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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`SMITH VIL,
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`Plaintiff,
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`v.
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`JACKY POTEAU F/K/A, A/K/A
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`JACQUES POTEAU,
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`FOUNDATION FOR THE
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`TECHNOLOGICAL AND ECONOMIC
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`ADVANCEMENT OF
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`MIREBALAIS, INC. (FATEM),
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`RICARDO BONACY TELEMAQUE
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`F/K/A, A/K/A BEAUDELAIRE
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`TELEMAQUE,
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`JOHN ERICK NOEL, and
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`GABRIELLE RENE ,
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`Defendants.
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`Civil Action No. 11-11622-DJC
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`MEMORANDUM AND ORDER
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`CASPER, J.
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` March 3, 2015
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`Introduction
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`Plaintiff Smith Vil (“Vil”) filed this action against Jacky Poteau f/k/a Jacques Poteau
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`I.
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`(“Poteau”), Ricardo Bonachy Telemaque f/k/a Beaudelaire Telemaque (“Telemaque”), John
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`Erick Noel, Gabrielle Rene (collectively, the “Individual Defendants”) and the Foundation for
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`the Technological and Economic Advancement of Mirebalais, Inc. (“FATEM”) (together with
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`the Individual Defendants, the “Defendants”) asserting claims for copyright infringement, unfair
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`competition, breach of an implied contract, declaratory judgment and equitable relief. D. 1.
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`1
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 2 of 16
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`Defendants have now moved for summary judgment. D. 90 and 92. For the reasons stated
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`below, the Court ALLOWS the motions.
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`II.
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`Standard of Review
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`The Court grants summary judgment where there is no genuine dispute as to any material
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`fact and the undisputed facts demonstrate that the moving party is entitled to judgment as a
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`matter of law. Fed. R. Civ. P. 56(a). “A fact is material if it carries with it the potential to affect
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`the outcome of the suit under applicable law.” Santiago–Ramos v. Centennial P.R. Wireless
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`Corp., 217 F.3d 46, 52 (1st Cir. 2000) (citation omitted). The movant bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Carmona v. Toledo, 215 F.3d 124,
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`132 (1st Cir. 2000); see Celotex v. Catrett, 477 U.S. 317, 323 (1986). If the movant meets its
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`burden, the non-moving party may not rest on the allegations or denials in its pleadings,
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986), but must come forward with specific
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`admissible facts showing that there is a genuine issue for trial. Borges ex rel. S.M.B.W. v.
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`Serrano–Isern, 605 F.3d 1, 5 (1st Cir. 2010). The Court “view[s] the record in the light most
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`favorable to the nonmovant, drawing reasonable inferences in his favor.” Noonan v. Staples
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`Inc., 556 F.3d 20, 25 (1st Cir. 2009) (citation omitted).
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`III.
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`Factual Background
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`The following facts are as described in the Defendants’ statement of material facts, D. 94,
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`and Vil’s affidavit in opposition to Defendants’ motion for summary judgment, D. 110. Vil did
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`not respond to Defendants’ statement of material facts.
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`In 2006, Vil founded the non-profit organization FATEM and served as its Vice President
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`and a member of its board of directors. D. 94 ¶ 3; D. 107 at 2. FATEM is a 501(c)(3) charitable
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`organization based in Brockton, Massachusetts. D. 94 ¶ 1. Poteau is President and Executive
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`2
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 3 of 16
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`Director of FATEM. D. 110 ¶ 3. Telemaque is an Associate Executive Director of FATEM. Id.
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`All of the Individual Defendants serve on FATEM’s board of directors. Id. On September 9,
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`2009, Vil was terminated from FATEM, and his involvement with the organization ended. D. 94
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`¶¶ 4-5. Vil alleges that the Individual Defendants secretly acted to remove him from FATEM’s
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`operations. D. 110 ¶ 7.
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`On January 21, 2011, after his termination from FATEM, Vil filed for copyright
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`protection with the U.S. Copyright Office for a “learning program” called “Learn to Read and
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`Write is a Right” (the “Program”). D. 94 ¶ 6; D. 110 ¶¶ 4-5. Vil claims to have “created” this
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`Program in 2007 while working at FATEM. D. 110 ¶ 4. He received a copyright from the
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`Register of Copyrights which bore the registration number TXu001703966. D. 94 ¶ 6. Vil
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`describes the materials submitted to the copyright office as a textual description of the Program.
