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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`DANIEL T. CALDEN,
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`Plaintiff,
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`v.
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`ARNOLD WORLDWIDE LLC, et al.,
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`Defendants.
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`Civil Action No.
`12-10874-FDS
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`MEMORANDUM AND ORDER ON MOTION TO DISMISS
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`SAYLOR, J.
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`This is a case alleging copyright infringement. Plaintiff Daniel T. Calden is proceeding
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`pro se. He contends that defendants Arnold Worldwide LLC; McDonald’s USA, LLC; Joshua
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`Peck; and Joseph Auch copied a video he created for a McDonald’s “Big Mac” hamburger
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`contest, and used his ideas in a later television commercial for the McDonald’s “Filet-O-Fish”
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`sandwich.
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`Defendants have moved to dismiss the complaint under Fed. R. Civ. P. 12(b)(6) for
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`failure to state a claim upon which relief can be granted. For the reasons set forth below, the
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`motion to dismiss will be granted.
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`I.
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`Background
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`A.
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`Factual Background
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`Unless otherwise noted, the facts are set forth as alleged in the complaint. The Court also
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`refers to facts and documents that are incorporated by reference in the complaint, as well as
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`matters of public record.
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 2 of 12
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`1.
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`The Big Mac Chant-Off Contest
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`In 2008, McDonald’s held a contest called the “Big Mac Chant-Off Contest.” It sought
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`audio and video remixes of the “Big Mac Chant” (“Two all-beef patties, special sauce, lettuce,
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`cheese, pickles, onions, on a sesame seed bun.”). (See Compl. ¶¶ 1, 9; see also Press Release,
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`dated Jun. 18, 2008, available at:
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`http://mcdepk.com/yousowantone/mediadocs/Big_Mac_Chant_Release.pdf (last viewed Nov.
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`26, 2012)). Submissions had to be uploaded onto a contest entry page on the social media site
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`MySpace.com. (Compl. ¶ 1).
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`Calden entered the Big Mac Chant-Off Contest on June 27, 2008, by uploading a video to
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`Myspace.com. (Compl. ¶ 1). The entry was viewable on the site for a short period of time.
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`(Id.). On June 30, 2008, Calden’s entry was taken down from the contest entry page. (Id.).
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`Calden’s entry shows a close-up of a man sitting on a couch inside a house.1 The man is
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`wearing sunglasses and a t-shirt, and has a gray-and-white sock puppet with hand-drawn features
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`on his left hand. Synthesized music begins to play in the background, and the man and the sock
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`puppet sing along. At first the lyrics are: “Big Mac. Big Mac. Big Mac. Everybody wants to
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`eat a Big Mac.” This repeats several times before the music transitions, and the sock puppet
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`begins to lip-sync a solo rap version of the Big Mac Chant. The man joins back in on lyrics
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`about the sesame-seed bun. The man and the sock puppet then repeat the song.
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`1 The Court’s descriptions of Calden’s competition entry and the Filet-O-Fish commercial that he contends
`copied his entry are based upon the Court’s viewing of audio/video files provided by the defendants. (Def.’s Mot. to
`Dismiss, Ex. A). Because the complaint referred extensively to both the submission and advertisement, the Court
`will consider them in connection with the motion to dismiss. See Giragosian v. Ryan, 547 F.3d 59, 65 (1st Cir.
`2008) .
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`2
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 3 of 12
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`2.
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`The Filet-O-Fish Commercial
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`In February 2009, McDonald’s began airing a television commercial for its “Filet-O-
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`Fish” sandwich. (Compl. ¶ 13). The commercial depicts a man, sitting in a garage, eating a
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`Filet-O-Fish sandwich. A blue fish mounted on the wall begins singing: “Give me back that
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`Filet-O-Fish, give me that fish. Give me back that Filet-O-Fish, give me that fish. What if it
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`were you hanging up on this wall? If it were you in that sandwich you wouldn’t be laughing at
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`all.” The man watches the singing fish and continues to eat his sandwich. Shortly thereafter,
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`another man walks into the garage. He looks at the fish, and then at the original man, who
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`shrugs and continues eating. The commercial ends with a close-up of the sandwich with a voice-
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`over describing an “Extra Value Meal Deal.”
