REPLY BRIEF ON DEFENDANT'S MOTION TO DISMISS ...

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 1 of 6
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
-----------------------
REMARK, LLC,
Plaintiff,
v. CASE NO. 2:10-cv-12767-GCS-MKM
HONORABLE GEORGE CARAM STEEH
ADELL BROADCASTING
MAGISTRATE JUDGE MONA K. MAJZOUB
CORPORATION, doing business
as WADL-TV,
Defendant.
REPLY BRIEF ON DEFENDANT’S MOTION TO
DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT
PURSUANT TO FED. R. CIV. P. 12(b)(6)
A. Reply on the Copyright Infringement Claim
The criticial defect in Remark‟s efforts to plead a copyright infringement claim, in both
the original Complaint and the First Amended Complaint, is its failure to identify any original,
and hence protectable, matter contained in the “Remarkable Mouth” television commercial, of
Copyright Reg. No. PA 64-936, or any other work for which it asserts copyright ownership. The
“chart” on page 6 of Remark‟s opposition brief identifies no original content.
Remark misstates the proof elements of a copyright infringement claim on page 5 of its
opposition brief, arguing that “access” and “substantial similarity” are all that need be recited in
pleading a claim for copyright infringement. The correct statement of the proof elements is from
Feist Publications, Inc. v. Rural Telephone Service Company, 499 U.S. 340, 361, 111 S. Ct.
1

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 2 of 6
1282, 1296 (1991): ATo establish infringement, two elements must be proven: (1) ownership of
a valid copyright and (2) copying of constituent elements of the work that are original.@
(Boldface added.) The Feist Court emphasized that only original content is protectable: “As we
have explained, originality is a constitutionally mandated prerequisite for copyright protection.”
499 U.S. at 351. The principal Sixth Circuit case on proof of copyright infringement, Kohus v.
Mariol, 328 F.3d 848, 853 (6 th Cir. 2003), follows the Feist rule on originality: “Not all
„copying‟ is actionable, however: it is a constitutional requirement that a plaintiff bringing an
infringement claim must prove „copying of constituent elements of the work that are original.‟
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358
(1991) (emphasis added).” Under the Sixth Circuit‟s test for infringement, the “substantial
similarity” analysis does not compare the accused work and the copyrighted work in their
entireties; rather, only the “protectable elements” of the copyrighted work are compared to the
accused work. Kohus, 328 F.3d at 855.
Remark does not identify any original content of any work in its pleading; only some
“common expressive and distinctive elements” distilled from a cloud of unregistered works. See
FAC 8 and 9. Remark then purports to compare “expressive elements,” not original elements,
in its multitude of unregistered works with Adell Broadcasting‟s accused commercials. By using
this erroneous legal standard, Remark fails to plead a claim upon which relief can be granted.
On pages 7-9 of its opposition brief, Remark argues that the Supreme Court in Reed
Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010) “rejected” the rule that only the new matter in
a derivative work is protectable. Remark seriously misstates the holding of Reed Elsevier; the
Supreme Court made no such rejection. The “rule” is statutory, 17 U.S.C. §103(b) (“The
2

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 3 of 6
copyright in a compilation or derivative work extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the work, and
does not imply any exclusive right in the preexisting material.”). Reed Elsevier clarified only
that the registration requirement of 17 U.S.C. §411(a) as a prerequisite to a copyright
infringement suit is more aptly described as “a precondition to filing a claim,” (130 S.Ct. at
1241), or “claim-processing requirement,” (130 S.Ct. at 1244), not jurisdictional. Reed Elsevier
comports with the Supreme Court‟s 2006 clarification of this point of law in Arbaugh v. Y & H
Corp., 546 U.S. 500, 126 S.Ct. 1235, 163 L.Ed.2d 1097 (2006).
Lastly, Remark faults Adell Broadcasting for stating the rule that pre-1989 publication of
a work without notice may cause the work to enter the public domain. The rule is well-known
and was re-stated by the Second Circuit in Martha Graham School And Dance Foundation, Inc.
v. Martha Graham Center Of Contemporary Dance, Inc., 380 F.3d 624, 633, n. 14 (2d Cir.
2004). Remark fails to plead its pre-1989 works were published with any copyright notice in
conformity with this rule, a pre-1989 statutory condition for copyright protection.
B. Reply On The Lanham Act §43(a) Claim
Remark attacks the Sixth Circuit‟s 2001 decision in Murray Hill Publications, Inc. v.
ABC Communications, Inc., 264 F.3d 622, 634-35 (6 th Cir. 2001), as “abrogated” by Reed
Elsevier. Remark is wrong. The Murray Hill holding was validated by the Supreme Court in
2003 in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003).
Dastar called the same type of Lanham Act §43(a) false advertising claim advanced here by
Remark “a species of mutant copyright law.” 539 U.S. at 35. Dastar bars these claims unless
they are based on “tangible goods”:
3

