Skip to content

IP/Entertainment Case Law Updates

Nicassio v. Viacom

Third Circuit affirms dismissal of copyright infringement claim brought by children’s book author against Viacom and Penguin Random House, holding parties’ works about little trees achieving their dreams of becoming famous Christmas trees not substantially similar as matter of law.

Jennie Nicassio is the author of an illustrated children’s book titled Rocky: The Rockefeller Christmas Tree, about a small Christmas tree that dreams of becoming the Rockefeller Center Christmas tree in New York City. Nicassio filed this action against Viacom International and Penguin Random House over the Nickelodeon children’s animated film and the Penguin Random House subsequent book adaptation Albert: The Little Tree With Big Dreams, about a small fir tree that becomes the star-bearer atop a large display tree in a city square. Nicassio asserted claims under the Copyright Act, Lanham Act and state law based on allegations that defendants copied her work. On defendants’ Rule 12(b)(6) motion for failure to state a claim, the district court dismissed all of Nicassio’s claims with prejudice, ruling with respect to the copyright claim that the protectable elements of the parties’ works were not substantially similar as a matter of law. (Read our summary of the district court’s decision here.)  

Nicassio appealed the dismissal of the copyright claim only. On appeal, Nicassio contended that the district court failed to apply the proper standards governing a Rule 12(b)(6) motion to dismiss. Nicassio further argued that the district court erred in finding no substantial similarity between the works by applying too broad a definition of “generic” to determine that the common plot premises were not protectable, construing the scenes a faire doctrine too broadly to determine that other elements of her work were unprotectable, improperly focusing on the differences between the parties’ works, and ignoring the sequence of parallel plot elements in the parties’ stories.

Affirming the dismissal, the Third Circuit held that the district court properly resolved the case at the pleading stage and properly determined that Rocky and Albert are not substantially similar as a matter of law. On the question of whether the issue of “substantial similarity” was properly resolved on a Rule 12(b)(6) motion to dismiss, the appellate court reiterated that consideration of substantial similarity at the pleading stage is appropriate. Though it “is undisputed that the ‘substantial similarity’ requirement implicates a factual inquiry,” the court explained, lack of substantial similarity is properly resolved on a Rule 12(b)(6) motion because “no discovery or fact-finding is typically necessary” and “all that is needed is a visual comparison of the respective works.”

The appellate court also found no error in the district court’s “understanding of unprotected plot concepts or ideas” because the district court properly articulated that copyright law does not protect ideas, “whether they are described as generic, general, or basic in nature.” The district court also properly held that the scenes a faire doctrine “applies not only to situations and incidents that necessarily flow from the basic plot premise, but also ones that naturally flow from it,” and thus “excludes from copyright protection plot elements that flow predictably from a general idea.”

Applying these standards, the Third Circuit affirmed the district court’s determination that Rocky and Albert are not substantially similar as a matter of law, because “an ordinary observer” would not perceive that defendants had copied protected elements of Nicassio’s work upon consideration of “the storylines, similarities, and significant differences between Rocky and Albert.” While emphasizing that “a defendant cannot immunize itself against liability for infringement by adding new elements on top of those copied,” the court explained that the differences between the works in themes, plot and characters showed that Albert did not infringe the overall “concept and feel” of Rocky.  

Summary prepared by Wook Hwang and Sara Slavin.