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`Arnold Worldwide was the advertising agency involved in the creation of the Filet-O-
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`Fish advertisement. (Compl. ¶ 14). Joseph Auch and Joshua Peck were involved in creating the
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`advertisement. (Id.).
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`B.
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`Procedural Background
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`Plaintiff filed a complaint in Norfolk Superior Court on February 15, 2012. The
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`complaint alleges claims of “Intellectual Property Theft” (Count I), “Breach of Contract” (Count
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`II), “Impropriety in the Method of Acquiring an Idea” (Count III), “Copyright Infringement”
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`(Count IV), and “Interference of Monies Earned” (Count V). (Compl. ¶¶ 17-21). In essence,
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`plaintiff contends that defendants stole the idea set out in his Big Mac contest submission, and
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`used it for the Filet-O-Fish television commercial without credit or payment to him. Plaintiff
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`seeks credit for his material, money damages, and payment of costs and expenses.
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`On May 15, 2012, Arnold filed a notice of removal in accordance with 28 U.S.C. § 1446,
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`3
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 4 of 12
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`and the case was removed to federal court. On June 22, 2012, defendants Arnold and
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`McDonald’s moved to dismiss for failure to state a claim pursuant to Rule 12(b)(6). That same
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`day, individual defendants Auch and Peck moved to join the motion to dismiss.
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`Fed. R. Civ. P. 12(b) states that “[a] motion asserting [failure to state a claim] must be
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`made before pleading if a responsive pleading is allowed.” According to the state court record,
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`Auch and Peck filed an answer to plaintiff’s complaint on May 14, 2012. Thus, their motion to
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`dismiss is untimely because it was made after their responsive pleading was filed. However,
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`Fed. R. Civ. P. 12(c) allows for judgment on the pleading upon a motion that is made “[a]fter the
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`pleadings are closed—but early enough not to delay trial . . . .” A Rule 12(c) motion for
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`judgment on the pleadings “is treated much like a Rule 12(b)(6) motion to dismiss.” Perez-
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`Acevedo v. Rivero-Cubano, 520 F.3d 26, 29 (1st Cir. 2008). It differs from a Rule 12(b)(6)
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`motion primarily because it is filed after the close of pleadings and “implicates the pleadings as a
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`whole.” Aponte-Torres v. University of Puerto Rico, 445 F.3d 50, 54-55 (1st Cir. 2006).
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`Accordingly, although defendants Auch and Peck have styled their filing as a motion to
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`join the motion to dismiss, the Court will grant the motion and treat it as one for judgment on the
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`pleadings under Rule 12(c). See Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123,
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`126 (2d Cir. 2001) (holding that a motion to dismiss that is filed after the close of pleadings
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`should be construed as a motion for judgment on the pleadings).
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`II.
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`Standard of Review
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`On a motion to dismiss for failure to state a claim under Rule 12(b)(6), the Court “must
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`assume the truth of all well-plead[ed] facts and give the plaintiff the benefit of all reasonable
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`inferences therefrom.” Ruiz v. Bally Total Fitness Holding Corp., 496 F.3d 1, 5 (1st Cir. 2007)
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`4
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 5 of 12
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`(citing Rogan v. Menino, 175 F.3d 75, 77 (1st Cir. 1999)). To survive a motion to dismiss, the
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`complaint must state a claim that is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S.
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`544, 570 (2007). That is, “[f]actual allegations must be enough to raise a right to relief above the
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`speculative level, . . . on the assumption that all the allegations in the complaint are true (even if
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`doubtful in fact).” Id. at 555 (citations omitted). “The plausibility standard is not akin to a
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`‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted
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`unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 556).
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`Dismissal is appropriate if plaintiff’s well-pleaded facts do not “possess enough heft to show that
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`plaintiff is entitled to relief.” Ruiz Rivera v. Pfizer Pharms., LLC, 521 F.3d 76, 84 (1st Cir.
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`2008) (quotations and original alterations omitted).
