United States District Court, W.D. Pennsylvania
BARRY FISCHER, UNITED STATES DISTRICT JUDGE.
case, Plaintiff Jennie Nicassio alleges that Defendants
Viacom International, Inc. (“Viacom”) and Penguin
Random House LLC (“Penguin”) are liable to her
for copyright infringement, unfair competition, tortious
interference with prospective advantage, and tortious
destruction of intellectual property. (Docket No. 1). Pending
before the Court is Defendants' joint motion to dismiss
the complaint, with prejudice, for failure to state a claim.
(Docket No. 18). After careful consideration of the
parties' briefs and oral arguments, and for the following
the reasons, the Court will GRANT the motion  and dismiss
the complaint, with prejudice.
is an author of illustrated children's books, including
Rocky: The Rockefeller Christmas Tree
(“Rocky”), which is the story of a young
Christmas tree that dreams of becoming the Rockefeller Center
Christmas tree in New York City. (Docket No. 1 at
¶¶ 2, 10). In 2007, Nicassio copyrighted
Rocky when it was still unpublished. (Id.
at ¶ 13). After becoming available for purchase on
Amazon in July 2009, Rocky quickly rose to the
highest selling children's book in the site's holiday
category. (Id. at ¶¶ 14, 17). In November
2009, Nicassio published Rocky with On-Demand
Publishing LLC, d.b.a. CreateSpace Independent Publishing
Platform; and, she switched to Indigo Sea Press in 2015.
(Id. at ¶¶ 14, 15). In all, Nicassio has
released three editions of Rocky, with the most
current version having been released in May 2016.
(Id. at ¶ 16).
Nicassio was interested in adapting Rocky into an
animated film or show, she sent copies of the book to
numerous entertainment agencies and companies for evaluation
between 2011 and 2016, including Liza Royce Agency LLC,
Frederator Networks, Inc., David Higham Associates, and
Defendant Viacom. (Id. at ¶ 18). In this
process, Nicassio claims that Viacom gained access to and
knowledge of her copyrighted material and content in
Rocky. (Id. at ¶¶ 19-21).
August 2016, Nicassio submitted Rocky to the Top of
The Rock gift store to be approved and stocked, and she
separately executed an agreement with Lightning Source, Inc.,
a print on demand company, for the manufacture and
distribution of paper copies. (Id. at 22, 23). A
month later, Penguin published Albert: The Little Tree
With Big Dreams (“Albert”), an
illustrated children's book. (Id. at
¶¶ 3-4, 24-25). Nicassio claims that
Albert mirrors the story of Rocky, as it
too “tells the tale of a young Christmas tree that
wishes to one-day stand in a big city” and otherwise
“contains substantial material copied from”
Rocky. (Id. at ¶¶ 25, 26).
Penguin's publication of Albert in September
2016, sales of Rocky declined. (Id. at
¶ 33). By the end of 2016, Rocky had fallen
from the number one selling holiday children's book on
Amazon to number ten. (Id. at ¶ 33). During
this time period, Nicassio received interest from Hallmark
and “hoped to negotiate the sale of the exclusive
rights to Rocky to Hallmark for the 2017 holiday
season.” (Id. at ¶ 34). Meanwhile, in
November 2016, Defendant Viacom began advertising a film
adaptation of Penguin's Albert. (Id. at
¶ 35). According to the complaint, Viacom's
animation of Albert, like Penguin's book,
“contains substantial material probative of copying of
Rocky.” (Id. at ¶ 36).
first learned of Viacom's animation of Albert on
December 5, 2016 when she saw a television advertisement for
it. (Id. at ¶ 38). She discovered that Penguin
published Albert as a children's book four days
later. (Id.). Viacom's animation of
Albert aired on Nickelodeon each day from December
9, 2016 to January 2, 2017, which the complaint avers not
only generated significant advertisement revenue for Viacom
through its on-air sponsorships but also caused
Albert to surpass Rocky and become one of
the highest selling holiday children's books of the
season. (Id. at ¶¶ 37 39-41). At the same
time, sales of Rocky sharply declined and it failed
to meet projections, notwithstanding that it was advertised
on Amazon as “Book of The Day.” (Id. at
early 2017, Viacom generated additional revenue from its
animation of Albert by making it available on
several other platforms,  and Nicassio further alleges that
Viacom plans to produce three additional Albert
holiday film specials in the future. (Id. at
¶¶ 42-43). Based on Penguin's and Viacom's
alleged copying of Rocky, the complaint claims that
Nicassio has sustained damage and injury to her business,
goodwill, reputation and profits in an amount not presently
known. (Id. at ¶ 44). In addition, Nicassio
claims that Defendants' conduct has resulted in actual
confusion among consumers, as evidenced by customer reviews
on Amazon and experienced by her at book signings for
Rocky. (Id. at ¶ 45). The complaint
also points out that a Google search for Nicassio's
Rocky purportedly yields results for Viacom's
animation of Albert. (Id. at ¶ 36).
