No. 13-16-GFVT, 2013

WL 5943921, at *9 (E.D. Ky. Nov. 5, 2013). The Niadyne court

concluded the defendant’s time to remove the state-court action

began to run when the defendant was served with the complaint

because the defendant then had “solid and unambiguous notice” of

the grounds on which the defendant could assert a patent

counterclaim. Niadyne, 2013 WL 5943921, at *9. 

Similarly, in Andrews the court found the removal

12 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 12 of 29
period began to run on the date on which the defendant became

aware of his potential copyright counterclaim, which was more

than 30 days before the defendant filed his notice of removal. 

The court recognized 

[i]n determining when a defendant knew that a case

was one which had become removable, the Fourth

Circuit does “not require courts to inquire into

the subjective knowledge of the defendant, an

inquiry that could degenerate into a mini-trial

regarding who knew what and when.” Lovern v. Gen.

Motors Corp., 121 F.3d 160, 162 (4th Cir.1997). 

Instead, courts may “rely on the face of the

initial pleading and on the documents exchanged in

the case by the parties to determine when the

defendant had notice of the grounds for removal,

requiring that those grounds be apparent within

the four corners of the initial pleading or

subsequent paper.” Id.

Andrews, 995 F. Supp. 2d at 733. In particular, the court noted

“documents exchanged . . . and . . . statements of [defense]

counsel at oral argument . . . demonstrate that [the defendant]

knew [more than 30 days before he filed his notice of removal]

that he claimed ownership of the contested Absent Element songs

and sound recordings under the Copyright Act.” Id. Thus,

because the record reflected the defendant knew more than 30 days

before he filed his notice of removal pursuant to § 1454 that he

had a copyright-infringement claim, the court found the removal

was not timely. Id. 

Similarly, in Mirowski Family Ventures, LLC v. Boston

Scientific Corporation the court found the time for removal began

to run when the defendant had knowledge of its patent13 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 13 of 29
infringement counterclaim. CIV. WDQ-13-2627, 2014 WL 2574615, at

*5 (D. Md. June 5, 2014). As in Andrews, the court noted:

To determine when a defendant first had notice of

grounds for removal, the Court must “rely on the

face of the initial pleading and on the documents

exchanged in the case by the parties.” Lovern v.

Gen. Motors Corp., 121 F.3d 160, 162 (4th Cir.

1997). The Court need not “inquire into the

subjective knowledge of the defendant,” but must

consider only whether grounds for removal were

“apparent within the four corners of the initial

pleading or subsequent paper.” Id. 

2014 WL 2574615, at *5. The court, however, also noted the

record “indicat[ed] that the defendant had knowledge of its

invalidity counterclaim - the basis on which this case is

allegedly removable - . . . several months before [the defendant]

removed the case.” Id. The court, therefore, found the removal

was not timely.

As Plaintiffs noted in their Reply in support of their

first Motion to Remand State Action (3:14-CV-01532-BR), Oracle

stated in its Response to Plaintiffs' Motion to Remand that

Oracle had “confirmation of the State’s infringement [when] Cover

Oregon disclosed in its August 22, 2014, Motion to Dismiss [filed

in the Federal Action] that it had transferred certain portions

of Oracle’s code to the State.” Resp. (3:14-CV-01532-BR, #29) at

20. Moreover, Oracle also stated it could not have asserted a

copyright claim before September 1, 2014, because that was the

date that Oracle “deposited code for registration with the U.S.

Copyright Office.” Oracle, nevertheless, now asserts the 30-day

14 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 14 of 29
period for removal did not begin to run until Oracle asserted its

counterclaim for copyright infringement in the State Action on

December 2, 2014, after the first remand. Oracle maintains,

therefore, that its re-removal on December 2, 2014, was timely.

The Ninth Circuit has not addressed when the 30-day

period of § 1446 begins to run in the context of a removal based

on § 1454. As noted, however, other courts have addressed the

interplay between §§ 1446 and 1454. For example, in Donahue v.