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`In considering a motion to dismiss, the Court is generally “limited to considering facts
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`and documents that are part of or incorporated into the complaint.” Giragosian v. Ryan, 547
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`F.3d 59, 65 (1st Cir. 2008) (citation and internal quotation marks omitted). However, these
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`limitations are not absolute. Id. When a complaint’s factual allegations are dependent upon a
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`document, “that document effectively merges into the pleadings and the trial court can review it
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`in deciding a motion to dismiss under Rule 12(b)(6).” Beddall v. State St. Bank & Trust Co., 137
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`F.3d 12, 17 (1st Cir. 1996); see also McGee v. Benjamin, 2012 WL 959377, at *4 (D. Mass.
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`March 20, 2012). The Court may also consider “documents incorporated by reference in [the
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`complaint], matters of public record, and other matters susceptible to judicial notice.”
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`Giragosian 547 F.3d at 65 (quoting In re Colonial Mortgage Bankers Corp., 324 F.3d 12, 20
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`(1st Cir. 2003).
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 6 of 12
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`III.
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`Analysis
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`A.
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`“Copyright Infringement” Claim (Count IV)
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`To establish copyright infringement, plaintiff must prove (1) ownership of a valid
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`copyright, and (2) copying of constituent elements of the work that are original. Feist Publ’ns,
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`Inc. v. Rural Tel. Serv. Co, Inc., 499 U.S. 340, 361 (1991); Johnson v. Gordon, 409 F.3d 12, 18
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`(1st Cir. 2005). Plaintiff contends that defendants copied his work of music and video when they
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`created the Filet-O-Fish advertisement at issue, and that this act of copying constituted copyright
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`infringement. Plaintiff’s claim, however, fails at both steps.
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`1.
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`Ownership of a Valid Copyright
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`To prove ownership of a valid copyright, a plaintiff must prove that the work is original
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`and that the plaintiff complied with applicable statutory formalities. Lotus Dev. Corp. v. Borland
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`Int’l, 49 F.3d 807, 813 (1st Cir. 1995). The Copyright Act provides that a party cannot sue for
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`copyright infringement until a work has been registered with the U.S. Copyright Office.
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`Feldman v. Twentieth Century Fox Film Corp., 723 F. Supp. 2d. 357, 364 (D. Mass. 2010); see
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`also 17 U.S.C. § 411(a) (“[N]o civil action for infringement of a copyright in any United States
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`work shall be instituted until pre-registration or registration of the copyright claim has been
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`made in accordance with this title.”).
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`Plaintiff’s complaint does not anywhere allege that plaintiff owns a validly registered
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`copyright. He comes closest in paragraph 20 of his complaint, where he states that his work is
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`“fixed and copyrighted under the Copyright Act of 1976 U.S.C.A. 203(a).” (Compl. ¶ 20).
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`However, the Copyright Act only permits an individual to sue to enforce copyright protection if
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`the work at issue has been registered. The complaint does not plead a valid registration.
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 7 of 12
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`Accordingly, plaintiff has not pleaded the required elements of a claim for copyright
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`infringement. See Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1247 (2010) (explaining
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`that the Copyright Act’s registration requirement is a precondition to filing a claim); Feldman,
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`723 F. Supp. 2d at 364 (“plaintiff’s unregistered work cannot form the basis of her infringement
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`claim.”). This failure to plead ownership of a registered copyright is itself enough to require
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`dismissal of this claim.
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`2.
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`Copying of Constituent Elements
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`The complaint also fails to sufficiently allege the second element of copyright
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`infringement—copying of constituent elements of the work that are original. To prove such
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`copying, plaintiff must demonstrate two things. First, plaintiff must show that, “as a factual
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`matter, the defendant copied the plaintiff’s copyrighted material.” Johnson, 409 F.3d at 18. This
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`element is sometimes referred to as “actual copying.” See McGee, 2012 WL 959377, at *5.
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`Second, plaintiff must show that “the copying of the copyrighted material was so extensive that
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`it rendered the infringing and copyrighted works substantially similar.” Johnson, 409 F.3d at 18.
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`The plaintiff bears the burden of proof in establishing wrongful copying. Id. at 17.
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`a.
