`
`No. 17-1025
`
`================================================================
`
`In The
`Supreme Court of the United States
`--------------------------------- ---------------------------------
`
`FROST-TSUJI ARCHITECTS,
`
`Petitioner,
`
`v.
`
`HIGHWAY INN, INC., et al.,
`
`Respondents.
`
`--------------------------------- ---------------------------------
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Ninth Circuit
`
`--------------------------------- ---------------------------------
`
`REPLY BRIEF FOR PETITIONER
`
`--------------------------------- ---------------------------------
`
`RANDALL K. SCHMITT
`Counsel of Record
`MCCORRISTON MILLER MUKAI MACKINNON LLP
`Five Waterfront Plaza, 4th Floor
`500 Ala Moana Boulevard
`Honolulu, Hawai‘i 96813
`(808) 529-7300
`schmitt@m4law.com
`Counsel for Petitioner
`
`================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`Page
`REPLY BRIEF FOR PETITIONER .....................
`1
`ARGUMENT ........................................................
`1
`
`I. THE LOWER COURTS FAILED TO APPLY
`THE APPROPRIATE STANDARD FOR
`REVIEWING CROSS MOTIONS FOR
`SUMMARY JUDGMENT ..........................
` II. THERE IS NO EVIDENCE OF MISCONDUCT
`BY FROST-TSUJI ......................................
`CONCLUSION .....................................................
`
`
`3
`8
`
`1
`
`TABLE OF AUTHORITIES
`CASES
`Hevia v. Portrio Corp., 602 F.3d 34 (1st Cir. 2010) .......... 2
`Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) ............ 2
`Kirtsaeng v. Wiley & Sons, 579 U.S. ___, 136 S.Ct.
`1979, 2016 WL 3317564 ........................................ 4, 7
`Nelson-Salabes, Inc. v. Morningside Development,
`LLC, 284 F.3d 505 (4th Cir. 2002) ............................ 2
`Volt Information Sciences Inc. v. Board of Trustees
`of Leland Stanford Junior Univ., 489 U.S. 468,
`109 S.Ct. 1248, 103 L.Ed. 488 (1969) ....................... 1
`
`
`
`1
`
`REPLY BRIEF FOR PETITIONER
`Respondents Highway Inn, Inc. (“HII”) and J.
`
`Kadowaki, Inc. (“JKI”) raised two new issues in their
`joint Brief in Opposition to Frost-Tsuji Architects’
`(“Frost-Tsuji”) Petition for Writ of Certiorari (“Petition”)
`filed on February 23, 2018 (“HII/JKI Opposition”).
`Neither issue is pertinent to whether the Petition
`itself should or should not be granted. Instead, both
`highlight key problems with the decisions made by
`the District Court and the Ninth Circuit Court of
`Appeals, along with the disparity between the various
`Federal Circuits. Specifically, the HII/JKI Opposition
`shows that the core principle in reviewing a motion
`for summary judgment was not followed and that
`the Ninth Circuit is not following this Court’s
`principles for reviewing and awarding fees in copyright
`infringement cases.
`
`--------------------------------- ---------------------------------
`
`ARGUMENT
`I. THE LOWER COURTS FAILED TO APPLY
`THE APPROPRIATE STANDARD FOR
`REVIEWING CROSS MOTIONS FOR
`SUMMARY JUDGMENT
`The HII/JKI Opposition asserts as pertinent to the
`
`decision to grant Frost-Tsuji’s Petition the principle
`that state law controls in the interpretation of contract
`law. That principle is well established but is irrelevant
`here. See, e.g., Volt Information Sciences Inc. v. Board of
`Trustees of Leland Stanford Junior Univ., 489 U.S. 468,
`
`
`
`2
`
`474, 109 S.Ct. 1248, 103 L.Ed. 488 (1969). The pertinent
`principle which was not followed by the District
`Court is that on a motion for summary judgment all
`inferences must be given to the non-moving party.
`As the District Court noted in its own initial order
`regarding summary judgment standards:
`
`All evidence and inferences must be construed
`in the light most favorable to the nonmoving
`party. T.W. Elec. Serv., Inc., 809 F.2d at 631.
`Inferences may be drawn from underlying
`facts not in dispute, as well as from disputed
`facts that the judge is required to resolve in
`favor of the nonmoving party. Id. When “direct
`evidence” produced by the moving party
`conflicts with “direct evidence” produced by
`the party opposing summary judgment, “the
`judge must assume the truth of the evidence
`set forth by the nonmoving party with respect
`to that fact.” Id.
