United States District Court, S.D. New York
OPINION AND ORDER
PAUL OETKEN, District Judge.
Horizon Comics Productions, Inc. (“Horizon”)
filed a complaint in this action against Marvel
Entertainment, LLC; MVL Film Finance, LLC; Marvel Worldwide,
Inc.; Marvel Studios, LLC; DMG Entertainment, LLC; Paramount
Pictures Corp.; and Walt Disney Studios Motion Pictures, Inc.
(“Marvel” or “Defendants”), on April
4, 2016, alleging copyright infringement under the Copyright
Act, 17 U.S.C. § 101, et seq. (Dkt. No. 2
(“Compl.”).) Marvel moves pursuant to Federal
Rule of Civil Procedure Rule 12(b)(6) to dismiss the
Complaint, on the grounds that the elements of
Plaintiff's works alleged to have been copied are not
protectable as a matter of law and are, in any event, not
substantially similar to Defendants' works. For the
reasons that follow, the motion is granted in part and denied
following facts are taken from the Complaint, except where
otherwise noted, and are presumed true for the purposes of
2001, comic book artists Ben and Ray Lai, the brothers who
own Horizon, created a comic book series called
Radix. (Compl. ¶¶ 2, 19.) The characters
in that series wear “highly-detailed, futuristic,
armored, and weaponized suits of body armor to fight
enemies.” (Id. ¶ 19.) The Complaint
identifies the registrations for Plaintiff's copyrights.
(Id. ¶ 6).
are the copyright holders, creators, and distributors of the
Iron Man and Avenger movie franchises.
(Id. ¶ 1.) In those films, the character Iron
Man wears “mechanized body armor” that Plaintiff
alleges “appropriates the copyrighted artistic works of
the Plaintiff without authorization or attribution.”
(Id. ¶ 4.)
the Iron Man character first appeared in 1963, the armor worn
by the character has changed over the years from a
“spandex-like attire and minimal armor” to the
“fully mechanized suit of body armor” depicted in
the Iron Man and Avenger movies.
(Id. ¶¶ 24-25.) According to the
Complaint, this change took place after the Lai brothers
submitted the Radix art to Defendants and were hired
by Marvel as artists. (Id. ¶¶ 3, 29.)
alleges that Marvel infringed its copyright by copying
elements of Horizon's illustrations for use in the films.
(Id. ¶ 36.) Marvel moves to dismiss on grounds
that the elements of Horizon's works alleged to have been
copied are not protectable as a matter of law and are, in any
event, not substantially similar to Defendants' works.
(Dkt. No. 36.)
survive a motion to dismiss pursuant to Federal Rule
12(b)(6), a plaintiff must plead sufficient factual
allegations ‘to state a claim to relief that is
plausible on its face.'” Effie Film, LLC v.
Pomerance, 909 F.Supp.2d 273, 290 (S.D.N.Y. 2012)
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,
570 (2007)). “A claim is facially plausible ‘when
the plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.'” Id. (quoting
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
“In deciding a motion to dismiss pursuant to Rule
12(b)(6), the Court must liberally construe all claims,
accept all factual allegations in the complaint as true, and
draw all reasonable inferences in favor of the
plaintiff.” Id. (internal quotation marks
omitted) (quoting Pyatt v. Raymond, No. 10 Civ.
8764, 2011 WL 2078531, at *3 (S.D.N.Y. May 19, 2011),
aff'd, 462 Fed.App'x 22 (2d Cir. 2012)).
general, our review is limited to the facts as asserted
within the four corners of the complaint, the documents
attached to the complaint as exhibits, and any documents
incorporated in the complaint by reference.”
Id. (internal quotation marks omitted) (quoting
McCarthy v. Dun & Bradstreet Corp., 482 F.3d
184, 191 (2d Cir. 2007). “Nonetheless, ‘in
copyright infringement cases the works themselves supersede
and control contrary descriptions of them.'”