Tokyo Electron America, Incorporated, the court analyzed the 30-

day deadline set out in § 1446 as it relates to actions removed

under § 1454. No. A–14–CA–563–SS, 2014 WL 4259386 (W.D. Tex.

Aug. 27, 2014). In Donahue a discharged employee brought an agediscrimination action against his employer in state court. His

employer filed counterclaims for, among other things, copyright

infringement and removed the case to federal court. The

plaintiff moved to remand on the ground that, among other things,

the removal was not timely under § 1446. Although the court

ultimately did not decide whether the removal was timely because

it concluded the defendant had shown cause for extending the 30-

day deadline, the court’s discussion of the conflicting

interpretations is illuminating. The court pointed out there

were five relevant dates that could be the basis for commencement

of the removal period in that case:

(1) April 4, 2014—the date of the letter from

Tokyo Electron's counsel indicating they are aware

15 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 15 of 29
as of this date (in fact, earlier than this date)

that they have a potential copyright claim against

Donahue for his post-termination use of Tokyo

Electron's videos; (2) April 28, 2014 — the date

Defendants were served with Donahue's state court

lawsuit; (3) May 16, 2014 — the date Defendants

file their Original Answer in state court; 

(4) June 10, 2014 — the date Defendants registered

their copyrights, and (5) June 16, 2014 — the date

Defendants filed their Amended Answer and

Counterclaims, including the copyright

counterclaim, as well as their Notice of Removal.

Id., at *4. The court noted the parties’ various dates for

commencement of the removal period under § 1446 presented

problems:

Defendants contend the removal is timely because

the triggering date for the 30–day removal period

was June 16 when they filed their counterclaims. 

According to Defendants, the case was not

removable until they asserted the copyright

counterclaim, so June 16 must be the triggering

date. This view is problematic for two main

reasons. First, a defendant cannot receive his

own counterclaim as required by § 1446, so

Defendants' view does not comply with the text of

§ 1446. Second, this interpretation would

effectively read § 1446 out of § 1454. The

thirty-day deadlines from § 1446 would mean little

if a defendant could decide when to trigger the

removal clock by asserting a counterclaim in state

court potentially at any point during the

litigation.

Donahue, on the other hand, argues the triggering

date was April 28, the date Defendants were served

with his lawsuit. Donahue highlights the fact

Defendants knew, at least as of April 4, that they

had a copyright claim to assert against Donahue,

and this knowledge, coupled with service of the

lawsuit, was sufficient to trigger the removal

clock, starting on April 28. Since Defendants did

not remove until June 16, the removal was

untimely. The Court sees a few problems with this

view as well. As an initial matter, documents

16 - OPINION AND ORDER

Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 16 of 29
exchanged between the parties prior to the initial

pleading may not constitute “other paper” from

which the defendant first ascertains the case is

removable under § 1446. Chapman v. Powermatic,

Inc., 969 F.2d 160, 164 (5th Cir. 1992). In

Chapman, . . . the Fifth Circuit was concerned

about courts trying to determine what defendants

knew at the time they received the initial

pleading and what the defendant should have known

had it exercised due diligence. Id. For

instance, in this case, this Court should not

expend resources trying to determine if Tokyo

Electron knew Donahue was potentially infringing

their copyrights by posting videos on his personal

website post-termination, when they knew, when

they should have known, and so on.

In addition, using April 28 as the triggering date

is inconsistent with the text of § 1446. Under 

§ 1446, as traditionally applied, service of the

initial pleading triggers the removal clock if it

sets forth a claim from which a defendant can

ascertain the case is removable. In this case,

Donahue's lawsuit for age discrimination under the

Texas Labor Code and liability under the Texas Tax

Code gives no indication the case is removable.

If the initial pleading did not indicate the case

was removable and if Tokyo Electron never received

a document in the course of this litigation from

which it could first ascertain this case was

removable, then a strict application of § 1446 to

this case means the removal clock was never

triggered. Yet § 1454 clearly allows a defendant

asserting a copyright counterclaim to remove. 

This discussion only highlights the fundamental

inconsistency between § 1446 and § 1454.