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`Id. ¶ 7. Vil has not, however, produced a copy of these materials. Id.
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`Vil alleges that Defendants, without authorization, continued to reproduce, display,
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`advertise and distribute Vil’s copyrighted materials. D. 110 ¶¶ 7, 21. Vil further alleges that
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`Defendants “continued to use [Vil’s] creative works to attract donors,” who have contributed
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`over a million dollars to the Program. Id. ¶ 11.
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`IV.
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`Procedural History
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`On September 21, 2011, Vil filed this lawsuit against Defendants. D. 1. Defendants
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`moved to dismiss the action on March 23, 2012. D. 15. On November 28, 2012, the Court
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`granted Defendants’ motion to dismiss in part and allowed Vil leave to amend his intellectual
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`property rights claim. D. 25. On January 9, 2013, Vil filed an amended complaint against the
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`Defendants, asserting claims for copyright infringement pursuant to 17 U.S.C. §§ 101 et seq.
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`(Count I), unfair competition in violation of 15 U.S.C. §§ 1117, 1125(a) (Count II), breach of an
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`3
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 4 of 16
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`implied contract (Count III), declaratory relief (Count IV) and injunctive relief (Count V). D. 29
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`¶¶ 17-36.
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`On January 11, 2013, Poteau filed a counterclaim against Vil seeking injunctive relief
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`and monetary sanctions based on Vil’s alleged violation of an injunction and discharge order,
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`pursuant to Section 727 of the Bankruptcy Code, 11 U.S.C. § 101 et. seq., dated August 28, 2012
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`and entered by the United States Bankruptcy Court for the District of Massachusetts. D. 30. Vil
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`moved to dismiss the counterclaim on January 16, 2013. D. 31. On February 1, 2013, the
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`Defendants collectively filed a motion to dismiss the amended complaint pursuant to Fed. R.
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`Civ. P. 12(b)(6), D. 34, and Poteau individually filed a motion to dismiss the claims against him,
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`D. 36. On July 26, 2013, the Court denied the Defendants’ motion to dismiss, D. 34, but granted
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`Poteau’s separate motion to dismiss, D. 36. D. 41. The Court also denied Vil’s motion to
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`dismiss Poteau’s counterclaim, D. 31, and referred the matter to the U.S. Bankruptcy Court
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`pursuant to Local Rule 201. D. 41.
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`The Individual Defendants and FATEM have now filed separate motions for summary
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`judgment. D. 90 and 92. The Court heard argument on Defendants’ pending motions and took
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`the matters under advisement. D. 119.
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`V.
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`Discussion
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`A.
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`Vil Has Not Demonstrated a Genuine Issue of Material Fact as to His
`Copyright Infringement Claim (Count I)
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`To establish a valid claim for copyright infringement, Vil must prove: “(1) ownership of
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`a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist
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`Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). “To show ownership of a
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`valid copyright and thus satisfy the first prong under Feist, a plaintiff must prove that the work as
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`a whole is original and that the plaintiff complied with applicable statutory formalities.” CMM
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`4
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 5 of 16
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`Cable Rep, Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504, 1513 (1st Cir. 1996). A showing of
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`actionable copying, the second prong under Feist, requires Vil to prove that Defendants “copied
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`plaintiff's copyrighted work as a factual matter” and that the copying “was so extensive that it
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`rendered the offending and copyrighted works substantially similar.” Id. (quoting Lotus Dev.
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`Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir. 1995)).
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`Vil alleges that he holds a valid copyright granting him “the exclusive rights and
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`privileges” in the learning program, “Learn to Read and Write is a Right,” which he further
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`alleges Defendants infringed because they “reproduced, displayed, advertized, pitched to donors,
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`and distributed” the copyrighted materials without his consent. D. 29 ¶¶ 15, 18. Defendants
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`have moved for summary judgment, D. 90 and 92, arguing that Vil cannot substantiate any of his
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`claims, particularly in light of his failure to produce the allegedly infringed material. D. 91 at 2-
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`3; D. 93 at 3.
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`1.