`
`See Pet. App. 21-22. These standards were not applied.
`See also Hevia v. Portrio Corp., 602 F.3d 34, 40 (1st
`Cir. 2010) for the appropriate review standard for
`simultaneous cross motions for summary judgment.
`
`Further, the HII/JKI Opposition fails to account
`
`for the decisions in Nelson-Salabes, Inc. v. Morningside
`Development, LLC, 284 F.3d 505 (4th Cir. 2002) and
`Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) on this
`precise point. As in Johnson and Morningside, it is
`irrelevant here that the AIA contract was not executed.
`The unexecuted contract is compelling evidence of
`Frost-Tsuji’s intent that its plans were not to be used
`
`
`
`3
`
`without its future involvement or its express consent.
`This shows that Frost-Tsuji never intended to grant
`any implied license as the draft “greenmarked”
`contract language at section 7.4 stated that “[e]xcept
`for the license granted in this Article 7, no other
`license or right shall be deemed granted or implied.”
`This key provision was not even cited by the District
`Court. This failure by the District Court was not in
`accordance with the legal standards for reviewing a
`motion for summary judgment. Frost-Tsuji never
`indicated that HII’s use of its design, layout or
`any form of modification to the attribution and
`Plans without Frost-Tsuji’s continued involvement to
`completion or consent was permissible. Neither party
`nor Frost-Tsuji made any changes to the specific
`clause that no implied license would be granted. The
`application of state law is irrelevant to this analysis
`as the application of the summary judgment review
`principles dictated that Frost-Tsuji be granted this
`inference. Further, in copyright cases, where the Plaintiff
`proves valid registration, access and substantial
`similarity, which FTA did, and was fully acknowledged
`by the District Court, the burden of proof for further
`use, shifts to the Defendants to prove their claims.
`
`
`II.
`
`THERE IS NO EVIDENCE OF MISCONDUCT
`BY FROST-TSUJI
`in
`The
`inference that Frost-Tsuji engaged
`
`litigation misconduct is not only unsupported – a “red
`herring” – but it is essentially an admission that the
`lower courts failed to abide by this Court’s directions
`
`
`
`4
`
`in Kirtsaeng v. Wiley & Sons, 579 U.S. ___, 136 S.Ct.
`1979, 2016 WL 3317564.
`
`HII and JKI fail to note to this Court that during
`
`the October 2014 – January 2015 time period, a
`February 2015 jury trial was looming with all of
`its pre-trial deadlines and disclosures. Frost-Tsuji’s
`discovery efforts were focused on the remaining
`claims in the case after its copyright claims had
`been dismissed by way of summary judgment. These
`included: (1) Frost-Tsuji’s breach of contract claim
`against HII; and (2) the two counterclaims asserted
`against Frost-Tsuji by both HII and Bargreen Ellison of
`Hawaii, Inc. (“Bargreen”) (collectively “Counterclaims”).
`HII’s Counterclaim alleged that Frost-Tsuji had
`breached its contract with HII, tortiously interfered
`with HII’s contractual relations, and that Frost-Tsuji
`had filed an improper and erroneous copyright
`application related to the design and layout of the
`Highway Inn Restaurant (“Restaurant”). Bargreen’s
`Counterclaim asserted and misrepresented that
`Frost-Tsuji was infringing on Bargreen’s purported
`copyright of “its” design of the Restaurant.
`
`HII and JKI also failed to acknowledge the fact
`
`that throughout this pre-trial period, they and the
`other Defendants were maintaining that they were
`not using Frost-Tsuji’s design or other copyrighted
`architectural works but were using a “fresh new
`design.” They maintained this false position up until
`the briefing on the appeal to the Ninth Circuit when
`they finally changed their course to claim that they
`had in fact used FTA’s work.
`
`
`
`5
`
`It was during this pre-trial discovery period
`
`that Frost-Tsuji proved several key elements of its
`defense on the Counterclaims. First, Bargreen had
`previously admitted (in response to written request
`for admissions) that it had removed Frost-Tsuji’s
`Title Block and copyright management information
`(“CMI”) from Frost-Tsuji’s CAD materials (a fact which
`the District Court repeatedly failed to acknowledge).