Id., at *4-*5. 

Here the record is more like the record in Andrews and

Mirowski than in Donahue because Oracle admitted in its Response

to Cover Oregon’s Motion to Dismiss filed in the Federal Action

that Oracle obtained information on August 22, 2014, that

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Plaintiffs were infringing Oracle’s copyrights. Moreover, even

if Oracle’s statement in its Response to Cover Oregon’s Motion to

Dismiss in the Federal Action did not trigger the 30-day remand

clock, Oracle amended its Complaint in the Federal Action on

September 8, 2014, and added the copyright-infringement claim

based on the same facts as the copyright-infringement

counterclaim that Oracle eventually alleged in the State Action. 

Thus, unlike the court in Donahue, neither the Court nor the

parties have to expend any resources to determine whether Oracle

knew Plaintiffs were allegedly infringing its copyrights more

than 30 days before Oracle re-removed the State Action on

December 2, 2014. Specifically, the record establishes Oracle

“attained ‘solid and unambiguous information’ that the State

Action was removable - that is to say, [it] had solid and

unambiguous information that it could assert a claim” for

copyright infringement no later than September 1, 2014, which is

the date when it knew Plaintiffs were allegedly infringing its

copyrights and had “deposited code for registration with the U.S.

Copyright Office” or, at the very latest, on September 8, 2014,

when it filed the copyright-infringement claim in the Federal

Action.

Oracle, nevertheless, asserts its re-removal on 

December 2, 2014, was timely because § 1446(b)(3) rather than 

§ 1446(b)(1) governs in this context. As noted, § 1446(b)(3)

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provides: “[I]f the case stated by the initial pleading is not

removable, a notice of removal may be filed within 30 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.” Based on its reading of § 1446(b)(3), Oracle

asserts the State Action only became removable after Oracle

brought its Counterclaim for copyright infringement in the State

Action. 

The court in Donahue rejected an argument similar to

Oracle’s in the context of removal under § 1454 and noted “a

defendant cannot receive his own counterclaim as required by 

§ 1446(b)(3).” 2014 WL 4259386, at *4. 

This Court also previously rejected a similar argument

based on 28 U.S.C. § 1441 in Dulcich, Incorporated v. Mayer

Brown, LLP, 954 F. Supp. 2d 1129 (D. Or. 2013) and concluded

“‘section 1446's thirty-day clock starts ticking’” when a

“‘defendant receives enough facts to remove on any basis under

section 1441.”’ Id. at 1136 (quoting Durham v. Lockheed Martin

Corp., 445 F.3d 1247, 1253 (9th Cir. 2006)). As explained in

Dulcich:

While it is true that the Amended Complaint

included non-diverse plaintiffs, nothing precluded

Mayer Brown from removing this case under 

§ 1446(b)(1) at the time it was served based on

Mayer Brown's position that the extraneous

plaintiffs were not real parties in interest. It

19 - OPINION AND ORDER

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is well established that a plaintiff may not

preclude a defendant from removing a case to

federal court on the basis of diversity

jurisdiction by joining parties with no real

interest in the litigation.

* * *

Mayer Brown chose not to remove this case within

30 days after being served with the Amended

Complaint. Instead, Mayer Brown filed a motion to

dismiss in state court and awaited the state court

order dismissing the claims of the extraneous

plaintiffs before seeking removal. By doing so,

Mayer Brown ran the risk that plaintiffs might

challenge Mayer Brown's notice of removal as

untimely.

Id. The Court concludes similar reasoning applies here. 

