264 F.3d 622 (6th Cir. 2001), 99-2268, Murray Hill Publications v ABC Communications

Docket Nº:99-2268
Citation:264 F.3d 622
Party Name:Murray Hill Publications, Inc., a Michigan Corporation; Rosary Take-One Productions Limited Partnership, a Michigan limited partnership, Plaintiffs-Appellants, v. ABC Communications, Inc., (a/k/a ABC, Inc. and f/k/a Capital Cities/ABC, Inc.) d/b/a WJR Radio, Defendant-Appellee.
Case Date:August 30, 2001
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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264 F.3d 622 (6th Cir. 2001)

Murray Hill Publications, Inc., a Michigan Corporation; Rosary Take-One Productions Limited Partnership, a Michigan limited partnership, Plaintiffs-Appellants,


ABC Communications, Inc., (a/k/a ABC, Inc. and f/k/a Capital Cities/ABC, Inc.) d/b/a WJR Radio, Defendant-Appellee.

No. 99-2268

United States Court of Appeals, Sixth Circuit

August 30, 2001

Argued: December 1, 2000

Appeal from the United States District Court for the Eastern District of Michigan at Detroit. No. 98-70884; Robert H. Cleland, District Judge.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Mayer Morganroth, Jeffrey B. Morganroth, MORGANROTH & MORGANROTH, Southfield, Michigan, for Appellants.

Herschel P. Fink, HONIGMAN, MILLER, SCHWARTZ & COHN, Detroit, Michigan, for Appellee.

Before: WELLFORD, SILER, and BATCHELDER, Circuit Judges.



Plaintiffs Murray Hill Publications, Inc. and Rosary Take-One Productions Ltd. ("plaintiffs") brought this action against ABC Communications d/b/a WJR Radio ("WJR") raising federal claims of copyright infringement and violation of the Lanham Act, and state law claims of conversion, unjust enrichment, quantum meruit, and unfair competition. The district court granted summary judgment to WJR on all of plaintiffs' claims and dismissed the action, and plaintiffs filed this timely appeal. Because we conclude that plaintiffs' copyright and Lanham Act claims are without merit, that plaintiffs have failed to state a claim for unfair competition, and that plaintiffs' remaining state-law claims are preempted, we affirm the judgment of dismissal.


The plaintiff corporations are owned by Detroit composer and producer Bobby Laurel. This story involves Laurel, his now-deceased friend, Detroit radio personality J.P. McCarthy, and Detroit radio station, WJR. For 30 years, McCarthy hosted a popular morning radio program on WJR. Because they were friends, McCarthy often promoted Laurel's various music and film projects on his morning radio show.

In the early 1980's, Laurel began producing a movie called the Rosary Murders ("the Movie"). The Movie was based upon a novel, written by a Detroit novelist and set in Detroit. The Movie itself was filmed in Detroit. In one scene of the movie, as actor Donald Sutherland enters a diner early in the morning, a radio can be heard playing in the background, and J.P. McCarthy's voice is heard saying, "Good morning, Detroit. This is J.P. on JR in the A.M. Have a swell day." ("the Line"). The Line was said over a song that was an original composition of Laurel's named Jeanette. Laurel registered both Jeanette and the Rosary Murders with the United States Copyright Office.

After the film was completed, Laurel re-recorded Jeanette with some simple lyrics (J.P., J.P., J.P., J.P., J.P. McCarthy) for McCarthy to use as a theme song for his morning radio show ("J.P.'s Theme" or "the Song"). It is undisputed that Laurel appeared on McCarthy's show the day the Song was unveiled. It is undisputed that Laurel received royalties under WJR's

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"per program" license with the American Society of Composers, Authors and Publishers ("ASCAP"), although under the terms of WJR's ASCAP license, WJR did not specifically instruct ASCAP to pay those royalties to Laurel. ASCAP distributed a portion of WJR's flat rate payment to Laurel after Laurel advised ASCAP that the Song (Jeannette revised and renamed as J.P.'s Theme) was being played daily on WJR. WJR claims that Laurel gave both McCarthy and WJR a non-exclusive license to use the Song or the theme song, and that no payment terms were discussed. Laurel, on the other hand, claims that the license was limited to McCarthy's own personal use on his morning show, that the royalties were a critical part of the deal, and that the license necessarily expired upon McCarthy's death.