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`The Validity of Vil’s Copyright
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`To begin, Vil must show that his work is original and that he complied with the statutory
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`formalities. CMM Cable Rep, Inc., 97 F.3d at 1513. While “registration is not a condition of
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`copyright protection,” 17 U.S.C. § 408(a), “the Copyright Act makes registration a precondition
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`to filing a valid copyright infringement claim under the federal statute.” Airframe Sys., Inc. v.
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`L-3 Commc’ns Corp., 658 F.3d 100, 105 (1st Cir. 2011). Vil has produced a certificate of
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`registration from the Register of Copyrights for the Program. D. 94-3 (U.S. Copyright Office
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`catalog entry). The certificate is dated January 21, 2011 and bears the registration number
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`“TXu001703966.” Id. “[A] certificate of copyright registration constitutes prima facie evidence
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`of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not
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`valid.” Lotus Dev., 49 F.3d at 813 (emphasis in original) (quoting Bibbero Sys., Inc. v. Colwell
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`5
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 6 of 16
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`Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990)). Because Vil has failed to produce the
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`copyrighted material, Defendants seem to suggest that his claims may fail under the first prong
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`of Feist. D. 91 at 3 (noting that “the textual description of his ‘Learn to Read and Write is a
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`Right’ Program, Registration No. TXu001703966 . . . is at the center of this Copyright dispute,
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`and because the Plaintiff failed to produce this document, he is unable to prove the essential
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`material elements of his claims”). Since Vil’s certificate of registration is prima facie evidence
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`of his ownership of a valid copyright, Lotus Dev., 49 F.3d at 813, however, the Court will
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`confine its analysis to whether Vil has satisfied Feist’s second prong by demonstrating actionable
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`copying.
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`2.
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`Actionable Copying
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`To prove Defendants copied constituent elements of Vil’s original work and, as a result,
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`satisfy the second prong of Feist, Vil must first show that Defendants “copied Plaintiff’s
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`copyrighted work as a factual matter.” CMM Cable Rep, Inc., 97 F.3d at 1513 (quoting Lotus
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`Dev., 49 F.3d at 813). Second, Vil must show that Defendants’ copying “was so extensive that it
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`rendered the offending and copyrighted works substantially similar.” Id.
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`a)
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`Actual Copying
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`Actual copying as a factual matter “is generally established by showing that the
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`defendant had access to the copyrighted work and that the offending and copyrighted articles are
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`substantially similar.”1 Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606
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`(1st Cir. 1988) (quoting Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 614
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`1The degree of similarity necessary to suggest actual copying is sometimes referred to as
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`“substantial similarity,” however, the Court notes that it is more precisely referred to as
`“probative similarity.” Johnson v. Gordon, 409 F.3d 12, 18 (1st Cir. 2005). “This requirement
`of probative similarity is somewhat akin to, but different than, the requirement of substantial
`similarity that emerges at the second step in the progression.” Id.
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`6
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`(7th Cir.) (internal quotation marks omitted). At this first step, summary judgment “is
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`appropriate only when a rational factfinder, correctly applying the pertinent legal standards,
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`would be compelled to conclude that no substantial similarity exists between the copyrighted
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`work and the allegedly infringing work.” Johnson, 409 F.3d at 18 (citing O’Neill v. Dell Publ’g
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`Co., 630 F.2d 685, 687 (1st Cir. 1980)).
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`Here, Vil alleges that he “created” the “Learn to Read and Write is a Right” program for
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`FATEM while serving as a board member and as the Vice President of the organization, D. 29
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`¶¶ 9-10, and Defendants do not dispute that they worked with Vil on a learning program.2
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`Despite extensive discovery in this case, however, Vil has failed to produce his allegedly
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`infringed work.3 See e.g., D. 87. The only evidence of Vil’s alleged original expression is his
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`deposition testimony, D. 94-1, and his answers to Defendants’ interrogatories, D. 94-4, 94-5, 94-
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`6, 94-7. Without production of his copyrighted work, the Court cannot say that Defendants even
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`had access to the material that Vil actually copyrighted and that Vil now seeks to protect,
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`2The Court notes, for example, a September 12, 2008 email from Vil to the board of
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`directors in which Vil explained that “the Learn to Read and Write program has been in
`existence for close to 2 years now” without a formal written proposal and attached a proposed
`draft, encouraging the board to “share with me your views with respect with what could be
`changed/ added to make it better.” D. 84-6 at 1.