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`Actual Copying
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`A plaintiff may demonstrate actual copying either by direct or indirect evidence.
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`Johnson, 409 F. 3d at 18. Where direct proof is not available, “a plaintiff may satisfy his
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`obligation indirectly by adducing evidence that the alleged infringer enjoyed access to the
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`copyrighted work and that a sufficient degree of similarity exists between the copyrighted work
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`and the allegedly infringing work to give rise to an inference of actual copying.” Id. In
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`evaluating such “probative similarity,” the First Circuit has held that a court must “engage in
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 8 of 12
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`dissection of the copyrighted work by separating its original, protected expressive elements from
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`those aspects that are not copyrightable because they represent unprotected ideas or unoriginal
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`expressions.” Id. at 18-19. The copying of ideas or other unprotected “constituent elements”
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`does not demonstrative probative similarity. McGee, 2012 WL 959377, at *5.
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`The parties agree that defendants had access to the work at issue. The remaining
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`question in determining actual copying is whether there is any probative similarity between the
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`original, copyrightable elements of plaintiff’s work and the Filet-O-Fish commercial.
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`Defendants contend that the complaint fails to allege probative similarity from which the
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`court may infer actual copying. Indeed, defendants contend that the complaint falls far short of
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`alleging actual copying, as it does not even identify the protected elements in plaintiff’s work
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`that defendants are accused of copying in the commercial. Defendants contend that the absence
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`of details in the complaint leaves them “to guess at the plaintiff’s theory of infringement.” (Def.
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`Br. at 10).
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`Defendants’ uncertainty as to the basis of plaintiff’s claim of infringement is
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`understandable. The complaint alleges only that “a McDonalds commercial/campaign shows up
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`on television featuring Calden’s fixed work of music and video, only instead of the Big Mac they
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`attached a parody of Calden’s fixed work to an ad campaign featuring the [Filet-O-Fish]
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`sandwich.” (Compl. ¶ 13). Presumably, plaintiff believes that the commercial copied the
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`entirety of his work, except that it substituted the Filet-O-Fish sandwich for the Big Mac. He
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`does not, however, identify any specific content of his work that is protectable by copyright.
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`Nor are any such protectable elements apparent to the Court upon reviewing the two
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`works. The only arguably similar elements are that both involve men in indoor settings with
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 9 of 12
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`background music, and singing non-human puppets/stuffed animals. These elements are all
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`abstract ideas and concepts, none of which are protectable by copyright. See McGee, 2012 WL
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`959377, at *6-7; 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work
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`of authorship extend to any idea, procedure . . . concept, principle, or discovery, regardless of the
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`form in which it is described, explained, illustrated, or embodied in such work.”); see also Favia
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`v. Lyons Partnership, 1996 WL 194306, at *4 (S.D.N.Y. Apr. 23, 1996) (the use of a puppet
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`without more is non-protectable). An author “can claim to own only an original manner of
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`expressing ideas, not the ideas themselves.” Dunn v. Brown, 517 F. Supp. 2d 541, 544 (D. Mass.
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`2007) (citing Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st Cir. 2001).
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`Thus, to the extent that plaintiff asserts that the Filet-O-Fish commercial copies ideas contained
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`in his work, such copying is not protected, and cannot be the basis for plaintiff’s recovery.
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`b.
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`Substantial Similarity
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`A court must only address the question of substantial similarity if it identifies any
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`probative similarity from which it can infer actual copying. See McGee, 2012 WL 959377, at
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`*5. Because the complaint fails to sufficiently allege actual copying and the Court is unable to
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`identify any probative similarity, the Court need not determine whether the complaint adequately
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`alleges substantial similarity.
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`Plaintiff has failed to adequately plead both ownership of a valid copyright and copying
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`of constituent elements of the work that are original. Both are required elements of a copyright
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`infringement claim. Accordingly, the copyright infringement claim will be dismissed.
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 10 of 12
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`B.
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`Intellectual Property Theft Claim (Count I) and “Impropriety in the Method
`of Acquiring an Idea” Claim (Count III)
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`The complaint alleges a claim of “intellectual property theft.” Specifically, it alleges that
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`“Calden’s material had been parodied for commercial use without his knowledge or consent.”
