Masck v. SI Howard Answer and CC

7/28/2019 Masck v. SI Howard Answer and CC

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UNITED STATES DISTRI CT COURTEASTERN DISTRI CT OF MICHI GAN

SOUTHERN DIVISION ______________________________________________________________________________

BRIAN MASCK,Plaintiff,

v.

SPORTS ILLUSTRATED; NISSAN NORTHAMERICA; GETTY IMAGES, INC.;CHAMPIONS PRESS, L.L.C.; DESMONDHOWARD; PHOTO FILE, INC.; FATHEAD,L.L.C.; WAL-MART STORES, INC.; WAL-

MART.COM USA, L.L.C.; andAMAZON.COM, INC.,

Defendants.

Case No. 2:13-cv-10226

District Judge Gershwin A. Drain

Magistrate Judge David R. Grand

DEFENDANT DESMOND HOWARD'S ANSWER TO COMPLAI NT,AFFI RMATIVE DEFENSES, COUNTERCL AIM, AND J URY DEMAND

ANSWER

Defendant/Counter- Plaintiff, Desmond Howard ("Howard"), by and through his counsel,

Varnum LLP, as and for his Answer to Complaint of Plaintiff/Counter-Defendant, Brian Masck

("Masck"), using the same numbered paragraphs, states as follows:

1-6. Howard is without knowledge or information sufficient to form a belief as to the

truth of the allegations.

7. Based upon information and belief, Howard admits the allegations (except that

Champion Press is a Michigan LLC).

8. Howard admits the allegations.

2:13-cv-10226-GAD-DRG Doc # 47 Filed 04/15/13 Pg 1 of 23 Pg ID 264


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9. Howard admits that he owns the website DesmondHoward.com . Howard denies

that he operates, maintains, and controls the website and further denies that he supervises and

controls all information contained on the website.

10-17. Howard is without knowledge or information sufficient to form a belief as

to the truth of the allegations.

18. Howard admits that this Court has original jurisdiction as to Masck's claims under

the Copyright Act and Lanham Act. As to any remaining or inconsistent allegations, Howard is

without knowledge or information sufficient to form a belief as to their truth.

19. Howard admits that this Court has supplemental jurisdiction, but, furtheringanswering, denies that any of Masck's claims that are based on supplemental jurisdiction are

valid or otherwise state a claim.

20-21. Howard admits that venue is proper in this Court. As to any remaining or

inconsistent allegations, Howard is without knowledge or information sufficient to form a belief

as to their truth.




to the truth of the allegations. Further answering, Howard denies he has any liability to Masck

for any reason.





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41. Howard admits that he played high school sports in Cleveland and came to the

University of Michigan to play college football. As to any remaining or inconsistent allegations,

Howard is without knowledge or information sufficient to form a belief as to their truth.

4245. Howard is without knowledge or information sufficient to form a belief as


46. Howard admits that, before 1991, only one University of Michigan football player

(Tom Harmon in 1940) had won the Heisman Trophy. Howard further admits that under coach

Gary Moeller, the 1991 Wolverines were undefeated in the Big Ten. Howard admits that he was

a football player at the University of Michigan in 1991. As to any remaining or inconsistentallegations, Howard is without knowledge or information sufficient to form a belief as to their

truth.

47. Howard admits generally that he was a football player at the University of

Michigan in 1991. As to any remaining or inconsistent allegations, Howard is without

knowledge or information sufficient to form a belief as to their truth.



52. Howard denies that Masck facilitated Howard's persona or had anything to do

with the fame or success of Howard. As to any remaining or inconsistent allegations, Howard is

without knowledge or information sufficient to form a belief as to their truth.

53. Howard is without knowledge or information sufficient to form a belief as to the


54-55. Howard admits he scored a touchdown against Ohio State on a punt return

in the second quarter of the game. Howard further admits those allegations which can be



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corroborated by contemporaneous television coverage of the touchdown. As to any remaining or


as to their truth.