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`3This particular issue should not come as a surprise to Vil, as production of the
`copyrighted text was the subject of two separate motions to compel, D. 61 and D. 80. On June
`23, 2014, the Court heard the parties on Defendants’ first motion to compel. D. 61. At the time,
`Vil had not produced documents pertinent to the allegations, including the allegedly infringed
`program. After discussion with the parties, the Court ordered Vil to “produce and respond to the
`outstanding discovery request” by July 11, 2014. D. 74. On July 24, 2014, the Defendants filed
`a second motion to compel, D. 80, arguing that a number of documents, including the "Learn to
`Read and Write Is a Right" program, had still not been produced. In response, Vil stated that he
`had not been able to locate a copy of the program text, but that he had contacted the Copyright
`Office to obtain a copy. D. 84 at 9. The Court then gave Vil until September 23, 2014 to
`produce responsive documents, including the text of the program filed with the Copyright Office.
`D. 87. At hearing on these motions on October 30, 2014, however, Vil had still not produced a
`copy of the copyrighted text.
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`7
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`especially when Vil filed for copyright protection for his Program over sixteen months after his
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`relationship with the Defendants ended. See D. 94 ¶¶ 4-6. Moreover, without production of the
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`allegedly infringed material, the Court cannot determine that a sufficient degree of similarity
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`exists between Vil’s copyrighted material and the allegedly infringing work to establish actual
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`copying. As such, Vil’s infringement claim fails at the first step of the actionable copying
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`analysis.
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`b)
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`Substantial Similarity
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`Even assuming that Vil’s infringement claim survived the first step of the actionable
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`copying analysis, Vil’s claim would nevertheless fail at “the second step in the progression.”
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`Johnson, 409 F.3d at 18. Here, the Court must consider whether Defendants’ copying “was so
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`extensive that it rendered the offending and copyrighted works substantially similar.” CMM
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`Cable Rep, Inc., 97 F.3d at 1513 (citation omitted). Vil bears the burden of establishing
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`substantial similarity between Defendants’ work and his own. Situation Mgmt. Sys., Inc. v.
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`ASP. Consulting LLC, 560 F.3d 53, 58 (1st Cir. 2009). “Substantial similarity exists if a
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`reasonable, ordinary observer, upon examination of the two works, would conclude that the
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`defendant unlawfully appropriated the plaintiff's protectable expression.” Id. (internal quotation
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`marks omitted) (quoting T-Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 108 (1st Cir.
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`2006)). The “ordinary observer” must “identify[] the aspects of the plaintiff's work that are
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`protected by copyright” and “compare[] the protected elements of the plaintiff's work as a whole
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`against the defendant's work.” Id. at 58-59 (citation omitted). “However, before the foregoing
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`comparison can take place, the plaintiff must necessarily establish the content of the copyrighted
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`work that [he] contends was infringed.” Airframe Sys., Inc.., 658 F.3d at 106. Therefore, to
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`survive summary judgment, Vil must, at a minimum, establish the content of his copyrighted
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`8
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 9 of 16
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`work. Id.
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`It is not disputed that Vil secured a certificate of registration from the U.S. Copyright
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`Office for a “learning program” called “Learn to Read and Write is a Right.” D. 29 ¶¶ 10, 18; D.
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`91 at 4. Vil has described this program as “a text providing ways to help kids – disadvantaged
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`kids with tuitions, with school supplies, and to build schools.” D. 94-1 at 12. As noted above,
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`however, Vil has not produced the textual description of the Program that he filed with the U.S.
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`Copyright Office and which is the crux of his claims. At his deposition, when asked to describe
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`the document he filed, Vil stated that it was a “Word document,” not containing any
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`photographs, drawings or diagrams, D. 94-1 at 9, that he “authored it as a program” and that it
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`was “creative authorship which [he] wrote.” Id. at 11. Upon further questioning, Vil testified
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`that the document was not: (1) a literary work; (2) a musical or dramatic work; (3) a pantomime
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`or choreographic work; (4) a pictorial, graphical, or sculptural work; (5) a motion picture or
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`audiovisual work; (6) a sound recording; or (7) an architectural work. Id. at 11-12; see also 17
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`U.S.C. § 102. When asked to clarify the element of creative expression contained in the text, Vil
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`explained that “it’s something that required some intellectual thinking to come up with the whole
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`process and to write about the program, and that’s my creative work.” Id. at 13. Without more,
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`the Court cannot determine the exact contours of Vil’s program, which, as a threshold matter,
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`prevents the Court from conducting substantial similarity analysis. Nevertheless, the Court will
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`address whether the two learning programs, as described, demonstrate a genuine issue of
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`material fact that Defendants unlawfully appropriated Vil’s copyrighted work.
