IP Law Daily Illustrated children’s books about Christmas tree not substantially similar
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Monday, April 30, 2018

Illustrated children’s books about Christmas tree not substantially similar

By Sara Cracau, J.D.

An author of a children’s illustrated book failed to state a valid claim of copyright infringement in her action against a publisher and entertainment agency for their alleged infringement for mirroring the author’s story in another publication which adopted the same plot, ruled the federal district court in Pittsburgh. Substantial similarities between protectable elements of the works were lacking as a matter of law. The basic plot idea of a little tree aspiring to be the Rockefeller Christmas tree in New York was deemed to be far too generic to be protectable, and any other similarities were, at most, a "random scattershot." The court also determined that the author failed to state an unfair competition claim under Section 43(a) of the Lanham Act or state law or state-law claims for tortious interference with prospective advantage and tortious destruction of intellectual property (Nicassio v. Viacom International, Inc., April 27, 2018, Fischer, N.).

The plaintiffs, an author of illustrated children’s books, including Rocky: The Rockefeller Christmas Tree ("Rocky"), brought an action against a book publisher, Penguin Random House LLC, and an entertainment agency, Viacom International, Inc., asserting the following claims: copyright infringement, unfair competition under the Lanham Act and state law, state law tortious interference with prospective advantage and state law tortious destruction of intellectual property. Rocky was the story of a Christmas tree that dreams to become the Rockefeller Center Christmas tree in New York City. The author had copyrighted Rocky, which quickly rose to the highest selling children’s book in Amazon’s holiday category, before it was published. The author submitted the book to Viacom as she was interested in adapting it into an animated film or show and, as such, Viacom gained access to and knowledge of her copyrighted material and content in Rocky. She executed an agreement with a print on demand company for the manufacture and distribution of her paper copies.

Shortly afterwards, Penguin published Albert: The Little Tree With Big Dreams ("Albert"), an illustrated children’s book, which the author alleged mirrored the story of Rocky in that it too told the story of a young Christmas tree that dreamed of standing in a big city. After the publication of Albert, sales of Rocky declined. Viacom created an animated version of Albert, which, allegedly contained substantial material probative of copying Rocky" and subsequently, sales of Rocky sharply declined. Furthermore, Viacom generated additional income from, its animated version of Albert.

Copyright infringement claims. The court determined that the author failed to state a claim for copyright infringement as it concluded that substantial similarities between Rocky and Albert were lacking as a matter of law. The basic plot idea of a little tree aspiring to be the Rockefeller Christmas tree in New York was far too generic to be protectable under copyright law, determined the court. Nor were the characters in the works similar, the court concluded after evaluating the "totality" of their attributes and traits as well as the extent to which the alleged infringers’ characters captured the "total concept and feel" of figures in the author’s work. Furthermore, the court found that the other figures in the works were even more distinct. Although the court recognized that there were some similarities between the works, these were, at most, a "random scattershot."

Unfair competition claims. The court determined that the author’s unfair competition claim failed to state a claim under Section 43(a) of the Lanham Act or state law. The court concluded that the Lanham Act claim was barred by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) because the Lanham Act did not create a cause of action for plagiarism. Furthermore, the author’s state law claims were preempted by Section 301 of the Copyright Act whether New York or Pennsylvania law applied because the claim was not qualitatively different from a copyright infringement claim under the "extra element" test which determines the question of equivalence. Here, the author’s allegations are akin to "reverse passing off," rather than "passing off" because the crux of her case was that the publisher and entertainment agency’s work copied her work without her permission and claimed it as their own and, as such, were preempted by Section 301 of the Copyright Act.

Tortious interference and destruction claims. The court concluded that the complaint failed to state a claim for the asserted state law causes of action for tortious interference with prospective advantage and tortious destruction of intellectual property. The tortious interference with prospective advantage claim was preempted by Section 301 of the Copyright Act as it was solely based on the author’s right to prevent unlawful interference of her right to manufacture, distribute, and publish Rocky. These rights were exclusively protected by the Copyright Act. In addition, the author failed to state a claim for tortious interference with prospective advantage because the complaint did not allege any well-pleaded facts which suggested that the publisher and entertainment agency " acted to harm or interfere with the author’s existing and/or prospective contracts" as required by both Pennsylvania and New York law. The tortious destruction of intellectual claim failed, concluded the court, because this did not constitute a recognized cause of action in New York or Pennsylvania.

Leave to amend. The court denied, sua sponte, leave to amend her complaint because the author did not request leave to amend nor present the court with a proposed amended pleading. Furthermore, all the causes of action in her complaint were deficient as a matter of law and there were no additional facts which she could plead to cure these deficiencies. Therefore, the court would, nonetheless, have denied her request as futile if she had requested leave to amend.

This case is No. 2:17-cv-00805-NBF.

Attorneys: Anthony H. Handal (Handal & Morofsky, LLC) for Jennie Nicassio. Jonathan Zavin (Loeb & Loeb LLP) for Viacom International, Inc. and Penguin Random House LLC.

Companies: Viacom International, Inc.; Penguin Random House LLC

MainStory: TopStory Copyright Trademark PennsylvaniaNews

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