814 F.2d 290 (6th Cir. 1987), 84-1851, Mihalek Corp. v. State of Mich.

Docket Nº:84-1851, 84-1854, 85-1593 and 85-1986.
Citation:814 F.2d 290
Party Name:2 U.S.P.Q.2d 1161 The MIHALEK CORPORATION and Lawrence Patrick Mihalek, Plaintiffs-Appellants, v. The STATE OF MICHIGAN, Governor James J. Blanchard, the Dept. of Commerce of the State of Michigan, Ralph J. Gerson, Director, Ross Roy, Inc., Defendants- Appellees.
Case Date:March 18, 1987
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit
 
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Page 290

814 F.2d 290 (6th Cir. 1987)

2 U.S.P.Q.2d 1161

The MIHALEK CORPORATION and Lawrence Patrick Mihalek,

Plaintiffs-Appellants,

v.

The STATE OF MICHIGAN, Governor James J. Blanchard, the

Dept. of Commerce of the State of Michigan, Ralph

J. Gerson, Director, Ross Roy, Inc.,

Defendants- Appellees.

Nos. 84-1851, 84-1854, 85-1593 and 85-1986.

United States Court of Appeals, Sixth Circuit

March 18, 1987

Argued Nov. 21, 1986.

Opinion on Rehearing June 8, 1987.

Page 291

James M. Deimen, Ann Arbor, Mich., Richard A. Heikkinen, The Heikkinen Law Firm, Howell, Mich., for plaintiffs-appellants.

John H. Dudley, Jr., Butzel, Long, Gust, Klein & Van Zile, Detroit, Mich., for Swank Motion Pictures.

Irwin Karp, Port Chester, N.Y., for Author's League.

Nancyellen Keane (argued), Asst. Atty. Gen., Com. of Va., Richmond, Va., amicus curiae.

Dennis Egan, Butzel, Keidan, Simon, Myers & Graham, Detroit, Mich., S.B. Rosenfeld (argued), Paul, Weiss, Rifkin, Wharton & Garrison, New York City, for Nat. Music Pub. Ass'n.

Harry G. Iwasko, Philip J. Smith (argued), Thomas A. Hallin, Asst. Attys. Gen., Lansing, Mich., for defendants-appellees in No. 84-1851.

Frank J. Kelley, Harry G. Iwasko, Jr., Philip J. Smith (argued), Thomas A. Hallin, Lansing, Mich., for defendants-appellees in No. 84-1854.

Frank J. Kelley, Louis J. Caruso, Harry G. Iwasko, Jr., Philip J. Smith (argued), Thomas A. Hallin, Lansing, Mich., for defendants-appellees in No. 85-1593.

Thomas A. Hallin, Asst. Atty. Gen., Lansing, Mich., Frank J. Kelley, Louis J. Caruso, Harry G. Iwasko, Philip J. Smith (argued), Robert D. Brignall, Detroit, Mich., for defendants-appellees in No. 85-1986.

Before MERRITT, WELLFORD and NORRIS, Circuit Judges.

WELLFORD, Circuit Judge.

Lawrence Patrick Mihalek and his wholly owned corporation, Mihalek Corporation, collectively herein called Mihalek (as done in plaintiffs' brief, and as referred to by the district court), sued the State of Michigan, its governor, and its Department of Commerce and director, claiming, in effect, that these defendants misappropriated his copyrighted ideas and materials for a statewide advertising campaign promoting tourism and business and agricultural enterprise in the state. The background of this controversy is generally undisputed. Michigan

Page 292

officials, faced with the problems of recession in that state, decided during 1980 to develop an advertising and promotional campaign to foster awareness of the advantages of the state by way of tourism, agricultural and business advantages and attractions. A Washington, D.C., public relations firm was engaged to develop specific ideas and a campaign program to encourage greater enterprise and commerce within Michigan. A campaign styled "Say Yes to Michigan" was created and announced; later in 1984 a Detroit advertising firm was engaged to promote and develop this theme, which it called the "Yes M! CH!GAN" campaign.

Mihalek had initiated his own concept of a promotional program to help build a better general economic, business, and tourist climate in Michigan beginning in late 1980. He approached numbers of persons, to many or most of whom he was unknown, to try to familiarize them with his ideas and general campaign suggestions. Some of those whom he contacted and submitted materials were state officials or legislators. Mihalek had not held himself out as being in the advertising or public relations business prior to that time. His background had rather been in automobile sales and leasing. Mihalek called his proposal, "Michigan is Good News," and he incorporated a number of sketches, pictures and clippings about events giving an affirmative tone to opportunities in Michigan despite much bad news that affected the business climate and condition in that state. Mihalek copyrighted the materials in his proposed program at some point in his presentations and during the development of the so-called "Say Yes to Michigan" promotion.

With the assistance of his Michigan state representative, Mihalek was able to procure meetings with lower echelon state government officials initially and later arranged meetings with Michigan Commerce Department officials to present his proposals. Several of the documents and materials were retained by state officials.

Mihalek contends that he was unaware that Michigan officials, including several with whom he had made contact and whom he had made a presentation while his work was in progress, were meeting with other public relation firms about Michigan's campaign. He claims that they received and used the ideas and materials he created without payment or recognition.

Michigan officials made arrangements, as stated, with well known and experienced public relations firms to carry out the "Say Yes to Michigan", and "Yes M! CH!GAN" programs, which defendant state officials had adopted and approved. Mihalek's suit followed, claiming infringement of copyright, violation of trademark, and violation of constitutional rights under 42 U.S.C. Sec. 1983 (taking without due process and compensation), and pendent state claims for unfair competition and misappropriation of work product. Defendants do not deny that plaintiff is the holder of and has the right to the copyrighted materials or trademark materials in dispute, described collectively as the "Michigan is Good News" campaign.

Defendants moved to dismiss the complaint and amended complaint, urging Eleventh Amendment immunity and denying any misappropriation as charged. The district court, after a full discussion of the immunity contention, dismissed many of Mihalek's claims. See 595 F.Supp. 903 (E.D.Mich.1984). The court, in effect, reduced the claims to petitions for injunctive relief against individual state officers. Prior to Mihalek's suit in federal court, Michigan had sued Mihalek in state court seeking and obtaining a temporary restraining order to prevent Mihalek's interference with Michigan's public relations campaign then in progress in 1984. The state action was removed to federal court and the cases were consolidated.

The district court judge also later held that after personally examining Mihalek's materials and those of the State of Michigan utilized in its "Say Yes to Michigan" and "Yes M! CH!GAN" campaigns, they were not substantially similar as a clear matter of fact, and further, as a matter of law there was no material issue in...

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