`During this pre-trial period, Skip Elkins, Bargreen’s
`Hawaii principal, admitted under oath during his
`deposition that he had not only removed Frost-Tsuji’s
`Title Block and CMI but then copied, distributed and
`used those same altered works in the development
`and construction of the Restaurant. Elkins further
`admitted that he did not design the kitchen or the
`space, and that it was the work of FTA. As the
`District Court had already acknowledged Frost-Tsuji’s
`ownership of a valid copyright of the design and layout
`of the Restaurant, this was not only a clear admission
`of copyright infringement of Frost-Tsuji’s “bundle
`of rights” under the Architectural Works Copyright
`Protection Act (“AWCPA”) but also constituted violations
`of the Digital Millennium Copyright Act (“DMCA”) for
`removal of FTA’s titleblock, including CMI copyright
`symbols, and denying all attribution, prior to the first
`publication of construction of the design.
`
`Second, Bryce Uyehara, the architect who
`
`replaced Frost-Tsuji on the project and a principal of
`Defendant Bryce E. Uyehara, AIA, Inc. (“Uyehara”),
`admitted under oath during his deposition that:
`(a) he did not prepare the design and layout of the
`
`
`
`6
`
`Restaurant but rather had received the altered CAD
`drawings, then placed his own architectural stamp
`on the plans; and (b) he had received Frost-Tsuji’s
`“cease and desist” letter in which all recipients
`(involving all the Defendants) were notified that they
`did not have permission to use Frost-Tsuji’s work in
`any form or manner. Despite this unequivocal notice,
`he nonetheless, copied and distributed those altered
`plans to the other Defendants, governmental entities
`and HII’s own landlord, Kamehameha Schools Bishop
`Estate (“KSBE”) all the while knowing that Frost-
`Tsuji’s Title Block and CMI had been removed and that
`he did not have permission to use these materials. The
`fact that his contract for the project contained an
`indemnification for this improper usage is further
`proof that both he and HII knew that they were using
`copyright protected materials without a license to do
`so. Again, these instances all violated Frost-Tsuji’s
`exclusive rights under the AWCPA. The Ninth Circuit
`Courts are disregarding and not enforcing these
`congressional protections by imposing “non-exclusive
`licenses” over architectural works. This practice is not
`countenanced in the First, Third, Fourth, Sixth and
`Eleventh Circuits.
`
`The most damning evidence of the Defendants’
`
`own litigation misconduct uncovered during this
`pre-trial period, was the third-party KSBE revelatory
`“April Emails.” These clearly showed that HII’s and
`JKI’s principals knew that they did not have a license
`to use Frost-Tsuji’s architectural works and had
`engaged in a cover up during much of the litigation
`
`
`
`7
`
`by failing to produce key facts and documents.
`Following Frost-Tsuji’s termination and for over a year
`earlier, in 2013 the colluding Defendants actively and
`consistently denied using Frost-Tsuji’s work throughout
`the lease negotiations, public hearings, building permit
`application and construction phases of the project. In
`fact, they were constructing the Restaurant for five
`months without a building permit. They continued these
`denials, obfuscations and knowing misrepresentations
`up until their briefing in the Ninth Circuit appeal. The
`District Court refused to acknowledge this misconduct
`when called on to do so by Frost-Tsuji in its January
`2015 reconsideration motion. See Pet. App. 82-93.
`
`This conduct was deceitful, plaguing and improper.
`
`Pertinent for the granting of Frost-Tsuji’s Petition is
`the fact that no consideration was made of this
`misconduct or the many other instances of litigation
`misconduct by the Defendants in the decisions made
`by the District Court or the Ninth Circuit Panel. This
`failure to consider this key factor was not in accord
`with the principles detailed in the Kirtsaeng decision.
`Acceptance of Frost-Tsuji’s Petition and ultimately a
`remand would rectify this situation and send a clear
`message to all the circuits concerning the award of fees
`and copyright infringement cases.
`
`
`
`--------------------------------- ---------------------------------
`
`
`
`
`
`8
`
`CONCLUSION
`For the foregoing reasons, we respectfully request
`
`that the Supreme Court should grant the Petition for
`a Writ of Certiorari.
`
`Respectfully submitted,
`RANDALL K. SCHMITT
`Counsel of Record
`MCCORRISTON MILLER MUKAI
` MACKINNON LLP
`Five Waterfront Plaza, 4th Floor
`500 Ala Moana Boulevard
`Honolulu, Hawai‘i 96813
`(808) 529-7300
`schmitt@m4law.com
`
`Date: March 7, 2018
`
`