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`Defendants argue that Vil cannot show the requisite level of originality to support a valid
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`copyright. D. 91 at 12. Originality is “a prerequisite for copyright protection.” Feist, 499 U.S.
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`at 351. As the term is used in copyright, originality “means only that the work was
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`9
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`independently created by the author (as opposed to copied from other works), and that it
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`possesses at least some minimal degree of creativity.” Id. at 345. This is a low threshold.
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`Magic Mktg., Inc., 634 F. Supp. at 771. Nevertheless, “[t]here is a narrow class of cases where
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`even admittedly independent efforts may be deemed too trivial or insignificant to support
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`copyright protection.” Id. (quoting 1 Nimmer on Copyright § 2.01[B] at 2–13). As such,
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`“fragmentary words and phrases,” “forms of expression dictated solely by functional
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`considerations” and “clichéd language and expressions communicating an idea which may only
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`be conveyed in a more or less stereotyped manner” do not warrant copyright protection. Id. at
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`771-72 (quotation marks and citations omitted).
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`In his deposition, Vil described the Program as “an educational program” designed to
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`“help students who cannot purchase books on their own, cannot pay tuitions, cannot have school
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`supplies.” D. 94-1 at 11. Defendants have also promoted tuition assistance programs called,
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`variously, “Learn to Read and Write” and “Learn to Read and Write is a Right.”4 D. 94-1 at 14;
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`D. 94-8 at 2; D. 94-9 at 1. When pressed to describe what distinguishes his Program from other
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`educational and learning programs, including Defendants’ programs, Vil offered little specificity.
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`D. 94-1 at 13. Indeed, Vil admitted that he “[didn’t] remember what [he] submitted” to the
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`copyright office but stated that the Program was his “idea,” id. at 12, and that “the whole
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`4In his deposition, Vil seemed to suggest that the name “Learn to Read and Write is a
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`Right” is subject to copyright protection. D. 94-1 at 13 (claiming that “[i]t’s the name itself is
`creative”). However, titles are typically not subject to copyright protection. See e.g., Arvelo v.
`Am. Int'l Ins. Co., No. 95-cv-1366, slip op. at 1 (1st Cir. Sept. 21, 1995) (explaining that “[i]t is a
`basic proposition of copyright law that mere words and short phrases, even if they occur in a
`copyrighted work, do not themselves enjoy protection against copying”); see also CMM Cable
`Rep, Inc., 97 F.3d at 1519 (noting that “[i]t is axiomatic that copyright law denies protection to
`‘fragmentary words and phrases’ . . . on the grounds that these materials do not exhibit the
`minimal level of creativity necessary to warrant copyright protection”) (collecting cases); 37
`C.F.R. § 202.1 (“The following are examples of works not subject to copyright and applications
`for registration of such works cannot be entertained: (a) Words and short phrases such as names,
`titles, and slogans . . .”).
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`10
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`process” was “creative,” id. at 13. The Court agrees with Defendants that, without more, the
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`Court cannot distinguish the original elements of Vil’s Program from unprotected “clichéd
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`language” or “fragmentary words and phrases,” Magic Mktg., Inc., 634 F. Supp. at 771-72, and
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`cannot compare Vil’s original expression to Defendants’ allegedly infringing work to determine
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`whether substantial similarity exists between the two programs.
