Masck v. Sports Illustrated, et al

Filing 84

ORDER Granting in part and Denying in part 65 Plaintiff's Motion to Dismiss Defendant Howard's Counterclaim. Signed by District Judge Gershwin A. Drain. (Bankston, T)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
BRIAN MASCK,
Plaintiff,
Case No. 13-cv-10226
HON. GERSHWIN A. DRAIN

vs.

SPORTS ILLUSTRATED, et al.,
Defendants.
______________________________________/
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO
DISMISS DEFENDANT HOWARD’S COUNTERCLAIM [#65]

I.

INTRODUCTION
On January 18, 2013, Plaintiff, Brian Masck, filed the instant copyright infringement and

unfair competition action against Defendants Sports Illustrated, Fathead, Walmart, Amazon,
Desmond Howard, Photofile, Getty Images, Nissan, and Champions Press for the unauthorized
use of Plaintiff’s iconic photograph of the “Heisman Pose.” Presently before the Court is
Plaintiff's Motion to Dismiss Defendant Desmond Howard’s counterclaim, which alleges a
violation of Howard’s right of publicity under Florida state law and unfair competition under the
Lanham Act. For the reasons that follow, the Court grants in part and denies in part Plaintiff’s
Motion to Dismiss.
II.

FACTUAL BACKGROUND
This suit is a copyright infringement action. The basis of the suit is an iconic photo of

Howard taken by Plaintiff on November 23, 1991 at Michigan Stadium in Ann Arbor, Michigan.

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The photo was taken of Howard after returning a punt for a touchdown during a football game
where the University of Michigan Wolverines soundly defeated archrival Ohio State University
Buckeyes. Before crossing the end zone, Howard made what is now known as the “Heisman
pose” by lifting his left leg up and stretching out his left arm. Plaintiff alleged that he was the
only photographer who got a “sharp” shot of this now iconic pose.
Plaintiff made a copy of the photo and sent it to Sports Illustrated for publication in a
planned Heisman preview issue. Plaintiff alleged he wrote “Photo © 1991 by Brian Masck” on
the cardboard mount of the slide that was sent to Sports Illustrated. The photo was included in an
article about Howard published in an issue of Sports Illustrated on December 9, 1991. The photo
correctly credited “Brian Masck” as the photographer. Sports Illustrated paid Plaintiff for the use
of the photograph and did not return the negative. Around the time of the first publication of the
photo Plaintiff claimed he sought the counsel of the law firm Warner Norcross and Judd about
correctly copyrighting the photograph and was told that publication with the proper attribution
was sufficient protection. Based on this advice, Plaintiff did not register the photo with the
Copyright Office until August 31, 2011. Since that time, Plaintiff has observed several alleged
infringements by the named Defendants, including on Howard’s website.
Plaintiff discussed the sale of the photograph with Howard’s agent on August 15, 2011
and met with Howard personally on August 18, 2011. They were unable to reach an agreement.
The two parties spoke again in 2012 about a joint enterprise selling Desmond Howard
merchandise. They once again failed to reach an agreement. In August 2012, while negotiations
were ongoing, Plaintiff sent a sample of the photo that was slightly altered so that Plaintiff could
track unauthorized use of the photo. Plaintiff claimed this was the photo that was uploaded to
Howard’s website.

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Plaintiff brought this suit in attempt to receive compensation for the alleged unauthorized
use of the photo by the Defendants over the years. Plaintiff’s lengthy Complaint raised twenty
different claims against the Defendants. The claims include copyright infringement under the
Copyright Act, 17 U.S.C. § 502, et seq. (Counts I-IX); unfair competition under the Lanham Act,
11 U.S.C. § 1125 (Counts X-XVI); unfair competition under the Michigan Consumer Protection
Act, MICH. COMP. LAWS § 445.911 (Count XVII); tortious interference (Count XVIII); unjust
enrichment (Count XIX); and injunctive relief (Count XX).
Howard filed a two count counterclaim in his Answer. First, he alleged that Plaintiff
violated FLA. STAT. ANN. § 540.08 by using his name, image, and likeness without consent.
Second, he claimed Plaintiff violated the Lanham Act because this usage is likely to mislead the
public by creating the false impression that Plaintiff’s products were affiliated with Howard in
some way. Plaintiff’s Motion to Dismiss these claims is now before the Court.
III.

ARGUMENT

A.

Standard of Review
A Motion to Dismiss a claim is governed by Fed. R. Civ. P. 12(b)(6), which provides that

a claim may be dismissed for failure to state a claim upon which relief may be granted. When
deciding a Motion to Dismiss, the Court must construe the complaint in the light most favorable
to the plaintiff, accept all factual allegations in the complaint as true, and determine whether it is
possible for the plaintiff to prove any facts in support of the claim. Pinney Dock and Transport
Co. v. Penn Central Corp., 196 F.3d 617, 619 (6th Cir. 1999).
To survive a Motion to Dismiss, the complaint must contain either “direct or inferential
allegations respecting all the material elements to sustain a recovery under some viable legal
theory.” Lillard v. Shelby Bd. Of Educ., 76 F.3d 716, 726 (6th Cir. 1996). A plaintiff must

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provide more than simply a recitation of the necessary elements: he must provide factual
allegations sufficient “to raise a right to relief above the speculative level.” Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555 (2007).
B.