57. Howard denies that the photograph alleged to have been taken by Masck is the

only shot of the event. As to any remaining or inconsistent allegations, Howard is without


58-68. Howard is without knowledge or information sufficient to form a belief asto the truth of the allegations.

61.(sic)-62.(sic) Howard is without knowledge or information sufficient to form a

belief as to the truth of the allegations.

69.-70. Howard is without knowledge or information sufficient to form a belief as


71. Howard admits that Masck did not register the copyright in the photograph in

1992. As to any remaining or inconsistent allegations, Howard is without knowledge or

information sufficient to form a belief as to their truth.



73. Howard admits generally that Masck expected to capitalize on the value of

Howard's persona. As to any remaining or inconsistent allegations, Howard is without




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76-78. Upon information and belief, Howard admits the allegations.



86. Howard denies that the alleged inaccurate credits are unlawful for the reason that

such allegations are, as a matter of law, meritless legal conclusions. As to any remaining or


as to their truth.87-94. Howard is without knowledge or information sufficient to form a belief as


95. Howard admits that Masck first contacted him and Ward Headley ("Headley"),

president of Direct Sportslink, Howard's representation in connection with speaking

engagements, appearances, and endorsements originating from his official website,

DesmondHoward.com , on or about August 1, 2011. Masck contacted them by sending an email

to [email protected] which Masck obtained through Howard's website, and stated that

he wanted to discuss ways that he could work with Howard. Based upon information and belief,

Howard further admits that: (a) the parties exchanged multiple emails and had telephone calls in

August 2011; (b) Masck wanted Howard's public support in pursuing third-parties which Masck

suspected of infringing his alleged copyright in the photograph; (c) Masck expressed interest in

selling the photograph to Howard, in exchange for Howard's public support, after resolving his

disputes with such third-parties; and (d) Headley asked Masck what he'd like in return for

transferring the rights in the photograph to Howard. As to any remaining or inconsistent



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allegations, Howard is without knowledge or information sufficient to form a belief as to their

truth.

96. Howard admits that he met with Masck in person on August 18, 2011 and that

they talked. As to any remaining or inconsistent allegations, Howard is without knowledge or


97. Howard admits the allegations.



99. Howard is without knowledge or information sufficient to form a belief as to thetruth of the allegations.

100. Howard admits that he and Masck, with their separate counsel participating,

spoke via telephone on or about August 31, 2011. As to any remaining or inconsistent


truth.

101. Howard admits that the image following the allegation is an image of the banner

on the home page of his website, DesmondHoward.com , as it appeared from February 2010 to

January 2013. Howard denies that Masck is entitled to compensation or credit in connection

with the appearance of the photograph on the website or that he otherwise has any liability to

Masck. As to any remaining or inconsistent allegations, Howard is without knowledge or


102. Howard admits that the image, referenced in the allegation, was an image

appearing on the "bio" page of his website, DesmondHoward.com , as it appeared on January

2013, but which has since been removed. Howard denies that Masck is entitled to compensation



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or credit in connection with the appearance of the photograph on the website or that he otherwise

has any liability to Masck for any reason. As to any remaining or inconsistent allegations,

Howard is without knowledge or information sufficient to form a belief as to their truth.



104. Howard admits that in 2012 they continued their correspondence regarding

working together and a possible sale of the copyright in the photograph to Howard. Howard

admits that Masck sent Headley a print of the photograph in August 2012, but denies that he

requested the photograph. Howard admits that he did not purchase the copyright in thephotograph. Howard admits that he and Masck did not "partner" in any business venture for the

reason that Masck consistently stated that he wanted to resolve his legal issues with his alleged

third-party infringers before discussing any future business relationship with Howard. Howard

admits that the photograph Masck sent to Howard in August 2012 briefly appeared on the

website DesmondHoward.com starting in January 2013, but has since been removed. Howard

denies that Masck is entitled to compensation or credit in connection with the appearance of the

photograph on the website or that he otherwise has any liability to Masck. Further answering,

Masck has improperly used Howard's persona in an unauthorized commercial way. As to any

remaining or inconsistent allegations, Howard is without knowledge or information sufficient to

form a belief as to their truth.

