Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 1 of 19 PageID #:130
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`CULVER FRANCHISING SYSTEM, INC.,
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`16 C 72
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`Judge Gary Feinerman
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`Plaintiff,
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`Defendant.
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`STEAK N SHAKE INC.,
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`vs.
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`MEMORANDUM OPINION AND ORDER
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`Culver Franchising System, Inc., brought this suit against Steak n Shake Inc., alleging
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`that Steak n Shake unlawfully copied one of its television commercials in violation of the
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`Copyright Act, 17 U.S.C. § 101 et seq. Doc. 1. Steak n Shake has moved to dismiss the
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`complaint pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing that the two
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`commercials are not substantially similar. Doc. 14. The motion is granted, and the complaint is
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`dismissed without prejudice to Culver attempting to replead.
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`Background
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`On a Rule 12(b)(6) motion, the court must accept the complaint’s well-pleaded factual
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`allegations, with all reasonable inferences drawn in Culver’s favor, but not its legal conclusions.
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`See Smoke Shop, LLC v. United States, 761 F.3d 779, 785 (7th Cir. 2014). The court must also
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`consider “documents attached to the complaint, documents that are critical to the complaint and
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`referred to in it, and information that is subject to proper judicial notice,” along with additional
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`facts set forth in Culver’s brief opposing dismissal, so long as those additional facts “are
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`consistent with the pleadings.” Phillips v. Prudential Ins. Co. of Am., 714 F.3d 1017, 1020 (7th
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`Cir. 2013) (internal quotation marks omitted). The facts are set forth as favorably to Culver as
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 2 of 19 PageID #:131
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`those materials permit. See Meade v. Moraine Valley Cmty. Coll., 770 F.3d 680, 682 (7th Cir.
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`2014).
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`Culver and Steak n Shake are franchisors that license individuals to operate Culver’s and
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`Steak n Shake restaurants, respectively, throughout the United States. Doc. 1 at ¶¶ 1-2. In
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`December 2014, Culver began developing its “Butcher-Quality Beef” television commercial,
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`which highlights Culver’s “ButterBurger.” Id. at ¶¶ 6-7. The commercial first aired on April 13,
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`2015. Id. at ¶ 8.
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`Culver’s commercial opens in a butcher shop with its co-founder, Craig Culver,
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`reminiscing with a butcher, Fritz, about “the good old days”:
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`Craig Culver: “The ButterBurger is made of just three cuts of fresh Midwest
`beef, nothing more, nothing less. It reminds me of the good old days when we
`first opened Culver’s, we would call up the butcher shop and we’d buy our
`beef from there each and every day.”
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`Fritz: “You can’t get any fresher than that.”
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`Craig Culver: “Well today we still get fresh beef into our restaurants.”
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`During this part of the conversation, the commercial intersperses shots of (1) Culver’s logo with
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`the words “Butcher-Quality Beef”; (2) a close-up of the ButterBurger; and (3) a mother and her
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`son selecting and purchasing meat from another butcher in the shop.
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`The camera then focuses on three cuts of beef, as Craig and Fritz discuss how they are
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`incorporated into the ButterBurger:
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`Craig Culver: “We don’t skimp on the quality of our beef. So we got the
`sirloin, the chuck and the plate. No fillers, that’s it.”
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`Fritz: “All prized cuts, all well-marbled for richness and flavor. And when
`you put them all together, that ends up to be a very high quality burger.”
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`Craig then cooks two patties, pressing down on them with a spatula and metal cylinder. Craig
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`and Fritz continue discussing the patties’ fresh preparation as Craig assembles a burger:
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`Craig Culver: “This is where those three wonderful cuts of beef come
`together.”
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`Fritz: “You can just tell that blend is working in there.”
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`Craig Culver: “And we sear them, and that seals in the juices of the burger.
`That’s where that wonderful steak taste comes from.”
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`Fritz: “It doesn’t get any better than that.”
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`Craig Culver: “You know all our burgers are cooked to order. And that’s a
`little different than most of our competitors. The Culver’s ButterBurger.”
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`Finally, the commercial transitions to a shot of the completed ButterBurger and then to Culver’s
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`logo; Fritz says, “Craig, that is one great burger,” followed by Craig exclaiming, “Welcome to
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`delicious!”