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 4 of 6
In sum, reading the phrase "origin of goods" in the Lanham Act in accordance
with the Act's common-law foundations (which were not designed to protect
originality or creativity), and in light of the copyright and patent laws (which
were), we conclude that the phrase refers to the producer of the tangible goods
that are offered for sale, and not to the author of any idea, concept, or
communication embodied in those goods. Cf. 17 U. S. C. § 202 (distinguishing
between a copyrighted work and "any material object in which the work is
embodied"). To hold otherwise would be akin to finding that § 43(a) created a
species of perpetual patent and copyright, which Congress may not do. See Eldred
v. Ashcroft, 537 U. S. 186, 208 (2003). (Boldface added.)
Remark‟s argument on page 11 of its opposition brief that this rule was abrogated by
Reed Eslevier in 2010, is baseless. The existence of “tangible goods” is a statutory predicate for
a Lanham Act §43(a) false advertising claim. See, e.g., Johnson v. Jones, 149 F.3d 494, 503 (6 th
Cir. 1998), where defendant Tosch literally removed plaintiff Johnson‟s name and seal from
architectural drawings and replaced them with his own.
Remark fails to meet the “tangible goods” requirement of Dastar, and thereby fails to
state a Lanham Act §43(a) false advertising claim.
C. Reply On The Breach Of Contract Claim
Remark alleges in 57 of the First Amended Complaint that:
57. The terms of the oral agreement were placed into a document entitled
“Settlement Agreement and Mutual Release (“Settlement Agreement”), a copy of
which is attached as Exhibit H.
The preamble of the “Settlement Agreement” of Exhibit H to the First Amended
Complaint states, in relevant part:
This Settlement Agreement and Mutual Release (“Agreement”) ... shall become
effective as of the date the parties sign the Agreement. (Boldface added.)
The “merger” clause of paragraph 12 of Exhibit H states, in relevant part:
12. This Agreement constitutes and contains the entire agreement and
understanding concerning the subject matter hereof between the Parties, and
4

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 5 of 6
supersedes and replaces all prior negotiations, proposed amendments or
agreements, written or oral. (Boldface added.)
These provisions make it clear that (A) the parties manifested an intent not to be bound
until execution of a written or formal contract, and (B) preceding communications would not be
operative as an offer or acceptance. Accordingly, under Michigan contract law, there is no
contract. Angelo DiPonio Equipment Co. v. State of Michigan, 107 Mich. App. 756, 761, 309
N.W.2d 566, 568 (1981):
The trial court further found that since defendants manifested an intent not
to be bound until the execution of a written or formal contract, no valid and
enforceable obligation arose. We agree.
In Michigan Broadcasting Co. v. Shawd, 352 Mich. 453, 90 N.W.2d 451
(1958), the Court held that if the parties indicated that the expected or proposed
contract was to be the exclusive, operative consummation of the negotiations, the
preceding communications would not be operative as an offer or acceptance. See
also 17 Am.Jur.2d, Contracts, s 28, p. 363, 1 Williston on Contracts (3d ed.), s 28,
p. 66, 1 Corbin on Contracts, s 30, pp. 97-112.
Remark‟s breach of contract claim fails as a matter of law on the admitted facts of Count
III, namely that the parties intended only to be bound unless the contract was signed, and that all
prior negotiations, proposed amendments or agreements, written or oral, were superseded.
Respectfully submitted,
BROOKS KUSHMAN P.C.
Dated: January 31, 2011
By: /s/ Robert C.J. Tuttle
Mark A. Cantor (P32661)
Robert C.J. Tuttle (P25222)
1000 Town Center, 22 nd Floor
Southfield, Michigan 48075-1238
Tel: (248) 358-4400 / Fax: (248) 358-3351
Email: mcantor@brookskushman.com
rtuttle@brookskushman.com
Attorneys for Defendant
5

Case 2:10-cv-12767-GCS-MKM Document 29 Filed 01/31/11 Page 6 of 6
CERTIFICATE OF ELECTRONIC SERVICE
I hereby certify that on January 31, 2011 I electronically filed the foregoing
REPLY BRIEF ON DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S FIRST
AMENDED COMPLAINT PURSUANT TO FED. R. CIV. P. 12(b)(6) with the Clerk of the
Court for the Eastern District of Michigan using the ECF System which will send notification to
the registered participants of the ECF System as listed on the Court's Notice of Electronic Filing.
I also certify that I have mailed by United States Postal Service the paper to the following nonparticipants
in the ECF System: None.
BROOKS KUSHMAN P.C.
By: /s/ Robert C.J. Tuttle
Mark A. Cantor (P32661)
Robert C.J. Tuttle (P25222)
1000 Town Center, 22 nd Floor
Southfield, Michigan 48075-1238
Tel: (248) 358-4400 / Fax: (248) 358-3351
Email: mcantor@brookskushman.com
rtuttle@brookskushman.com
Attorneys for Defendant
6