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`(Compl. ¶ 17). It also alleges a claim of “Impropriety in the Method of Acquiring an Idea.”
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`Specifically, it alleges that “[a]fter underhanded treatment during the contest with no response to
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`Calden’s follow-up queries McDonalds still steamed ahead with a parody of Calden’s fixed
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`material and released the [Filet-O-Fish] Commercial.” (Compl. ¶ 19).
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`These claims both appear to be duplicative statements of the copyright infringement
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`claim set forth in Count IV. Both allege, in substance, that defendants copied his work without
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`informing him and without his permission. To the extent that they intend to set forth distinct
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`claims, separate from the copyright infringement claim, they do not sufficiently allege these
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`claims, and do not put either defendants or the Court on notice of the alleged bases for recovery.
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`Accordingly, they will be dismissed.
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`C.
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`Breach of Contract Claim (Count II)
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`Plaintiff contends that defendants’ creation of the Filet-O-Fish advertisement constituted
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`breach of contract. Defendants have moved to dismiss this claim on the grounds that plaintiff
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`has not properly pleaded a breach of contract claim, and any such claim is preempted by the
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`Copyright Act.
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`To state a claim for breach of contract under Massachusetts law, a plaintiff must allege,
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`at a minimum, (1) that there was a valid contract, (2) that the defendant breached its duties under
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`the contractual agreement, and (3) that the breach caused the plaintiff damage. See, e.g.,
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`Guckenberger v. Boston Univ., 957 F. Supp. 306, 316-17 (D. Mass. 1997). Failure to plead any
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 11 of 12
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`of the elements of a breach of contract claim warrants dismissal of the claim. Gibbs v. SLM
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`Corp., 336 F. Supp 2d 1, 16 (D. Mass. 2004).
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`Here, the complaint does not set forth any details about the alleged breach of contract.
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`No contract is alleged. No specific parties to the contract are identified. No specific contract
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`provisions are set forth. The nature of the alleged breach of contract is not identified. The
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`complaint simply states that “[a]fter underhanded treatment during the contest with no response
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`to Calden’s follow-up queries McDonalds still steamed ahead with a parody of Calden’s fixed
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`material and released the [Filet-O-Fish] Commercial.” (Compl. ¶ 18).
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`This barebones statement does not adequately plead the elements of a breach of contract
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`claim. Accordingly, plaintiff’s breach of contract claim will be dismissed. Because the claim
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`has not been properly set forth, the Court need not determine whether such a claim is preempted
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`by the Copyright Act.
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`D.
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`“Interference of Monies Earned” Claim (Count V)
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`The complaint also sets forth a claim for “interference of monies earned.” It alleges that
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`“[b]esides the prize from the contest Calden has lost wages due to Mr. Harvey, Mr. Auch, and
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`Mr. Peck parodying Calden’s fixed and copyrighted material and passing it off as their own. The
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`McDonald’s Corporation is also profiting from Calden’s Fixed and copyrighted material (while
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`Calden is NOT) by selling their [Filet-O-Fish] sandwiches, selling related merchandise, selling
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`ringtones and MP3's where Calden has not seen any monies or acknowledgment.” (Compl. ¶
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`21).
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`This claim appears to be a request for monetary damages in the form of a contest prize
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`and a portion of profits from McDonald’s sale of Filet-O-Fish sandwiches, merchandise,
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`Case 1:12-cv-10874-FDS Document 28 Filed 11/27/12 Page 12 of 12
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`ringtones, and MP3s. A request for monetary damages is a potential form of relief; it is not a
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`separate cause of action. Accordingly, this claim will be dismissed. See Jaffe v. Capital One
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`Bank, 2010 WL 691639, at *10 (S.D.N.Y. Mar. 1, 2010).
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`IV. Conclusion
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`For the foregoing reasons, defendant Auch and Peck’s motion for joinder is GRANTED,
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`and defendants’ motion to dismiss is GRANTED.
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`So Ordered.
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`Dated: November 27, 2012
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`/s/ F. Dennis Saylor
`F. Dennis Saylor IV
`United States District Judge
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`12