initiated this action against Viacom and Penguin on June 17,
2017, asserting the following counts: (I) copyright
infringement - book publications (against Penguin only); (II)
copyright infringement - film production (against Viacom
only); (III) unfair competition under the Lanham Act and
state law; (IV) state law tortious interference with
prospective advantage; and (V) state law tortious destruction
of intellectual property. (Docket No. 1). Penguin and Viacom
responded to the complaint by filing a joint motion to
dismiss and brief in support on November 6, 2017. (Docket
Nos. 18, 19). After being granted multiple extensions,
Nicassio filed her brief in opposition on January 9, 2018,
(Docket No. 32), and Defendants filed their reply on February
2, 2018. (Docket No. 34). The Court convened oral argument on
March 12, 2018. (Docket No. 41). At the close of argument,
the parties declined to submit supplemental briefing, but the
Court permitted Nicassio to file the color version of the
PowerPoint slides utilized during argument, (id.),
which she did on March 14, 2018. (Docket No.
Accordingly, the motion is fully briefed and is ripe for
may dismiss a claim for “failure to state a claim upon
which relief can be granted.” Fed.R.Civ.P. 12(b)(6).
When considering a Rule 12(b)(6) motion, the court must
“‘accept all factual allegations as true,
construe the complaint in the light most favorable to the
plaintiff, and determine whether, under any reasonable
reading of the complaint, the plaintiff may be entitled to
relief.'” Eid v. Thompson, 740 F.3d 118,
122 (3d Cir. 2014) (quoting Phillips v. Cty. of
Allegheny, 515 F.3d 224, 233 (3d Cir. 2008)).
plaintiff must plead “enough factual matter” to
“‘nudge [his or her] claims across the line from
conceivable to plausible.'” Phillips, 515
F.3d at 234-35 (quoting Bell Atl. Co. v. Twombly,
550 U.S. 544, 556, 570 (2007) (alteration in original)). All
that is required is that the plaintiff's complaint
“contain sufficient factual matter, accepted as true,
to state a claim to relief that is plausible on its face,
” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(internal citation and quotation omitted), in order to
“‘give the defendant fair notice of what the . .
. claim is and the grounds upon which it rests, '”
Twombly, 550 U.S. at 555 (quoting Conley v.
Gibson, 355 U.S. 41, 47 (1957) (alteration in
original)). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Iqbal, 556 U.S.
at 678. However, “[t]hreadbare recitals of the elements
of a cause of action, supported by mere conclusory
statements, do not suffice.” Id. at 678.
reviewing the sufficiency of a complaint, the trial court
must undertake three steps. Connelly v. Lane Const.
Corp., 809 F.3d 780, 787 (3d Cir. 2016). “First,
it must ‘tak[e] note of the elements [the] plaintiff
must plead to state a claim.'” Id.
(quoting Iqbal, 556 U.S. at 675) (alterations in
original). “Second, it should identify allegations
that, ‘because they are no more than conclusions, are
not entitled to the assumption of truth.'”
Id. (quoting Iqbal, 556 U.S. at 679).
“[T]he clearest indication that an allegation is
conclusory and unworthy of weight . . . is that it embodies a
legal point.” Id. at 790. “Finally,
‘[w]hen there are well-pleaded factual allegations,
[the] court should assume their veracity and then determine
whether they plausibly give rise to an entitlement to
relief.'” Id. at 787 (quoting
Iqbal, 556 U.S. at 679) (alterations in original).
addition, the Court may consider an “undisputedly
authentic document that a defendant attaches as an exhibit to
a motion to dismiss if the plaintiff's claims are based
on the document.” Pension Ben. Ctr. Prop., Inc.
Sec. Litig., 184 F.3d 280, 287 (3d Cir. 1993). In the
context of copyright infringement claims, the Court may
consider the works submitted by the parties, so long as there
is no challenge as to authenticity. Winstead v.
