309 F. Supp. 3d 381
W.D. Pa.2018Background
- Plaintiff Jennie Nicassio authored and copyrighted Rocky, a children’s book about a small tree that dreams of being the Rockefeller Center Christmas tree; multiple editions were published (most recent 2016).
- Between 2011–2016 Nicassio submitted Rocky to entertainment companies (including Viacom) seeking an adaptation; she alleges Defendants had access to Rocky.
- Penguin published Albert (Sept. 2016), a children’s book with a small tree protagonist who becomes a famous city Christmas tree; Viacom produced and aired an animated adaptation.
- Nicassio alleges Defendants copied protectable elements of Rocky, causing lost sales, consumer confusion, and damaged prospective deals (e.g., with Hallmark).
- She sued Penguin and Viacom for copyright infringement (book and film), Lanham Act and state-law unfair competition, tortious interference with prospective advantage, and tortious destruction of intellectual property. Defendants moved to dismiss for failure to state a claim; the court granted the motion with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright infringement — substantial similarity between Rocky and Albert | Nicassio: works share numerous similar elements (protagonist tree with dreams of being NYC’s famous tree; bullies; encourager characters; "most famous Christmas tree in the world" phrase; similar covers and scenes) showing copying of protectable expression | Defendants: similarities are generic, scènes à faire or stock elements of the genre; protectable expression is not substantially similar | Court: Dismissed — as a matter of law the works are not substantially similar; similarities are generic, stock, or a "scattershot" of unprotectable elements (claim fails) |
| Lanham Act (15 U.S.C. §1125(a)) unfair competition | Nicassio: Defendants’ use of Albert is likely to cause consumer confusion and constitutes unfair competition | Defendants: Dastar bars Lanham Act claims that seek to vindicate authorship/origin of ideas (no cause of action for plagiarism) | Court: Dismissed — Lanham Act claim fails under Dastar; plaintiff cannot use §43(a) to vindicate authorship of underlying work |
| State-law unfair competition / passing off (preemption) | Nicassio: alleges confusion and passing off; contends Lanham/Dastar inapplicable because her work is copyrighted | Defendants: state claims are equivalent to copyright claims and are preempted by §301 of the Copyright Act | Court: Dismissed — state unfair competition claim is preempted (reverse-passing-off allegations are equivalent to federal copyright claims) |
| Tortious interference with prospective advantage; tortious destruction of IP; leave to amend | Nicassio: Defendants intentionally interfered with prospective contracts and damaged Rocky’s market; seeks damages | Defendants: These claims are preempted by Copyright Act and lack pleaded facts showing purposeful interference; "tortious destruction of IP" not recognized | Court: Dismissed — claims preempted and inadequately pleaded; leave to amend denied as plaintiff did not request it and amendment would be futile |
Key Cases Cited
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (plausibility standard for federal pleadings)
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standards; conclusory allegations insufficient)
- Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright protects expression, not ideas)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Lanham Act cannot be used to assert authorship of underlying works)
- Dam Things from Denmark v. Russ Berrie & Co., Inc., 290 F.3d 548 (substantial similarity test explained)
- Whelan Associates, Inc. v. Jaslow Dental Lab, Inc., 797 F.2d 1222 (total concept and feel / scènes à faire discussion)
- Kay-Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (idea-expression dichotomy and scènes à faire)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (courts may compare works on a Rule 12(b)(6) motion; visual comparison; total concept and feel)
- Tanikumi v. Walt Disney Co., [citation="616 F. App'x 515"] (generic plot/theme insufficient for copyright protection)
- Winstead v. Jackson, [citation="509 F. App'x 139"] (authenticity and consideration of submitted works on motion to dismiss)