105. Howard states that a section on the home page of the website advertises

"Desmond's Store" but denies that there are any immediate plans to launch the store. Howard

denies that the store has any logo. The thumbnail image of a t-shirt appearing on the "Desmond's

Store" section on the home page is an image of a third-party, promotional t-shirt. Howard denies



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that he has any liability to Masck for any reason. Howard denies that he is following any

business plan suggested by Masck for the reason it is untrue. As to any remaining or inconsistent


truth.



118. Howard denies the allegations for the reason that they are untrue.

119. Howard denies the allegations for the reason that they are untrue.

120. Howard is without knowledge or information sufficient to form a belief as to thetruth of the allegations.

121. Howard denies that the photograph appearing on his website increased visibility

of the website. As to any remaining or inconsistent allegations, Howard is without knowledge or




123. Howard denies he has any liability to Masck. As to any remaining or inconsistent


truth.



COUNT I

125. Howard incorporates by reference his answers to the allegations set forth above.



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COUNT II




COUNT II I


130(sic)-139.(sic) Howard is without knowledge or information sufficient to form abelief as to the truth of the allegations.

COUNT IV

140.(sic) Howard incorporates by reference his answers to the allegations set forth

above.

141(sic)-150.(sic) Howard is without knowledge or information sufficient to form a


COUNT V


above.

152(sic)-161.(sic) Howard denies the allegations for the reason they are untrue.

COUNT VI


above.



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COUNT VII


above.



COUNT VII I

185.(sic) Howard incorporates by reference his answers to the allegations set forthabove.



COUNT IX


above.



COUNT X


above.





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COUNT XI


above.



COUNT XII


above.

230.(sic)-236.(sic) Howard is without knowledge or information sufficient to form a


COUNT XII I


above.

238(sic)-246(sic) Howard is without knowledge or information sufficient to form a


COUNT 14


above.


COUNT XV


above.



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COUNT 16


above.



COUNT 17

276.(sic) Howard incorporates by reference his answers to the allegations set forthabove.


COUNT XVI II


above.



COUNT XIX


above.


COUNT XX


above.



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WHEREFORE, Howard respectfully asks this Court to dismiss Plaintiffs Complaint

with prejudice, with costs and attorneys' fees to be awarded to Howard as allowed by law.

Furthermore, Howard asks for entry of a judgment in his favor and against Counter-Defendant

Masck in whatever amount in excess of $75,000.00 he is found liable, plus interest, costs and

attorneys' fees as allowed by law.

AFFIRMATIVE DEFENSES

In the defense against this Complaint, Howard may, but not necessarily will, rely uponthe following affirmative defenses:

1. Failure to state a claim. Masck has failed to state a claim against Howard upon

which relief can be granted. Without limiting the generality of the foregoing, for the reasons

stated in Howard's motion to dismiss, filed contemporaneously herewith, Masck has failed to

state a claim against Howard for violations of the Michigan Consumer Protection Act and

Lanham Act, unjust enrichment, and for statutory damages and attorney's fees under the

Copyright Act.

2. Implied and/or express license. Objective evidence exists to conclude that an

agreement existed regarding the authorized appearance of the photograph on the website,

DesmondHoward.com . Masck's claims against Howard are barred in whole or in part by the

actions and conduct of the parties which conclude that the parties reached an agreement

concerning such authorized use.

3. Fair use. The appearance of the photograph on the website is not an infringement

under the doctrine of fair use.



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13. Reservation of Rights. Howard reserves the right to add to and/or amend these

Affirmative Defenses as discovery and trial preparation proceeds.

WHEREFORE, Howard respectfully asks this Court to dismiss Plaintiffs Complaint

with prejudice, with costs and attorneys' fees to be awarded to Howard as allowed by law.