Jackson, 509 Fed.Appx. 139, 143 (3d Cir. 2013).
Copyright Infringement Claims - Counts I and II
Court begins its analysis by addressing Nicassio's
copyright infringement claims set forth in Counts I and II of
her complaint. (Docket No. 1). To state a claim for copyright
infringement, the plaintiff must allege ownership of a valid
copyright, and unauthorized copying of protectable elements
of the plaintiff's work. See Dun &
Bradstreet Software Servs. v. Grace Consulting, Inc.,
307 F.3d 197, 206 (3d Cir.2002). At this stage of the case,
Defendants do not challenge whether Nicassio sufficiently
pled ownership of a valid copyright or access. (Docket No. 19
at 11 n. 6). Instead, Defendants only dispute that the
complaint adequately pleads that they copied protectable
elements of Rocky. (Id.). For purposes of
the pending motion, therefore, the dispositive issue is
whether there are “substantial similarities”
between Rocky and Albert. See Dam
Things from Denmark v. Russ Berrie & Co., Inc., 290
F.3d 548, 561 (3d Cir. 2002).
substantial similarity inquiry is made from the perspective
of a “lay-observer, ” Whelan Assocs., Inc. v.
Jaslow Dental Lab, Inc., 797 F.2d 1222, 1231-32 (3d Cir.
1986), and calls on the Court to ask “whether the later
work is similar because it appropriates the unique
expressions of the original author, or merely because it
contains elements that would be expected when two works
explore the same idea or explore the same theme.”
Kay Berry, Inc. v. Taylore Gifts, Inc., 421 F.3d
199, 208 (3d Cir. 2005). This is because “[i]t is a
fundamental premise of copyright law that an author can
protect only the expression of an idea, but not the idea
itself.” Id. (citations omitted). As a result,
a copyright infringement claim will generally fail if the
work contains only a minimal amount of original expression,
given that the author claiming copyright infringement is
tasked with pointing to aspects of the work embodying her
creative contribution. Id. In the same vein,
“scenes a faire, sequences of events that
‘necessarily result from the choice of a setting or
situation, ” do not enjoy copyright protection.
Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.
1996). Although Nicassio repeatedly refers to the scenes
a faire doctrine as being some “exception”
that applies only if the similarities are literally
indispensable to the theme, (see Docket No.
32 at 1, 6, 15, 16, 18), it is “merely a restatement of
the hypothesis … that the purpose or function of a
work or literary device is part of that device's
‘idea' (unprotectable portion).”
Whelan, 797 F.2d 1222, 1236 (3rd Cir. 1986).
Accordingly, the scenes a faire doctrine, rather
than being an exception, simply provides “that anything
necessary to effecting that function is also, necessarily,
part of the idea, too.” Id. In other words,
scenes a faire applies not only to situations and
incidents that necessarily flow from the basic plot premise,
but also ones that naturally flow from it.
Cavalier v. Random House, Inc., 297 F.3d 815, 823
as Nicassio notes, “[t]he particular sequence in which
an author strings a significant number of unprotectable
elements can itself be a protectable element, ” even
where the same proffered similarities are not protectable on
their own. Metcalf v. Bochco, 294 F.3d 1069, 1074
(9th Cir. 2002). At the same time, “random similarities
scattered throughout the works” are not protectable.
Williams, 84 F.3d at 590 (quoting Lichtfield v.
Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984)).
“Such a scattershot approach cannot support a finding
of substantial similarity because it fails to address the
underlying issue: whether a lay observer would consider the
works as a whole substantially similar to one another.”
Id. Consequently, when the works only share generic
plot and theme ideas, and not any other protectable
expressions, they are not substantially similar as a matter
of law. See Tanikumi, 616 Fed.Appx. at 520-21
(rejecting the plaintiff's argument that her two
autobiographical works were substantially similar to
Disney's Frozen based on “many tens,
perhaps more than 100, points of identical characters,
events, mishaps, emotions and words and phrases that are
found in both [her] works and Defendants'
Frozen, ” including “a mountain setting,
an intense sisterly bond, an untrue lover, and a resolution
in which the female protagonist comes into her own without
the help of a man, ” because “the similarities
between the works … concern prototypical settings,
plots, and characters too indistinct to merit copyright
protection”) (citing Cavalier, 297 F.3d at 828
(explaining that children's television series was not
substantially similar to the authors' copyright works
despite similarities in themes, including teaching children
to overcome their fears and having magical adventures because
such themes are standard topics in children's
literature); Williams, 84 F.3d at 588-89 (2d
Cir.1996) (holding that motion picture Jurassic Park was not
substantially similar to children's book Dinosaur World
because nearly all similarities arise from non-copyrightable
elements such as a dinosaur zoo)).
objects that it is premature for the Court to conduct the
substantial similarity inquiry because it involves a question
of fact. (Docket No. 32 at 7). Even so, the Court may address
this issue at the pleading stage because the works themselves
supersede and control any contrary descriptions of them.
