15‐3489‐cv McDonald v. West

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURTʹS LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION ʺSUMMARY ORDERʺ). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

At a stated term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 7th day of October, two thousand sixteen.

PRESENT: DENNY CHIN, SUSAN L. CARNEY, Circuit Judges, RICHARD M. BERMAN, District Judge.*

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JOEL R. MCDONALD, AKA Joel Mac, Plaintiff‐Appellant,

v. 15‐3489‐cv

KANYE WEST, JAY‐Z, AKA Shawn Carter, MIKE DEAN, UNIVERSAL MUSIC GROUP, ROC‐A‐FELLA RECORDS LLC, DEF JAM MUSIC, ROC NATION LLC, Defendants‐Appellees,

* Judge Richard M. Berman, of the United States District Court for the Southern District of New York, sitting by designation.

FRANK OCEAN, AKA Christopher Breaux, SHAMA JOSEPH, DOES 1‐10, INCLUSIVE, Defendants.

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FOR PLAINTIFF‐APPELLANT: JOEL R. MCDONALD, pro se, Brooklyn, New York.

FOR DEFENDANTS‐APPELLEES: ILENE S. FARKAS, Brad D. Rose, Rebecca M. Siegel, Pryor Cashman LLP, New York, New York.

Appeal from the United States District Court for the Southern District of

New York (Nathan, J.).

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED,

ADJUDGED, AND DECREED that the judgment of the district court is AFFIRMED.

Plaintiff‐appellant Joel R. McDonald, proceeding pro se, appeals from a

judgment of the district court entered September 30, 2015, dismissing his copyright

infringement action. By memorandum and order entered the same day, the district

court granted defendantsʹ motion to dismiss pursuant to Federal Rule of Civil

Procedure 12(b)(6) for failure to state a claim. We assume the partiesʹ familiarity with

the underlying facts, the procedural history of the case, and the issues on appeal.

ʺWe review de novo a district courtʹs dismissal of a complaint pursuant to

Rule 12(b)(6), construing the complaint liberally, accepting all factual allegations in the

complaint as true, and drawing all reasonable inferences in the plaintiffʹs favor.ʺ

Chambers v. Time Warner, Inc.,

(2d Cir. 2002). To survive a motion to

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dismiss under Rule 12(b)(6), the complaint must plead ʺenough facts to state a claim to

relief that is plausible on its face.ʺ Bell Atl. Corp. v. Twombly,

(2007); see

Ashcroft v. Iqbal,

(2009). In a copyright infringement action, ʺthe works

themselves supersede and control contrary descriptions of themʺ in the pleadings. Peter

F. Gaito Architecture, LLC v. Simone Dev. Corp.,

(2d Cir. 2010) (quoting

Walker v. Time Life Films, Inc.,

(2d Cir. 1986)).

To state a claim for copyright infringement, a plaintiff must plausibly

allege that ʺ(1) the defendant has actually copied the plaintiffʹs work; and (2) the

copying is illegal because a substantial similarity exists between the defendantʹs work

and the protectible elements of [the] plaintiffʹs.”

at 63 (quoting Hamil Am. Inc. v. GFI,

, 99 (2d Cir. 1999)).

As a general matter, the test for substantial similarity is ʺwhether an

ʹordinary observer, unless he set out to detect the disparities, would be disposed to

overlook them, and regard [the] aesthetic appeal as the same.ʹʺ Id. at 66 (quoting

Yurman Design, Inc. v. PAJ, Inc.,

(2d Cir. 2001)). Where, as here, the

plaintiffʹs work incorporates significant elements from the public domain, the ordinary

observer test becomes ʺmore discerningʺ because a ʺʹmore refined analysisʹ is required

where a plaintiffʹs work is not ʹwholly original.ʹʺ Boisson v. Banian, Ltd.,

(2d Cir. 2001) (quoting Hamil Am., 193 F.3d at 101‐02, and Key Publʹns, Inc. v.

Chinatown Today Publ’g Enters., Inc.,

, 514 (2d Cir. 1991)). The plaintiff must

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allege ʺsubstantial similarity between those elements, and only those elements, that

provide copyrightability to the allegedly infringed compilation.ʺ Id. at 272 (quoting Key

Publ’ns, 945 F.2d at 514). Courts must compare ʺthe ʹtotal concept and feelʹ of the

contested worksʺ rather than ʺdissect the works at issue into separate components and

compare only the copyrightable elements.ʺ Id. (quoting Knitwaves, Inc. v. Lollytogs Ltd.,

(2d Cir. 1995)). Only then can the court determine whether any

similarities ʺare 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.ʺ Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc.,

, 134‐

35 (2d Cir. 2003).

A district court can resolve the question of substantial similarity as a

matter of law if ʺthe similarity between two works concerns only non‐copyrightable

elements of the plaintiffʹs work, or because no reasonable jury, properly instructed,

could find that the two works are substantially similar.ʺ Peter F. Gaito,

(quoting Warner Bros. Inc. v. Am. Broad. Cos.,

, 240 (2d Cir. 1983)). Because a

district court faced with a motion to dismiss ʺhas before it all that is necessary to make

such an evaluation,ʺ it is ʺentirely appropriateʺ for it to evaluate substantial similarity as

a matter of law and decide whether the ʺcomplaint, together with the works

incorporated therein, . . . ʹplausibly give rise to an entitlement to relief.ʹʺ Id. at 64

(quoting Iqbal,

).

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Based on those principles and a de novo review of the record, we conclude

that the district court correctly dismissed McDonaldʹs amended complaint. We

therefore affirm for substantially the reasons stated by the district court in its thorough

and well‐reasoned decision.

We have considered all of McDonaldʹs arguments and find them to be

without merit. Accordingly, we AFFIRM the judgment of the district court.

FOR THE COURT: Catherine OʹHagan Wolfe, Clerk

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