As in Donahue and Dulcich, the Court finds unpersuasive

Defendants’ argument that Oracle could “first ascertain” the

State Action was removable only after receiving its own Answer

alleging a Counterclaim for copyright infringement in the State

Action. Here there is not any question that Oracle could have

asserted a copyright-infringement counterclaim in the State

Action as early as September 1, 2014, when Oracle knew Oregon

Plaintiffs were allegedly infringing its copyrights and Oracle

had deposited code for registration with the United States

Copyright Office. Oracle could then have removed the matter

properly within 30 days of September 1, 2014. By failing to file

the copyright-infringement counterclaim in the State Action until

more than three months after that counterclaim had clearly

accrued, Oracle ran the risk that its re-removal would not be

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timely. See, e.g., Roth v. CHA Hollywood Med. Ctr., L.P., 720

F.3d 1121, 1125 (9th Cir. 2013)(“A defendant should not be able

to ignore pleadings or other documents from which removability

may be ascertained and seek removal only when it becomes

strategically advantageous for it to do so.”).4

As noted, the Ninth Circuit has not analyzed the

interplay between § 1446 and § 1454. Indeed, as Oracle

acknowledged at oral argument there does not appear to be any

case in which a court has held the defendant is permitted to

choose when to trigger the beginning of the removal period under

§§ 1454 and 1446. Having carefully considered the text and

interplay of these removal statutes in the context of available

case law, the Court concludes the Ninth Circuit is more likely to

adopt Plaintiffs’ interpretation of the commencement of the 30-

day period for removal under § 1446 in the context of removal

under § 1454 because, as the Donohue court noted, the method

promoted by Oracle “would give control to defendants to decide

when to trigger the removal clock, thus effectively reading 

§ 1446 out of § 1454. Defendants should not be able to delay

their removal clock by choosing to delay asserting a copyright

counterclaim.” 

4 Although Roth involves the interplay between § 1441 and 

§ 1446, the Court, nevertheless, finds its reasoning particularly

helpful in light of the paucity of Ninth Circuit authority on the

issue before this Court.

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 21 of 29
Accordingly, the Court concludes Oracle’s re-removal

was not timely. 

B. Cause to Extend the 30-Day Deadline of § 1446

Oracle asserts even if its re-removal was not timely,

the Court should find cause to extend § 1446's 30-day deadline. 

In particular, Oracle asserted at oral argument that the Court

should find such cause exists because Oracle’s first, albeit

unsuccessful, removal of the State Action was timely and Oracle

acted in good-faith reliance on the copyright claim that Oracle

asserted in the Federal Action. Oracle did not offer any

explanation, however, for its failure to assert a parallel

copyright-infringement counterclaim in the State Action until

December 2, 2014. 

Section 1454(b)(2) provides “the time limitations

contained in section 1446(b) may be extended at any time for

cause shown.” It does not appear that the Ninth Circuit or any

district court within the Ninth Circuit has addressed the kind of

“cause” a defendant must show to extend the 30-day deadline of 

§ 1446. Every court that has addressed the issue, however, has

concluded “‘[w]hile there is no authority on what constitutes

‘cause shown’ under 28 U.S.C. § 1454(b)(2) to extend the 30–day

time period to remove, at a minimum the standard imposes some

burden on the removing party to justify why its tardiness should

be excused.’” Vermont v. MPHJ Tech. Inv., LLC, No. 2:14–cv–192,

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 22 of 29
2015 WL 150113, at *10 (D. Vt. Jan. 12, 2015)(quoting SnoWizard,

Inc. v. Andrews, No. 12–2796, 2013 WL 3728410, at *6 (E.D. La.

July 12, 2013)). See also Donahue, 2014 WL 4259386, at *6

(same); Niadyne, 2013 WL 5943921, at *10 (same). The Court notes

the interpretation of “cause shown” by these courts comports with

the Ninth Circuit’s presumption against removability and the

Ninth Circuit’s strict construction of removal statutes.

On this record the Court concludes Oracle has not shown 

cause for its failure to assert a counterclaim for copyright

infringement in the State Action and to remove the State Action

within the time set out in § 1446. Accordingly, the Court

declines to extend the 30-day deadline of § 1446 within which

Oracle was required to remove the State Action.

II. Removal by Safra Catz and Mythics

Defendants assert even if the Court concludes Oracle’s reremoval was not timely, Catz and/or Mythics timely filed their

Notices of Removal. Specifically, Defendants note § 1454(b)(1)

permits removal when “any party asserts a” copyright claim. 