Analysis
Plaintiff raises four arguments to dismiss Howard’s counterclaim: 1) the Court does not

have jurisdiction over the Florida state law claim, 2) the Lanham Act preempts the state law
claim, 3) the state law claim is untimely and 4) the Lanham Act claim is inappropriate because
nothing on Plaintiff’s website or products is literally false. While Howard’s state law claim is
untimely, his Lanham Act claim survives the Motion to Dismiss.
1.

Jurisdiction over the Florida Law claim

Plaintiff first claims that this Court lacks subject matter jurisdiction over Howard’s Florida
law claim. However, this Court has jurisdiction over the state law claim through supplemental
jurisdiction. Under 28 U.S.C. § 1367(a), if the Court has original jurisdiction over a claim, it has
supplemental jurisdiction over all other claims that “are so related to claims in the action . . . that
they form part of the same case or controversy . . . .” 28 U.S.C. § 1367(a). A claim forms part of
the same case or controversy “when [it] derive[s] from a common nucleus of operative facts.”
Harper v. AutoAlliance Int’l, Inc., 392 F.3d 195, 209 (6th Cir. 2004). Howard’s counter claim is
part of the same case since it arises under the same operative facts; namely, the use of the
photograph of Howard. Because Howard’s state law claim necessarily involves the same facts
the Court has supplemental jurisdiction.
2.

Preemption

Plaintiff argues next that the Lanham Act preempts the state law claim. He contends that
there is nothing qualitatively different from the Florida law claim and the Lanham Act claim.

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However, the Court finds this argument unpersuasive because the Lanham Act itself is silent on
the matter.
While the Lanham Act contains a preemption provision it is inapplicable to Howard’s Florida
law claim under § 540.08. The act’s narrow preemption provision only forbids states from
interfering with federally registered trademarks. 15 U.S.C. § 1121(b). It provides that states
cannot require “alteration of a registered mark, or require that additional trademarks . . . that may
be associated with or incorporated into the registered mark be displayed in the mark in a manner
differing from the display . . . exhibited in the certificate of registration.” Id. Since the state law
in no way interferes with a federally registered trademark, the Lanham Act does not expressly
preempt the Florida law.
Although Plaintiff contends that the Florida law does not provide any additional rights to
Howard compared to the Lanham Act, this is incorrect. The Lanham Act only protects against
false association, whereas the Florida law protects against the use of Howard’s likeness and
photo for the purposes of trade. Fla. Stat. § 540.08. Plaintiff further claims that he could not find
a single case that allowed a claimant to bring concurrent Lanham Act and Fla. Stat. § 540.08
claims. The Sixth Circuit, however, has allowed claimants to bring a Lanham Act claim and a
right to publicity claim simultaneously. See Carson v. Here’s Johnny Portable Toilets, Inc., 698
F.2d 831 (6th Cir. 1983) (recognizing plaintiff’s independent claims under the Lanham Act and
under common law right of publicity). Therefore, Plaintiff’s preemption argument is
unpersuasive.
3.

Statute of Limitations

Plaintiff correctly argues that the Florida state claim is untimely. Although the statute itself is
silent on the matter, Florida courts have held that the statute is subject to a four-year general

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statute of limitations. See Epic Metals Corp. v. Condec, Inc., 867 F. Supp. 1009 (M.D. Fla.
1994). Despite Howard’s contention that the statute of limitations should start anew with each
successive publication, Florida courts have held that the statute of limitation starts on the date of
the first publication of the photograph. See Miller v. Anheuser Busch, Inc., 591 F. Supp. 2d 1377,
1381 (S.D. Fla. 2008) aff'd in part, rev'd in part, 348 F. App'x 547 (11th Cir. 2009) (holding that
a model's claims against an advertiser for commercial misappropriation of her image accrued on
date of first publication of each photograph in each advertising campaign rather than when
images were republished). Because each of Plaintiff’s publications involved the same
photograph, the date of the first publication in 1991 is when the statute of limitations begins.
Therefore, Howard’s claim is over fifteen years too late and barred by the statute of limitations.
4.

Lanham Act claim

Finally, Plaintiff contends that Howard has failed to state a claim under the Lanham Act
because his website and his products are not literally false. Plaintiff argues that a publication
must be literally false in order to violate the Lanham Act. However, a statement can be literally
true while still conveying a false message. See American Home Products Corp. v. Johnson &
Johnson, 577 F.2d 160, 165 (2d Cir. 1978). Therefore, Plaintiff’s claim that his website and
products are truthful does not warrant dismissal of Howard’s Lanham Act claim. Howard has
otherwise alleged sufficient facts to make a prima facie case under the Lanham Act since he
claims that the use of his picture and likeness on Plaintiff’s website and products created a
misleading representation. This is sufficient to survive a Motion to Dismiss.
IV.

CONCLUSION

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For the reasons set forth above, Plaintiff’s Motion to Dismiss the Counterclaim [#65] is
GRANTED IN PART AND DENIED IN PART. Plaintiff’s Motion is GRANTED with respect
to Howard’s Florida state law claim and DENIED with respect to Howard’s Lanham Act claim.
SO ORDERED.

Dated: July 23, 2013
/s/ Gershwin A. Drain____________
GERSHWIN A. DRAIN
UNITED STATES DISTRICT JUDGE

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