Furthermore, Howard asks for entry of a judgment in his favor and against Counter-Defendant

Masck in whatever amount in excess of $75,000.00 he is found liable, plus interest, costs and

attorneys' fees as allowed by law.

COUNTERCLAIM OF DEFENDANT/COUNTER-PLAINTIFF DESMOND HOWARD

Defendant/Counter-Plaintiff, Desmond Howard (either, "Desmond Howard" or "Mr.

Howard"), through his attorneys, Varnum LLP, counterclaims against Plaintiff/Counter-

Defendant, Brian Masck ("Defendant"), as follows:

NATURE OF THE ACTI ON

1. Desmond Howard brings this action against Defendant under state and federal law

for Defendant's unauthorized publication and use of Mr. Howard's name, image, and likeness,

including, but not limited to, Defendant's prominent use of Mr. Howard's name in advertising,

marketing, and promoting Defendant's products and services, use of Mr. Howard's image on

commercial products for sale to consumers, and use of Mr. Howard's image and likeness as a

trademark logo on Defendant's products.

PARTIES

2. Desmond Howard is an individual and resident of the State of Florida.

3. Defendant is an individual and, upon information and belief, a resident of

Genesee County, State of Michigan.



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J URISDICTI ON AND VENUE

4. This Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1332; this

Court has subject matter jurisdiction over the claims in this Complaint arising under the Lanham

Act pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1338, and various Federal common law

principles. This Court has supplemental jurisdiction over Mr. Howard's state law claims

pursuant to 28 U.S.C. 1367(a).

5. Venue is proper in this Court pursuant to 28 U.S.C. 1391(a) and (b).

GENERAL ALLEGATIONS

6.

Desmond Howard is a sports legend and nationally-known broadcaster, mostrecognized for his outstanding accomplishments as a collegiate and NFL football player and as

an analyst for ESPN's College GameDay broadcast.

7. Desmond Howard won the Heisman Trophy in 1991 while playing football for the

University of Michigan. After being drafted fourth overall by the Washington Redskins in 1992,

Mr. Howard played professional football in the NFL until 2002. He was voted the Most

Valuable Player of Super Bowl XXXI and is the first and only special teams' player to win the

award. He is one of only four players to win both the Heisman Trophy and Super Bowl MVP.

On July 16, 2011, Mr. Howard was inducted into the College Football Hall of Fame.

8. As a result of his athletic accomplishments and broadcasting celebrity, Mr.

Howard's name, image, and persona have significant value. He is sought after for corporate

endorsements, personal appearances, and speaking engagements by prominent national and

multinational corporations, and has selectively licensed his name, image, and likeness for a

variety of commercial products, including video games, posters, and t-shirts.



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9. Defendant is an individual who owns and operates the commercial website

TheTrophyPose.com , on which Defendant prominently uses Desmond Howard's name as the

name of his website.

10. As appearing in Internet search engine results, the title tag for Defendant's website

reads, "Desmond Howard | Heisman Pose Photo | 1991 by Brian Masck." The banner of the

homepage of the website reads, "Desmond Howard Trophy Pose," and underneath it, "The

Famous 'Heisman Pose' Moment 1991 by Brian Masck."

11. The website also includes a newsfeed of "Desmond Howards Latest Tweets" and

a link to Mr. Howard's own website, DesmondHoward.com .12. Through his website, Defendant sells products featuring Mr. Howard's image

including framed and unframed prints, float-wrap prints, and life-size, cut-out standups. The

website announces, "More products are coming."

13. Defendant has also appropriated Mr. Howard's image and likeness as a trademark,

which Defendant prominently displays on his products. A copy of one of Defendant's prints

featuring the trademark, in the bottom right corner, and an enhancement of that trademark

follow:



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14. The trademark is the silhouette of Mr. Howard's image as he appears in the print.

Defendant has placed the symbol "TM" next to the logo, which is used to indicate an assertion

that the preceding mark is a trademark.