Thus, even though neither Mythics nor Catz asserted a copyright

claim or counterclaim, they argue they can and timely did remove

this matter under § 1454 based on Oracle’s December 2, 2014,

assertion of the copyright counterclaim in the State Action.

Plaintiffs disagree and contend Mythics and Catz do not have

any right to remove under § 1454(b)(2) because they do not have

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 23 of 29
any basis to assert copyright claims or counterclaims. See

Wright & Miller, 14C Fed. Prac. & Proc. Juris. § 3730 (4th ed.)

(citing Regalado v. City of Chicago, 946 F. Supp. 560, 561 (N.D.

Ill 1996))(“[D]efendants to the non-removable claims in a suit

containing removable claims against other parties cannot

independently initiate a removal of the case.”). See also Rosset

v. Hunter Eng’g Co., No. C 14–01701 LB, 2014 WL 3569332, at *6

n.3 (N.D. Cal. July 17, 2014) (“[A]llowing only defendants named

in federal claims to remove an action . . . based on the court’s

federal question jurisdiction” is consistent with the protection

of the parties and the duty of the court to strictly construe the

removal statutes against removal.); Sylvestre v. Wells Fargo

Bank, N.A., No. 14-cv-03740-JST, 2014 WL 6872898, at *2 (N.D.

Cal. Dec. 4, 2014)(The court remanded when the removing defendant

was not party to any federal claim and, therefore, did not have

any “interest in having the state law claims brought against it

adjudicated in federal court.”). 

Although Plaintiffs concede the rule barring the defendants

to nonremovable claims from independently removing an action

containing removable claims against other defendants arises in

the context of § 1441(a), Plaintiffs assert the bar applies with

equal force to § 1454. Specifically, Plaintiffs note 

§ 1454(b)(1) provides removal “shall be made in accordance with

section 1446, except that if removal is based solely on [§ 1454,]

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 24 of 29
. . . the action may be removed by any party[.]” Section

1446(b)(2)(A) provides when “a civil action is removed solely

under section 1441(a), all defendants who have been properly

joined and served must join in or consent to the removal of the

action.” Plaintiffs emphasize the provision in § 1454(b)(1) for

removal by “any party” is intended to create an exception to the

rule in § 1446(b)(2)(A) that requires all defendants to join in a

removal, but it is not intended to permit a defendant lacking a

removable claim to initiate removal. Moreover, Plaintiffs

contend Oracle and Catz acted consistently with Plaintiffs’

interpretation of § 1454 in their first Notice of Removal when

Oracle and Catz acknowledged: “Not all defendants have joined in

this Notice because Section 1454(b) states that removal may be

made by ‘any party,’ and therefore joinder of all defendants is

not required.”

Neither party cites and the Court has not found any case in

which a court has held a defendant who does not have a copyright

claim or counterclaim can remove an action under § 1454 based on

the copyright counterclaim of another defendant. In particular,

Oracle conceded at oral argument that there is not any case in

which a court permitted a nonparty to a copyright claim to remove

a case under § 1454 when the party to the copyright claim failed

to remove the case successfully. 

In the absence of Ninth Circuit authority, the Court finds

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persuasive the reasoning of the Rosset and Sylvestre courts and

adopts those courts’ conclusion that “allowing only defendants

named in federal claims to remove an action . . . based on the

court’s federal question jurisdiction” is consistent with the

protection of parties and the court’s duty to strictly construe

the removal statutes against removal. Rosset, 2014 WL 3569332,

at *6 n.3. See also Sylvestre, 2014 WL 6872898, at *2. The

Court, therefore, concludes the removal Notices of Mythics and

Catz could not make timely Oracle’s otherwise late re-removal of

the State Action under §§ 1446 and 1454.

 Accordingly, on this record the Court grants Plaintiffs’

Motion to Remand Second Removal and remands this matter to Marion

County Circuit Court. 

III. Request for Attorneys’ Fees and Costs

In their Motion to Remand Second Removal Plaintiffs request

attorneys’ fees and costs related to their Motion to Remand on

the ground that Defendants lacked an objectively reasonable basis

for removal because the removal was not timely. 

