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

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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
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