15. Defendant also maintains a Facebook "page" called "Desmond Howard's 'Trophy

Pose' 1991 Photo by Brian Masck," on which he displays Mr. Howard's name, image, and

likeness, including prominent display of Defendant's trademark featuring the silhouette image of

Mr. Howard.

16. Defendant's Facebook page states that it is "dedicated to University of Michigan

Heisman Trophy winner Desmond Howard's famous 'Trophy Pose' moment captured 1991 byBrian Masck," and allows Facebook users to "like" or subscribe to the page posts and updates.

17. Defendant uses his Facebook page to advertise and promote his

TheTrophyPose.com website by encouraging subscribers to the Facebook page to visit

Defendant's website where they can purchase Defendant's products featuring Desmond Howard's

image for sale on the site.

18. Defendant did not ask for or receive Mr. Howard's permission to use his name,

image, and likeness: (a) on Defendant's website and Facebook page, or otherwise for purposes of

selling Defendant's products and services, (b) on Defendant's commercial products for resale to

consumers, or (c) as Defendant's trademark on his products.

19. Accordingly, Defendant is liable to Mr. Howard for, among other claims,

violation of his rights of publicity and privacy under Florida law and for violations under the

Lanham Act for false association and advertising.

20. Desmond Howard seeks compensatory damages, treble damages, punitive

damages, and a preliminary and permanent injunction to stop all further unlawful use and



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exploitation of Mr. Howard's name, image, and likeness in connection with Defendant's

advertising, products and services, and trademark.

COUNT I

(Misappropriation of Name and Likeness -- Fl. St. 540.08)

21. Mr. Howard incorporates by reference the allegations in the preceding paragraphs.

22. Defendant published, printed, displayed or otherwise publicly used Mr. Howard's

name, image and likeness, without his express written or oral consent, for purposes of trade or

for other commercial or advertising purposes.

23.

Among other things, Defendant has publicly:(a) used Mr. Howard's name for the purpose of promoting and advertising

Defendant's products and services, including, without limitation, on Defendant's website

and Facebook page;

(b) used Mr. Howard's image on Defendant's products, including, without

limitation, framed and unframed prints, float-wrap prints, and life-size, cut-out standups;

and

(c) used Mr. Howard's image and likeness as a trademark.

24. The unlawful conduct of Defendant, as alleged herein, has damaged Mr. Howard.

25. Defendant had actual knowledge of the wrongfulness of his conduct and of the

high probability that injury or damage to Mr. Howard would result and, despite that knowledge,

intentionally pursued his course of conduct resulting in injury or damage to Mr. Howard. In the

alternative, and even if he acted without such actual knowledge, the conduct of Defendant was so

reckless or wanting in care that it constituted a conscious disregard for or indifference to the

rights of Mr. Howard.



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26. The unlawful conduct of Defendant, as alleged herein, constitutes a violation of

Fl. Stat. 540.08, entitling Mr. Howard to enjoin such conduct, and to recover damages for any

loss or injury sustained by reason thereof, including an amount which would have been a

reasonable royalty, and punitive and exemplary damages.

COUNT II

(Unfair Competition L anham Act, 15 U.S.C. 1125(a))

27. Mr. Howard incorporates by reference the allegations in the preceding paragraphs.

28. Defendant's use, and continuing use, in interstate commerce of Mr. Howard's

name, image, and likeness in connection with Defendant and his good and services constitutes aviolation of 15 U.S.C. 1125(a), in that it creates a false association between Mr. Howard and

Defendant and his good and services, and a false designation of origin as to the goods and

services advertised, marketed, promoted, distributed, offered for sale, and sold by Defendant.

Defendant's use of Mr. Howard's name, image, and likeness is likely to confuse, mislead, and/or

deceive the consuming public and trade by creating the false impression that Defendant and his

products and services are or were approved, sponsored, endorsed, guaranteed by and/or are in

some way affiliated or associated with Mr. Howard.