A. Standard

The Court has discretion “to require payment of just

costs and any actual expenses, including attorney fees, incurred

as a result of the removal.” 28 U.S.C. § 1447(c). An award of

fees under § 1447(c) “turn[s] on the reasonableness of the

removal. Absent unusual circumstances, courts may award

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 26 of 29
attorney’s fees under § 1447(c) only where the removing party

lacked an objectively reasonable basis for seeking removal.” 

Martin v. Franklin Cap. Corp., 546 U.S. 132, 141 (2005). “[B]ad

faith[, however,] need not be demonstrated.” Moore v. Permanente

Med. Group, Inc., 981 F.2d 443, 448 (9th Cir. 1992). An award of

attorneys’ fees and costs “is not a punitive award against

defendants; it is simply reimbursement to plaintiffs of wholly

unnecessary litigation costs the defendant inflicted.” Id. at

447. “The decision to award attorneys' fees and costs pursuant

to § 1147(c) is left to the court's discretion, but the court

must balance Congress’ desire to deter unjustified removal while

preserving a defendant's right to remove under appropriate

circumstances.” Demont v. Starbucks Corp., No. 10-CV-644-ST,

2010 WL 5173304, at *2 (D. Or. Dec. 15, 2010).

B. Discussion

Courts can award attorneys’ fees and costs pursuant to

§ 1447(c) for untimely removal. Anderson v. Babb, No. CIV 09-

3002-CL, 2009 WL 840191, at *4 (D. Or. Mar. 26, 2009)(citing

Durham v. Lockheed Martin Corp., 445 F.3d 1247, 1254 (9th Cir.

2006)). As Oracle points out, however, “removal is not

objectively unreasonable solely because the removing party's

arguments lack merit” and the removal is ultimately unsuccessful. 

Columbia State Bank v. Daybreak Estates, LLC, No. 10–1284, 2011

WL 832132, at *7 (D. Or. Feb. 9, 2011)(citing Lussier v. Dollar

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 27 of 29
Tree Stores, Inc., 518 F.3d 1062, 1065 (9th Cir. 2008)). Removal

must instead be “frivolous,” must be “clearly foreclosed” by case

law, or must manifest other objectively unreasonable bases in

order to warrant an award of costs. Patel v. Del Taco, Inc., 446

F.3d 996, 999–1000 (9th Cir. 2006). Thus, Oracle asserts its reremoval was not objectively unreasonable because the arguments of

Oracle and Catz “in support of the second removal are made in

good faith and upon reasonable grounds. There is no basis for

finding them ‘frivolous,’ or ‘clearly foreclosed’ by the case

law.” 

In light of the absence of applicable Ninth Circuit

authority, the Court concludes Oracle’s re-removal of the State

Action was not “clearly foreclosed” by case law. Indeed, the

procedural oddities of these cases thus far do not share much

with existing precedent. Instead it is apparent that the parties

to the State and Federal Actions have mutually chosen to exercise

their right to litigate virtually every procedural and

jurisdictional issue they can present.

Against this background the Court finds an award of

attorneys’ fees and costs at this early stage of complex

litigation would promote unnecessary litigiousness and

potentially create an expectation of interim attorney-fee

litigation at various stages while these cases move forward on

their merits. The Court, therefore, in the exercise of its

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Case 6:14-cv-01926-BR Document 38 Filed 03/10/15 Page 28 of 29
discretion, denies Plaintiffs’ request for attorneys’ fees and

costs.

CONCLUSION

For these reasons, the Court GRANTS Plaintiffs’ Motion (#15)

to Remand Second Removal, DENIES Plaintiff’s request for

attorneys’ fees, and DENIES as moot Defendants’ Motion (#9) to

Consolidate.

The Court DIRECTS the Clerk of Court to remand this matter

to the Marion County Circuit Court.

IT IS SO ORDERED.

DATED this 10th day of March, 2015.

/s/ Anna J. Brown

 

ANNA J. BROWN

United States District Judge

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