Nicassio v. Viacom Int'l, Inc., Civil Action No. 17–805

• Decision Date: 27 April 2018
• Docket Number: Civil Action No. 17–805
• Citation: 309 F.Supp.3d 381
• Parties: Jennie NICASSIO, Plaintiff, v. VIACOM INTERNATIONAL, INC., and Penguin Random House LLC, Defendants.
• Court: U.S. District Court — Western District of Pennsylvania

309 F.Supp.3d 381

Jennie NICASSIO, Plaintiff,

v.VIACOM INTERNATIONAL, INC., and Penguin Random House LLC, Defendants.

Civil Action No. 17–805

United States District Court, W.D. Pennsylvania.

Signed April 27, 2018

Anthony H. Handal, Pro Hac Vice, Handal & Morofsky, Fairfield, CT, Gwendolyn R. Acker Wood, Acker Wood Intellectual Property Law, LLC, Pittsburgh, PA, for Plaintiff.

Jonathan Zavin, Pro Hac Vice, Wook Hwang, Pro Hac Vice, Loeb & Loeb LLP, New York, NY, Jayme L. Butcher, Blank Rome LLP, Pittsburgh, PA, for Defendants.

MEMORANDUM OPINION

Nora Barry Fischer, United States District Judge

I. INTRODUCTION

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.

II. FACTUAL ALLEGATIONS

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 In 2007, Nicassio copyrighted Rocky when it was still unpublished.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

II. PROCEDURAL HISTORY

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.

III. LEGAL STANDARD

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, 127 S.Ct. 1955, 167 L.Ed.2d 929 (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, 129 S.Ct. 1937, 173 L.Ed.2d 868 (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, 127 S.Ct. 1955 (quoting Conley v. Gibson , 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (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, 129 S.Ct. 1937. However, "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. at 678, 129 S.Ct. 1937.

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, 129 S.Ct. 1937 ) (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, 129 S.Ct. 1937 ). "[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, 129 S.Ct. 1937 ) (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).

IV. DISCUSSION

1. Copyright Infringement...