29. Defendant's use, and continuing use, in interstate commerce of Mr. Howard's

name, image, and likeness in connection with Defendant, and his good and services, also

constitutes a false and misleading description or representation in violation of 15 U.S.C.

1125(a).

30. As a direct and proximate result of the conduct of Defendant, Mr. Howard is

entitled, pursuant to 15 U.S.C. 1117(a), to recover (1) Defendant's profits from the sale of his



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products and services, and (2) any damages sustained by Mr. Howard as a result of Defendant's

conduct, the amount of which shall be determined at trial.

31. The unlawful conduct of Defendant, as alleged herein, was committed with

knowledge of Mr. Howard's prior rights to, and use of, his name, image, and likeness, and with

the intent to trade on Mr. Howard's name, image, and likeness, entitling Mr. Howard to treble

damages.

32. Mr. Howard also seeks a preliminary and permanent injunction to prohibit

Defendant from any further commercial use of Mr. Howard's name, image, and likeness.

RELIEF REQUESTEDMr. Howard requests that judgment be entered in his favor and against Defendant as

follows:

A. An award in Mr. Howard's favor of compensatory, general, and special damages

in an amount to be determined at trial, together with statutory interest thereon;

B. An award of exemplary and punitive damages in an amount to be determined at

trial;

C. An award of revenues and profits received by Defendant as a result of the

unauthorized use of Mr. Howard's name, image, and likeness;

D. Entry of a preliminary and permanent injunction prohibiting Defendant and those

in active concert or participation with Defendant from violating Mr. Howard's right of publicity

and privacy and from false association; and

E. Such other relief as this Court may deem just and proper.



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Respectfully submitted,

VARNUM LLP Attorneys for Desmond Howard

Dated: April 15, 2013 By: /s/ Richard T. HewlettRichard T. Hewlett (P41271)

Timothy E. Eagle (P38183)Matthew W. Bower (P66957)Business Address and Telephone:39500 High Pointe Blvd., Suite 350Novi, MI 48375(248) 567-7400(248) 567-7440 - [email protected]

[email protected]@varnumlaw.com

J URY DEMAND

Desmond Howard demands a jury trial on all the issues so triable.

Respectfully submitted,

VARNUM LLP

Attorneys for Desmond Howard

Dated: April 15, 2013 By: /s/ Richard T. HewlettRichard T. Hewlett (P41271)

Timothy E. Eagle (P38183)Matthew W. Bower (P66957)Business Address and Telephone:39500 High Pointe Blvd., Suite 350Novi, MI 48375(248) 567-7400(248) 567-7440 - [email protected]@[email protected]



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PROOF OF SERVI CE

The undersigned, being first duly sworn, says that on this date she served a copy of DEFENDANT DESMOND HOWARD'S ANSWER TO COMPLAINT, AFFIRMATIVE

DEFENSES, COUNTERCL AIM, and J URY DEMAND upon the following i ndividuals: Thomas A. BlaskeBLASKE & BLASKE 500 South Main StreetAnn Arbor, MI 48104

J . Michael HugetHONIGMAN MILLER130 South First Street, 4th FloorAnn Arbor, MI 48104-1386

James E. StewartHONIGMAN MILLER 660 Woodward Avenue2290 First National Building

Detroit, MI 48226

Stephen M. RummageDAVIS WRIGHT TREMAINE, LLP 1201 Third Avenue, Suite 2200Seattle, WA 98101

Timothy E. Galligan T IMOTHY E. GALLIGANASSOC . 3069 University Drive, Suite 260Auburn Hills, MI 48326

Jenice C. Mitchell FordCLARK HILL PLC500 Woodward Avenue, Suite 3500Detroit, MI 48226

Roderick M. ThompsonFARELLABRAUN & MARTEL LLP235 Montgomery StreetSan Francisco, CA 94104

by electronically filing the foregoing with the United States District Court ECF system.

Dated: April 15, 2013 /s/ Tricia L. Adgate Tricia L. Adgate

6052048_1.DOCX


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