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 5 of 19 PageID #:134
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`The commercial runs for one minute and may be viewed at
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`https://www.youtube.com/watch_popup?feature=player_embedded&v=gfULlxDEQio. Id. at
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`¶ 14.
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`Seven months after the “Butcher-Quality Beef” commercial debuted, Steak n Shake
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`began running its “The Original Steakburger” commercial. Id. at ¶ 12. The ad opens in a
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`butcher shop with a butcher speaking directly to the camera about Steak n Shake’s Steakburger:
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`Butcher: “In 1934, Steak n Shake decided the world didn’t need another
`hamburger. It needed a steak burger.”
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`The butcher then discusses the three cuts of beef used in the Steakburger, as the camera focuses
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`on each cut individually:
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`Butcher: “So they used 100% beef, including prized cuts of sirloin, round and
`t-bone; well-marbled to add juiciness.”
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`The butcher proceeds to cook and assemble the burger, compressing the patty with a spatula and
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`a two-pronged fork. The commercial concludes with a shot of the finished burger and Steak n
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`Shake’s logo, as the butcher offers the following praise:
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 7 of 19 PageID #:136
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`Butcher: “And it all comes together; a quick sear to seal in the flavor and
`create those unique crispy edges you’ll only get from a steak burger. And
`that’s what makes Steak n Shake, home of the original Steakburger.”
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`The “Original Steakburger” commercial runs for thirty seconds and may be viewed at
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`https://www.youtube.com/watch_popup?v=sfwjYym8tWc. Id. at ¶ 14.
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`Culver alleges that Steak n Shake knowingly and willfully infringed its copyright on the
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`“Butcher-Quality Beef” commercial in violation of 17 U.S.C. § 106. Id. at ¶¶ 22-23.
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`Specifically, Culver claims that the “expression, images, dialogue, and sequencing of the two
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`advertisements are substantially similar,” as they both “feature a quintessential local butcher’s
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`shop with an older butcher displaying three different cuts of ‘well-marbled’ beef that ‘come
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`together’ as the camera pans to the grill showing the patties being seared to ‘seal’ in the flavor or
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`juices.” Id. at ¶ 14. Culver seeks injunctive relief and damages. Id. at ¶¶ 24-27.
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`Attached to Steak n Shake’s motion to dismiss are three exhibits that fall outside the
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`pleadings. Doc. 15 at 29-41. Culver argues that it would be improper for the court to consider
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`those exhibits without treating Steak n Shake’s motion as one for summary judgment. Doc. 21 at
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`7: see Fed. R. Civ. P. 12(d); 188 LLC v. Trinity Indus., Inc., 300 F.3d 730, 735 (7th Cir. 2002)
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`(“[T]he general rule [is] that when additional evidence is attached [to] a motion to dismiss, the
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`court must either convert the 12(b)(6) motion into a motion for summary judgment under Rule
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`56 … or exclude the documents attached to the motion to dismiss and continue under Rule 12.”)
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`(internal quotation marks omitted). Erring on the side of caution, the court will disregard those
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`exhibits for purposes of this motion.
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`Discussion
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`Section 106 of the Copyright Act, 17 U.S.C. § 106, grants copyright owners the exclusive
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`right to reproduce their copyrighted works. To establish copyright infringement, a plaintiff must
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`show: “(1) ownership of a valid copyright; and (2) unauthorized copying of constituent elements
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 8 of 19 PageID #:137
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`of the work that are original.” Hobbs v. John, 722 F.3d 1089, 1094 (7th Cir. 2013); see also
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`Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012). “Unauthorized copying” may be proved with
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`either direct evidence (such as an admission of copying) or, more typically, “by showing that the
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`defendant had the opportunity to copy the original (often called ‘access’) and that the two works
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`are ‘substantially similar,’ thus permitting an inference that the defendant actually did copy the
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`original.” Peters, 692 F.3d at 633. Steak n Shake does not dispute that it had access to Culver’s
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`commercial or that Culver owns a valid copyright thereon; rather, Steak n Shake contends that
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`Culver’s allegations fall short because, as a matter of law, its “The Original Steakburger”
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`commercial is not substantially similar to Culver’s “Butcher-Quality Beef” commercial.