McCarthy died unexpectedly in August, 1995. On the day of McCarthy's death, WJR producers, faced with the prospect of the next day's morning show and no host, compiled a "tribute" show consisting of memorable bits and pieces from McCarthy's programs over the years. The broadcast that next morning opened with the familiar theme song that had opened and closed McCarthy's morning show for nearly five years.

The tribute show was broadcast the morning after McCarthy's death. Public interest in the broadcast was immediate and pervasive. In the weeks following his death, McCarthy's wife and son and WJR executives concluded that the tribute show had significant market potential and could be a powerful fund-raising tool for the newly formed J. P. McCarthy Foundation ("the Foundation"). The Foundation had been created to support and encourage medical research into various blood disorders, including the one that killed McCarthy.

WJR employees worked on their own time to edit the broadcast--eliminating news, weather and commercials--and to obtain the releases required to convert the broadcast into a 90-minute recording for distribution ("the Recording"), which was available for sale just in time for the Christmas season in 1995. WJR actively promoted sales of the Recording, and a mail-order firm was employed to distribute the Recording. The Recording had significant sales, totaling around 400,000 copies. All of the proceeds were turned over to the Foundation. It is undisputed that WJR did not earn any profits for its role in distributing the Recording; however, Laurel argues that WJR did receive something of value--public acclaim, notoriety, and goodwill--for its role in this charitable endeavor. It is also undisputed that no one sought Laurel's permission to include the Song in the Recording and that Laurel was not credited with authorship of the Song on the insert packaged with the cassette tapes and CD's, while other artists and producers were credited on the insert for their respective contributions.

Plaintiffs also complain about an advertising campaign mounted by WJR from mid-1992 until McCarthy's death in August, 1995, in which WJR commissioned an artist to create a series of billboards to promote McCarthy's morning show. The billboards were designed with a graffiti-style print on a plain background, sporting one of two slogans--"J.P. on JR in the A.M." and "J.P. Makes My Morning." According to plaintiffs, the Line, "J.P. on J.R. in the A.M." was an original line, specifically created by Laurel for the Movie. WJR disputes Laurel's claim that he authored the Line, claiming that McCarthy had used it long before it appeared in the Movie. Plaintiffs further allege that in creating brochures to promote the Movie, Laurel commissioned a group of second grade students to write out by hand the

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Ten Commandments. One student's version was selected and published in a souvenir program that was distributed at the Movie's premier ("the Artwork"). Plaintiffs claim that the lettering style used on WJR's billboards was copied from the Movie's souvenir program with the intention of capitalizing on McCarthy's role in the film. WJR disputes this allegation and claims that its artists created the billboards without any reference whatsoever to plaintiffs' claimed Artwork.

In early 1996, Laurel began pressing his claims against WJR. Several letters were exchanged in which Laurel (or his attorney) expressed Laurel's discontent over WJR's use of the Song in the Recording and the Line and Artwork on the billboards without first obtaining his permission or giving him credit or royalties. When the parties could not agree this lawsuit ensued.


Plaintiffs filed a six-count complaint in federal district court, alleging claims under federal statutory law and Michigan common law. Counts I and II sounded in federal law. Count I charged defendants with violating the Copyright Act because the defendants allegedly marketed, broadcasted, and otherwise used the Song, the Line, and the Artwork. Count II accused the defendants of violating the Lanham Act because they displayed the Line and the Artwork on billboards and because they used the Song in the Recording without giving Laurel credit.

Counts III through VI sounded in Michigan common law. Count III sought recovery for the tort of conversion and accused defendants of converting plaintiffs' ideas and concepts--the Song, the Line, and the Artwork--for their own use in the marketing campaign for McCarthy's Foundation that followed McCarthy's untimely death. Count IV did the same under the rubric of unjust enrichment. Count V sought recovery under the equitable theory of quantum meruit alleging that defendant WJR always knew that plaintiffs intended to be paid for any use of their ideas and concepts. And Count VI alleged unfair competition under Michigan common law and charged that the defendants appropriated plaintiffs' Song, Line, and Artwork to deceive the public about who originated these works.


A. Standard of Review

We review de novo a district court's grant of summary judgment. See Allen v. Michigan Dep't of Corrections, 165 F.3d 405, 409 (6th Cir. 1999). Summary judgment is proper if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). When reviewing a motion for summary judgment, we must view the evidence and any inferences that may be drawn from the evidence in the light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp...

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