Id. (quoting Walker v. Time Life Films,
Inc., 784 F.2d 44, 52 (2d Cir. 1986)).
order to establish a claim of copyright infringement,
‘a plaintiff with a valid copyright must demonstrate
that: (1) the defendant has actually copied the
plaintiff's work; and (2) the copying is illegal because
a substantial similarity exists between the defendant's
work and the protectable elements of
plaintiff's.'” Peter F. Gaito Architecture,
LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010)
(quoting Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d
Cir. 1999)). “Although substantial similarity analysis
often presents questions of fact, where the court has before
it ‘all that is necessary to make a comparison of the
works in question, ' it may rule on ‘substantial
similarity as a matter of law on a Rule 12(b)(6) motion to
dismiss.'” Effie Film, 909 F.Supp.2d at
290-91 (quoting Peter F. Gaito, 602 F.3d at 65).
This is because, in considering whether the works are
substantially similar, “what is required is only a
visual comparison of the works.” Folio Impressions,
Inc. v. Byer Cal., 937 F.2d 759, 766 (2d Cir. 1991);
see Peter F. Gaito, 602 F.3d at 64.
determination of the extent of similarity that will
constitute a substantial, and hence infringing,
similarity presents one of the most difficult questions in
copyright law, and one that is the least susceptible of
helpful generalizations.” 4 Nimmer on Copyright §
13.03[A] (2015); see also Peter Pan Fabrics, Inc. v.
Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)
(“The test for infringement of a copyright is of
necessity vague.”). Where the disputed works are
entirely protectable, “[t]he standard test for
substantial similarity between two items is whether an
‘ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard
[the] aesthetic appeal as the same.'” Yurman
Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir.
2001) (internal quotation marks omitted) (quoting Hamil
Am. Inc., 193 F.3d at 100).
when a work contains both protectable and unprotectable
elements, the analysis is “more discerning.”
Laureyssens v. Idea Group, Inc., 964 F.2d 131, 141
(2d Cir. 1992). In particular, the Court “must attempt
to extract the unprotectible elements from our consideration
and ask whether the protectible elements, standing
alone, are substantially similar.” Knitwaves,
Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d
Cir. 1995). For example, “it is well established that
‘scènes à faire, ' which involve
‘incidents, characters or settings which are as a
practical matter indispensable, or at least standard, in the
treatment of a given topic' are ‘not copyrightable
as a matter of law.'” Effie Film, 909
F.Supp.2d at 292 (quoting Hoehling v. Universal City
Studios, Inc., 618 F.2d 972, 979 (2d Cir. 1980)). Where
the copyright holder alleges substantial similarity,
therefore, the Court looks to “whether the alleged
‘similarities are due to protected aesthetic
expressions original to the allegedly infringed work, or
whether the similarity is to something in the original that
is free for the taking, '” including scènes
à faire. Effie Film, 909 F.Supp.2d at 291
(quoting Peter F. Gaito, 602 F.3d at 67).
even when engaging in the “discerning”
substantial similarity inquiry, courts “have disavowed
any notion that we are required to dissect [the works] into
their separate components, and compare only those elements
which are in themselves copyrightable.” Id. at
292 (alteration in original) (internal quotation marks
omitted) (quoting Peter F. Gaito, 602 F.3d at 66).
The inquiry is more holistic, as the Court “compar[es]
the contested [work's] total concept and overall feel
with that of the allegedly infringed work, as instructed by
our good eyes and common sense.” Id. (second
alteration in original) (internal quotation marks omitted)
(quoting Peter F. Gaito, 602 F.3d at 66). For
copying to be unlawful, the “works must share a
similarity of expression, such as ‘similarities of
treatment, details, scenes, events, and characterization,
'” Hogan v. DC Comics, 48 F.Supp.2d 298,
309 (S.D.N.Y. 1999) (quoting Reyher v. Children's
Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976)), or
a similarity in their “total concept or feel, ”
id. (quoting Williams v. Crichton, 84 F.3d
581, 589 (2d Cir. 1996)). Such an approach allows for a
finding of copyright infringement where a defendant has
“parrot[ed] properties that are apparent only when
numerous aesthetic decisions embodied in the plaintiff's
work of art . . . are considered in relation to one
another.” Tufenkian Imp./Exp. Ventures, Inc. v.
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