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`In assessing whether two works are substantially similar, the court “must first identify
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`which aspects of the [plaintiff’s] work, if any, are protectable by copyright.” Nova Design Build,
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`Inc. v. Grace Hotels LLC, 652 F.3d 814, 817 (7th Cir. 2011) (alteration in original) (internal
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`quotation marks omitted). The court then analyzes “whether the allegedly infringing work is so
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`similar to the [plaintiff’s] work that an ordinary reasonable person would conclude that the
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`defendant unlawfully appropriated the protectable elements of the work.” Id. at 818 (alteration
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`in original) (internal quotation marks omitted). The “more a work is both like an already
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`copyrighted work and—for this is equally important—unlike anything that is in the public
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`domain, the less likely it is to be an independent creation.” JCW Invs., Inc. v. Novelty, Inc., 482
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`F.3d 910, 915 (7th Cir. 2007) (internal quotation mark omitted).
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`Copyright protects those elements of a work that “possess originality,” with originality
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`“requir[ing] that the elements be independently created and possess at least some minimal degree
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`of creativity.” Nova Design Build, 652 F.3d at 818; see also 17 U.S.C. § 102(a) (“Copyright
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`protection subsists … in original works of authorship ….”); Feist Publ’ns, Inc. v. Rural Tel.
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 9 of 19 PageID #:138
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`Serv. Co., Inc., 499 U.S. 340, 345 (1991) (“The sine qua non of copyright is originality.”).
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`Moreover, copyright protection extends only to the original expression of an idea, not to the idea
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`itself. See 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work of
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`authorship extend to any idea, procedure, process, system, method of operation, concept,
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`principle, or discovery, regardless of the form in which it is described, explained, illustrated, or
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`embodied in such work.”); Sissom v. Snow, 626 F. App’x 163, 166 (7th Cir. 2015) (“It is a
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`foundation of copyright law that only the form of an author’s expression is protectable, not the
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`facts or ideas being expressed.”); Seng-Tiong Ho v. Taflove, 648 F.3d 489, 497 (7th Cir. 2011)
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`(“In essence, the Copyright Act protects the expression of ideas, but exempts the ideas
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`themselves from protection.”) (internal quotation marks omitted); JCW Invs., 482 F.3d at 917
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`(“It is, of course, a fundamental tenet of copyright law that the idea is not protected, but the
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`original expression of the idea is.”).
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`When an idea is capable of very few expressions, the idea and its expression “merge” and
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`the expression may not be copyrighted. See Seng-Tiong Ho, 648 F.3d at 497 (“[W]hen there is
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`only one feasible way of expressing an idea, so that if the expression were copyrightable it would
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`mean that the idea was copyrightable, the expression is not protected.”) (internal quotation marks
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`omitted). This is known as the merger doctrine. See ibid. The related scènes à faire doctrine
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`further circumscribes the scope of copyright protection. As the Seventh Circuit has explained,
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`this doctrine provides that “even at the level of particular expression, the Copyright Act does not
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`protect incidents, characters or settings which are as a practical matter indispensable, or at least
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`standard, in the treatment of a given topic.” Hobbs, 722 F.3d at 1095 (internal quotation marks
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`omitted); see also Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1011-12 (7th Cir.
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`2005) (same); Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003)
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 10 of 19 PageID #:139
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`(“[A] copyright owner can’t prove infringement by pointing to features of his work that are
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`found in the defendant’s work as well but that are so rudimentary, commonplace, standard, or
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`unavoidable that they do not serve to distinguish one work within a class of works from
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`another.”); Reyher v. Children’s Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976)
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`(“Copyrights … do not protect thematic concepts or scenes which necessarily must follow from
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`certain similar plot situations.”).
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`The Seventh Circuit on two recent occasions has applied the “substantial similarity” test
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`in the context of a Rule 12(b)(6) motion. In Hobbs, the plaintiff claimed that Elton John’s song
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`“Nikita” was an unauthorized copy of the plaintiff’s song “Natasha.” 722 F.3d at 1091. The
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`plaintiff identified six allegedly similar elements in both songs:
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`(1) A theme of impossible love between a Western man and a Communist
`woman during the Cold War;
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`(2) References to events that never happened;
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`(3) Descriptions of the beloved’s light eyes;
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`(4) References to written correspondence to the beloved;
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`(5) Repetition of the beloved’s name, the word “never,” the phrase “to hold
`you,” the phrase “I need you,” and some form of the phrase “you will never
`know;” and
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`(6) A title which is a one-word, phonetically-similar title consisting of a three-
`syllable female Russian name, both beginning with the letter “N” and ending
`with the letter “A.”
