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Nicassio v. Viacom International, Inc.

United States District Court, W.D. Pennsylvania

April 27, 2018





         In this 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 [18] and dismiss the complaint, with prejudice.


         Nicassio 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 In 2007, Nicassio copyrighted Rocky when it was still unpublished.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).

         Because 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).

         In 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).

         Following 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.”[1] (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).

         Nicassio 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 ¶ 41).

         In early 2017, Viacom generated additional revenue from its animation of Albert by making it available on several other platforms, [2] 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).


         Nicassio 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. 42).[3] Accordingly, the motion is fully briefed and is ripe for disposition.


         A court 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)).

         The 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.

         When 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).

         In 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.[4] Winstead v. Jackson, 509 Fed.Appx. 139, 143 (3d Cir. 2013).


         1. Copyright Infringement Claims - Counts I and II

         The 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).

         The 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 (9th Cir.2002).

         Still, 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)).

         Nicassio 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.

         A. Nicassio's Rocky[5]

         Rocky 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.

         Then a “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.”

         These 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.

         Worried 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 judged.”

         The 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 ...

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