Mihalek Corp. v. State of Mich.

• Decision Date: 08 June 1987
• Docket Number: Nos. 84-1851,85-1593 and 85-1986,84-1854,s. 84-1851
• Citation: 814 F.2d 290
• Parties: 1987 Copr.L.Dec. P 26,079, 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.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 290

814 F.2d 290

1987 Copr.L.Dec. P 26,079, 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.

Argued Nov. 21, 1986.

Decided March 18, 1987.

Opinion on Rehearing June 8, 1987.

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 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 dispute to preclude his granting defendants' motion for summary judgment in the remaining claims for injunctive and/or declaratory relief. Summary judgment was granted defendants on all federal causes of action, but the district court held that it lacked jurisdiction to adjudicate the pendent state law claims and ordered a remand of these claims to state court. As to the added defendant, the Detroit public relations firm utilized in Michigan's official campaign, the district court entered its summary judgment motion on all claims. The district court declined to reconsider its decision, 630 F.Supp. 9 (1985), and this appeal ensued. This court has permitted a number of amicus curiae briefs to be filed and has permitted on a limited basis amicus curiae participation in oral argument.

With respect to the infringement of copyright claim, Mihalek makes the following assertions in his appellate brief:

MIHALEK'S property, most of which is presently unpublished, were all properly protected under the provisions of the Copyright Act 17 U.S.C. Secs. 101 et seq., 302(a). Notice of copyright was clearly placed on all of the works, even though not necessary for unpublished works, 17 U.S.C. Sec. 401(a). Infringement thereof is therefore with actual notice of claim to copyright.

MIHALEK created a wholly original advertising campaign, its "product" being the State of Michigan. What MIHALEK'S valid copyrights protect is the proposals and advertisements themselves, and as grouped together as a "compilation", see 17 U.S.C. Sec. 101, definitions.

MIHALEK devised a combination of expressions devised to sell the State of Michigan and to make people feel good about the State of Michigan, which were reduced to concrete form. It is not the product (THE STATE OF MICHIGAN), but the design, layout, arrangement, expression, portrayal and description in the advertisements and proposals, which are protected individually and as a whole, by copyrights to MIHALEK. With valid copyrights, the exclusive rights enumerated under 17 U.S.C. Sec. 106(1), through (5), are attached to all of MIHALEK'S works.

The first appeal in these consolidated cases arises out of the district court's holding that (1) the state and its departments and officials acting for the state were immune under the Eleventh Amendment; (2) only prospective injunctive relief against state officials might be obtained even if plaintiff established his case; and (3) no effectual relief could be obtained from alleged state law violations. Judge Joiner found no entitlement to relief and plaintiffs appealed. After the factual finding of no substantial similarity and the legal conclusion that there was no copyright infringement, Judge Joiner entered summary judgment for defendants. ¹

We have jurisdiction of this appeal, as the state defendants concede, under the copyright and trademark claims.

Mihalek argues that summary judgment was inappropriate with respect to this issue, because, among other reasons, he presented affidavits by "average lay observers" to the effect that there was substantial similarity. He contends therefore that the affidavits presented a contested material issue precluding summary judgment. Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094 (6th Cir.1984) cited by plaintiffs, holds that in copyright infringement cases summary judgment is "sparingly" granted, and that "an appellate tribunal must review the evidence in the light most favorable to the party opposing the judgment." Id. at 1097. We are mindful of these precautions in reviewing the district court's...