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`Id. at 1094 (footnote omitted). The Seventh Circuit held that “even when the allegedly similar
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`elements between the songs are considered in combination, the songs are not substantially
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`similar.” Id. at 1093. The court explained that the two songs expressed the first four common
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`elements differently. For example, while “Natasha” concerns two people who briefly meet but
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`then are torn apart because of the Cold War, “Nikita” tells the story of a man who desires a
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 11 of 19 PageID #:140
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`woman from afar whom he can never meet because she is not free, and while Natasha had “pale
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`blue eyes,” Nikita had “eyes that looked like ice on fire.” Id. at 1095. As to the last two
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`common elements, the Seventh Circuit agreed that they were similarly expressed, but still found
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`that they did not rise to the level of “substantial similarity” because they were “rudimentary,
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`commonplace, standard, or unavoidable in popular love songs.” Id. at 1096. For these reasons,
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`the court ruled that dismissal was appropriate.
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`In Peters, the Seventh Circuit applied the substantial similarity test to two other songs,
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`both called “Stronger”—one written by the Vincent Peters, the plaintiff, and the second released
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`by Kanye West, the defendant. 692 F.3d at 630. Peters pointed to three similarities between the
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`two works: (1) the hooks and titles of both songs derive from Nietzsche’s dictum, “That which
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`does not kill us makes us stronger”; (2) both rhyme “stronger” with “longer” and “wronger”; (3)
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`both include references to Kate Moss, the British model. Id. at 635. Viewing all three elements
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`together, the Seventh Circuit again concluded that the plaintiff did not have a viable copyright
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`claim. Id. at 636. First, the court found that the common title and lyrics were not protected by
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`copyright given the “ubiquity of this common saying” and the fact that it “has been repeatedly
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`invoked in song lyrics over the past century.” Id. at 635-36. Second, the court was not
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`“persuaded that the particular rhymes of stronger, longer, and wronger qualif[ied] for copyright
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`protection.” Id. at 636 (citing Prunte v. Universal Music Grp., 699 F. Supp. 2d 15, 29 (D.D.C.
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`2010), for the proposition that common rhyme schemes lack the originality necessary to be
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`copyrightable). Third, the Seventh Circuit explained that the references to Kate Moss could be
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`coincidental, as “analogizing to models as a shorthand for beauty is, for better or for worse,
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`commonplace in our society.” Ibid.
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 12 of 19 PageID #:141
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`Likewise, in affirming the denial of a preliminary injunction, the Seventh Circuit in
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`Incredible Technologies invoked the scènes à faire doctrine in ruling that the plaintiff was
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`unlikely to prevail on its copyright infringement claim against a rival golf video game company.
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`As the court explained: “In presenting a realistic video golf game, one would, by definition, need
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`golf courses, clubs, a selection menu, a golfer, a wind meter, etc. Sand traps and water hazards
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`are a fact of life for golfers, real and virtual.” Incredible Techs., 400 F.3d at 1015. Because
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`those elements were covered by the scènes à faire doctrine, they were “afforded protection only
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`from virtually identical copying,” which the plaintiff had not established. Ibid.
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`With these governing precedents in mind, the court turns to this case. Culver’s complaint
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`alleges that the “expression, images, dialogue, and sequencing of the two advertisements are
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`substantially similar.” Doc. 1 at ¶ 14. In opposing dismissal, Culver argues that “the
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`commercials at issue here are highly similar in terms of their total concept and feel.” Doc. 21 at
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`13. In support, Culver identifies the following common elements: (1) the commercial opens with
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`a butcher in a white uniform in a butcher shop; (2) then, the company logo appears; (3) the
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`butcher describes the beef’s quality; (4) three different cuts of beef are shown as the butcher
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`identifies the cuts and describes how they are “well-marbled”; (5) patties are grilled and flattened
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`with a spatula as the griller describes how the cuts “come[] together,” using the words “sear” and
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`“seal”; (6) the burger is stacked and topped with cheese; and (7) the commercial ends with a
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`close-up of the completed burger before the company’s logo again appears. Id. at 13-14. Culver
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`maintains that the unique “combination of dialogue, pacing, sequence, background, and other
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`visual and expressive elements” in its ad deserves copyright protection. Id. at 15.