Peter F. Gaito Architecture, LLC v. Simone Developmental
Corp, 602 F.3d 57, 63 (2d Cir. 2010). Indeed, “no
discovery or fact-finding is typically necessary, because
what is required is only a visual comparison of the
works.” Tanikumi, 616 Fed.Appx. at 518
(quoting Peter F. Gaito, 602 F.3d at 63-64 (2d Cir
2010) (internal marks omitted)). To this end, the Court
compares the works' “total concept and overall feel
… as instructed by good eyes and common sense”
for the purpose of ultimately determining “whether the
alleged infringer has misappropriated the original way in
which the author has selected, coordinated, and arranged the
elements of his or her work.” Peter F. Gaito,
602 F.3d at 66 (internal citation and marks omitted); see
also Tanksley v. Daniels, 259
F.Supp.3d 271, 281 (E.D. Pa. 2017) (“In analyzing the
two works for substantial similarity, the court compares
aspects such as plot, characters, theme, mood, setting, and
dialogue.”). As there is no challenge as to the
authenticity of the works submitted by the parties, the Court
proceeds to summarize them. See Winstead,
509 Fed.Appx. 139 at 143.
is the story of a Norway Spruce who “longed to be the
Rockefeller Christmas Tree, ” notwithstanding that
“his branches were bare and bent the wrong way”
and “his needles were hardly ever green.” Other
animals in the forest, including AJ the squirrel and Mrs.
Pickles the skunk, mocked Rocky for this dream, which made
tears “r[u]n down his twisted branches.” Later
that night when Rocky was sleeping, the tallest tree in the
forest, Bruce Spruce, who, like Rocky, was a Norway Spruce,
appears with AJ the squirrel to confront Rocky. Bruce Spruce
advises Rocky to withdraw from the annual Rockefeller Center
Christmas Tree contest because, according to Bruce, he does
not have chance to win.
“wood fairy” named Mary Louise arrives, telling
Bruce to leave Rocky alone. Bruce and AJ depart, although
they continue to mock Rocky as they leave. Mary Louise
proceeds to offer Rocky words and encouragement and even
tries to make him laugh. Rocky asks her if she is enchanted
and could use her magic to make him “handsome and
strong like Bruce Spruce and the mighty white pine.”
Mary Louise responds: “There is no such thing as magic.
You just have to believe.”
words motivate Rocky to drink more water and be more
positive. He starts telling himself every day that he is
“tall and fluffy and green.” In just a short
time, Rocky grows twice in size, develops “lush, dark
green branches, ” and is beaming with “new found
confidence.” The other animals in the forest notice the
transformation, but are suspicious that Mary Louise used her
magic to put a spell on Rocky, so they report their theory to
Bruce. Once Bruce observes Rocky practicing standing tall for
the contest, he too is convinced that Mary Louise used magic
to make Rocky grow.
that he will lose to Rocky, Bruce conspires with AJ “to
catch the fairy and make her change Rocky back.” Bruce
and AJ capture Mary Louise by using a net of twigs. Bruce
screams at her: “You used magic on Rocky! Change him
back or when I come back I'm tearing down your
house!” Bruce then leaves to enter the competition.
Meanwhile, AJ holds Mary Louise captive behind a snow mound.
Mary Louise denies to AJ that she used magic to make Rocky
grow. Rather, she explains that she merely “told Rocky
to believe in himself and anything would be possible.”
Satisfied with her explanation, AJ frees Mary Louise,
“just in time to watch all the trees being
judges pass overhead in red helicopters to decide which tree
will be chosen. After looking at all of the contestants, they
pick Rocky, proclaiming, “[w]e found the perfect
tree!” Rocky is decorated with ornaments and twinkling
lights and displayed at Rockefeller Center. Thousands gather
to admire him, and Mary ...