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`Under the standard set forth and applied by the Seventh Circuit in Peters and Hobbs, the
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`commercials are not substantially similar as a matter of law. Several of the seven common
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`elements identified by Culver lack the necessary modicum of creativity to give rise to copyright
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`protection. Regarding the second and seventh elements, there is nothing unique about a
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`company displaying its logo and product at the beginning and/or end of a commercial. The same
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`is true for the sixth element; at least as early as the iconic 1975 “Two all-beef patties, special
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`sauce, lettuce, cheese, pickles, onions on a sesame-seed bun” McDonald’s Big Mac ad, burger
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`commercials have regularly featured the grilling and/or assembling of a burger, followed by a
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`view of the final product. See https://www.youtube.com/watch_popup?v=dK2qBbDn5W0
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`(McDonald’s); https://www.youtube.com/watch_popup?v=tEGjGHjvoAs (Smashburger);
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`https://www.youtube.com/watch_popup?v=KJXzkUH72cY (Burger King);
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`https://www.youtube.com/watch_popup?v=YhZI7XN5xRA (Wendy’s); cf. Miracle Blade, LLC
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`v. Ebrands Commerce Grp., LLC, 207 F. Supp. 2d 1136, 1150 (D. Nev. 2002) (holding that,
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`among infomercials for kitchen knives, “fruit, vegetable, filet and abuse demonstrations” were
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`scènes à faire and too unoriginal for copyright protection). The sequence of Culver’s
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`commercial is commonplace, as it would be nonsensical for a commercial to open with a cooked
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`burger and then finish with a prolonged shot of a raw patty.
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`Regarding the fourth and fifth elements, pressing down on patties with a spatula and
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`flipping them while they cook is standard grilling practice; adding cheese to a burger is not a
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`stroke of originality; and it is common parlance to describe beef as “marbled,” to speak of
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`“searing” and “sealing” juices, and to discuss how flavors and ingredients “come together.” See
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`https://www.youtube.com/watch_popup?v=sorgUgcTeW8 (Arby’s commercial describing its
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`product as having “fantastic marbling”);
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`https://www.youtube.com/watch_popup?v=tEGjGHjvoAs (Smashburger commercial discussing
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`how its burgers are prepared by “searing in the flavor to make it juicy”). If the rhyming of
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 14 of 19 PageID #:143
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`“stronger,” “longer,” and “wronger” in a song, see Peters, 692 F.3d at 636, and the repetition of
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`“to hold you,” “I need you,” and “you’ll never know” in a song, see Hobbs, 722 F.3d at 1096, do
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`not warrant copyright protection, then neither does the dialogue in Culver’s commercial. See
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`Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 711 (7th Cir. 1972) (explaining that
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`short phrases hardly qualify as an appreciable amount of original expression).
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`As for the remaining common elements, both commercials take place in butcher shops
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`and portray butchers wearing white aprons who show the three cuts of beef used to make the
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`burgers in question. It is hardly original for an advertisement to describe the origins and quality
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`of a meat product or to feature a butcher. The butchers function as stock characters—both don a
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`white butcher coat and, unsurprisingly, work in a butcher shop. Indeed, Culver effectively
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`concedes that the settings for the commercials are generic by describing each butcher shop as a
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`“quintessential local butcher’s shop.” Doc. 1 at ¶ 14 (emphasis added). Because there is nothing
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`distinctive about the expression of Culver’s butcher, and because Culver cannot copyright the
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`mere concept of a butcher talking about beef, Culver’s butcher is not protected expression. See
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`Gaiman v. McFarlane, 360 F.3d 644, 659-60 (7th Cir. 2004) (noting that “stock characters” such
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`as “a drunken suburban housewife, a gesticulating Frenchman, a fire-breathing dragon, [or] a
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`talking cat” are covered by the scènes à faire doctrine and thus are not copyrightable, explaining
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`that “such stereotyped characters are the products not of the creative imagination but of simple
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`observation of the human comedy”); DC Comics v. Towle, 802 F.3d 1012, 1021 (9th Cir. 2015)
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`(explaining that stock characters must exhibit some unique elements of expression to be entitled
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`to copyright protection; for example, “a magician in standard magician garb” is not a protectable
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`character); Williams v. Crichton, 84 F.3d 581, 589 (2d Cir. 1996) (“As Judge Learned Hand
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`advised, ‘the less developed the characters, the less they can be copyrighted; that is the penalty
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 15 of 19 PageID #:144
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`an author must bear for marking them too indistinctly.’”) (quoting Nichols v. Universal Pictures
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`Corp., 45 F.2d 119, 121 (2d Cir. 1930)).
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`Moreover, the commercials differ in certain significant respects. While they both display
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`images of raw beef, they do so differently; “Butcher-Quality Beef” displays the cuts
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`simultaneously, while “The Original Steakburger” focuses on each cut individually. “Butcher-
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`Quality Beef” features a conversation between Craig Culver and Fritz, and twice uses a split
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`screen to show three different images at once. In “The Original Steakburger,” by contrast, an
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`unnamed butcher speaks directly to the camera and the entire commercial consists of single
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`images (i.e., it does not use split screens).
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`Culver contends that the commercials are substantially similar under the “ordinary
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`reasonable person” test, see Nova Design Build, 652 F.3d at 818, because a Culver’s customer
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`sent in a comment card expressing outrage that Steak n Shake copied Culver’s commercial. Doc.
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`21 at 11 n.3. The comment reads in relevant part: “Did you notice that those losers at Steak N
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`Shake almost duplicated one of your commercials? They blatantly used a similar looking man
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`who also talks about the steak cuts going into the burgers. It copies your commercial almost
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`blow by blow!” Ibid. Culver’s take on the “ordinary observer” test is too literal. As the Seventh
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`Circuit warned: “[T]he concept of the ordinary observer must be viewed with caution … and we
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`must heed the principle that, despite what the ordinary observer might see, the copyright laws
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`preclude appropriation of only those elements of the work that are protected by the copyright.”
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`Incredible Techs., 400 F.3d at 1011. So, just because a customer sincerely believes that Steak n
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`Shake “blatantly” copied Culver’s commercial does not mean that the commercials are
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`substantially similar—especially where, as here, the commercials’ common elements are not
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`protected by the Copyright Act as a matter of law.
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 16 of 19 PageID #:145
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`Culver also argues that determining “substantial similarity is not a proper inquiry for a
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`motion to dismiss.” Doc. 21 at 6. This argument ignores Peters and Hobbs—both controlling
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`precedents decided within the last five years—where the Seventh Circuit made clear that district
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`courts on a Rule 12(b)(6) motion may rely on common knowledge and experience in assessing
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`whether the plaintiff could prevail on the substantial similarity issue. See Hobbs, 722 F.3d at
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`1096 (holding, as a matter of law, that the two songs “do not share enough unique features to
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`give rise to a breach of the duty not to copy another’s work”) (internal quotation marks omitted);
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`Peters, 692 F.3d at 636 (“Even viewing all of these [similarities] in combination, we conclude
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`that Vince P has not plausibly alleged that Stronger (KW) infringes on Stronger (VP).”). Other
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`circuits are in accord. See, e.g., Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602
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`F.3d 57, 65 (2d Cir. 2010) (affirming dismissal at the Rule 12(b)(6) stage for lack of substantial
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`similarity, and noting that several circuits had “likewise endorsed the practice of considering the
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`question of substantial similarity on a motion to dismiss”) (citing cases); Jacobsen v. Deseret
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`Book Co., 287 F.3d 936, 941-42 (10th Cir. 2002); Nelson v. PRN Prods., Inc., 873 F.2d 1141,
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`1143-44 (8th Cir. 1989); Christianson v. W. Publ’g Co., 149 F.2d 202, 203 (9th Cir. 1945).
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`Therefore, this court may—and, indeed, must—evaluate substantial similarity in determining
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`whether dismissal is warranted under Rule 12(b)(6). See Fooey Inc. v. Gap, Inc., 2013 WL
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`2237515, at *1 (N.D. Ill. May 17, 2013) (“In copyright infringement cases, a court may dismiss
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`under Rule 12(b)(6) when a plaintiff’s complaint fails to establish a plausible basis for copyright
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`infringement—substantial similarity between the works in question.”); Evan Brown, “Shaking
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`Out the ‘Shakedowns’: Pre-Discovery Dismissal of Copyright Infringement Cases After
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`Comparison of the Works at Issue,” 9 Wash. J. L. Tech. & Arts 69, 70 (2013) (“cases in which
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 17 of 19 PageID #:146
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`the court need only compare works of authorship to determine whether the plaintiff’s claims are
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`plausible” are “excellent candidates for pre-discovery dismissal”).
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`It bears mention at this point that Culver’s brief opposing dismissal does not even
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`acknowledge, let alone distinguish, Hobbs and Peters—this despite their centrality to Steak n
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`Shake’s initial brief and despite their being the two principal examples of the Seventh Circuit’s
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`current thinking on the substantial similarity issue. Ignoring precedent does not make it
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`disappear, particularly from the perspective of a district judge duty-bound to follow that
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`precedent. That Culver flat out ignored Hobbs and Peters is a tacit, yet unmistakable, admission
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`that those two cases are fatal to its suit.
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`Finally, Culver argues that its commercial’s elements, when considered together, create a
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`whole greater than the sum of its parts and therefore warrant copyright protection even if the
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`individual elements themselves are unprotected. Doc. 21 at 18. The Seventh Circuit has
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`expressly reserved the question whether “a unique selection, arrangement, and combination of
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`individually unprotectable elements in a [work] can support a copyright infringement claim.”
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`Hobbs, 722 F.3d at 1093 (emphasis added); see also id. at 1093 n.4 (noting that “there is a wealth
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`of authority recognizing that, in certain situations, a unique arrangement of individually
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`unprotectable elements can form an original expression entitled to copyright protection”);
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`Bucklew, 329 F.3d at 929 (“Every expressive work can be decomposed into elements not
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`themselves copyrightable—the cars in a car chase, the kiss in a love scene, the dive bombers in a
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`movie about Pearl Harbor, or for that matter the letters of the alphabet in any written work. The
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`presence of such elements obviously does not forfeit copyright protection of the work as a whole,
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`but infringement cannot be found on the basis of such elements alone; it is the combination of
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 18 of 19 PageID #:147
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`elements, or particular novel twists given to them, that supply the minimal originality required
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`for copyright protection.”).
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`Assuming that this is a valid copyright theory, Culver’s claim would still fail because the
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`components of its commercial are not arranged or combined in any appreciably unique way. As
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`discussed above, both advertisements—from the description of the beef’s quality to the grilling
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`and assembling of the burger—are fairly standard in the fast food industry. Therefore, even
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`when considering how the common elements are arranged, Culver cannot sustain a claim for
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`copyright infringement. See Francescatti v. Germanotta, 2014 WL 2767231, at *19 (N.D. Ill.
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`June 17, 2014) (holding that the plaintiff “has not established similarity between the songs as a
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`whole; between individual, qualitatively important elements; nor a unique combination of
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`elements. … Thus, no reasonable trier of fact could find that the songs’ expressions are
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`substantially similar.”).
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`Conclusion
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`Because Culver cannot show that Steak n Shake’s “The Original Steakburger”
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`commercial is substantially similar to its “Butcher-Quality Beef” commercial, Steak n Shake’s
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`motion to dismiss is granted. There are two reasons why dismissal with prejudice would be
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`appropriate. First, repleading would appear to be futile because the fatal flaw in Culver’s case—
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`that the two commercials are not substantially similar as a matter of law—cannot be cured by
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`amendment. See Gonzalez-Koeneke v. West, 791 F.3d 801, 807 (7th Cir. 2015) (“District courts
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`… have broad discretion to deny leave to amend … where the amendment would be futile.”)
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`(internal quotation marks omitted). Second, Culver did not request an opportunity to replead in
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`the event the court dismissed the complaint. See James Cape & Sons Co. v. PCC Constr. Co.,
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`453 F.3d 396, 400-01 (7th Cir. 2006) (rejecting the plaintiff’s argument that the district court
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`Case: 1:16-cv-00072 Document #: 36 Filed: 08/05/16 Page 19 of 19 PageID #:148
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`erred in dismissing its complaint with prejudice, rather than without prejudice and with leave to
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`amend, where the plaintiff did not request leave to amend). That said, the Seventh Circuit
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`strongly prefers that district courts give a plaintiff at least one chance to amend after the original
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`complaint is dismissed. See Alioto v. Town of Lisbon, 651 F.3d 715, 721 (7th Cir. 2011) (“[A]
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`plaintiff ordinarily retains the ability to amend his complaint once as a matter of right, even after
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`a court grants a motion to dismiss.”); Foster v. DeLuca, 545 F.3d 582, 584 (7th Cir. 2008) (“[A]n
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`order dismissing the original complaint normally does not eliminate the plaintiff’s right to amend
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`once as a ma