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`Moreover, Vil cannot show infringement, because without production of his written
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`original expression, he cannot establish that the Program is anything more than a process or an
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`idea that does not qualify for copyright protection. See 17 U.S.C. § 102(b) (explaining that “[i]n
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`no case does copyright protection for an original work of authorship extend to any idea,
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`procedure, process, system, method of operation, concept, principle, or discovery, regardless of
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`the form in which it is described, explained, illustrated, or embodied in such work”); Concrete
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`Mach. Co., 843 F.2d at 606 (emphasis in original) (citations omitted) (noting that the substantial
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`similarity analysis “refers only to the expression of the artist’s concept, not the underlying idea
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`itself; mere identity of ideas expressed by two works is not substantial similarity giving rise to an
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`infringement action”); Matthews v. Freedman, 157 F.3d 25, 27 (1st Cir. 1998) (noting that
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`“copyright protects the original expressions of ideas but not the ideas expressed”). Indeed, the
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`prohibition against copyrighting a process or an idea is a codification of “[t]he most fundamental
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`axiom of copyright law [] that ‘[n]o author may copyright his ideas or the facts he narrates.”
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`Feist, 499 U.S. at 344-45 (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S.
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`539, 556 (1985)). Descriptions of a process are copyrightable, Situation Mgmt. Sys., Inc., 560
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`F.3d at 61, however, to the extent that Vil’s Program only describes a method for helping
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`“disadvantaged kids with tuitions, with school supplies and to build schools,” D. 94-1 at 12.
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`Defendants are free to build upon Vil’s ideas as long as they do not appropriate Vil’s original
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`11
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`expression. Situation Mgmt. Sys., Inc., 560 F.3d at 61-62 (emphasis in original) (concluding that
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`“[t]he fact that [the plaintiff’s] works describe processes or systems does not make their
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`expression noncopyrightable” and thus, the plaintiff’s “creative choices in describing those
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`processes and systems. . . are subject to copyright protection”).
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`In his deposition, Vil pointed to two documents to show that the Defendants have
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`infringed his Program. First, Vil referred to a 2009 FATEM Facebook post that he claims
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`describes the “Learn to Read and Write program as it started back in 2007.”5 D. 94-1 at 12. The
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`Facebook post refers to a “tuition assistance” program titled “Learn to Read & Write is a Right,”
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`D. 94-8 at 2, that is designed to “enable economically disadvantaged children to receive
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`notebooks, pens, pencils, erasers, pencil sharpeners.” D. 94-9 at 1. The post “seek[s] funding
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`for [the] ‘Learn to Read & Write is a Right’ program with the objective of helping disadvantaged
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`children in the Mirebalais school district (Haiti)” Id. Second, Vil referred to a FATEM project
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`profile describing a fundraising program geared toward assisting children obtain tuition, school
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`supplies and food. D. 94-1 at 14. The project profile, which was used by FATEM after Vil filed
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`for copyright protection, also seeks donations for a project providing scholarships and meals to
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`children. D. 94-11 at 1. The profile explains that contributions “will enable economically
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`disadvantaged children to receive tuition assistance, notebooks, pens, pencils, erasers, pencil
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`sharpeners, backpacks, books” through FATEM’s “Learning to Read & Write (LTRW)
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`program.” Id. at 2 (internal quotation marks omitted).
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`Although Vil relies on these documents to show infringement, when pressed he could not
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`identify any specific language in those descriptions as his creative expression. D. 94-1 at 15.
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`5In his deposition Vil testified that, by making this Facebook post, the Defendants
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`infringed Vil’s copyright, D. 94-1 at 14, however, the Court notes that this post was made after
`Vil was terminated from the organization but over a year before he registered for copyright
`protection.
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`12
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`
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 13 of 16
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`Rather, when asked what elements of the project profile infringed on his work, Vil testified only
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`that “[t]he same ideas and words and text that is used [in the project profile] are being used,
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`changed, turnaround, that [he] created,” id., and that “FATEM uses a form” of Vil’s Program to
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`solicit donors, id. at 16. Absent additional evidence of Vil’s original expression, an ordinary
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`observer could not conclude that the Defendants “unlawfully appropriated the plaintiff's
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`protectable expression.” Situation Mgmt. Sys., Inc., 560 F.3d at 58 (citation omitted).
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`At base, this is a case where, despite extensive discovery, neither the Defendants nor the
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`Court has received a copy of the copyrighted work, and, by extension, cannot conduct the
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`substantial similarity analysis. See Unistrut Corp. v. Power, 280 F.2d 18, 23 (1st Cir. 1960)
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`(dismissing “for want of proof” copyright infringement claims where plaintiff claimed
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`infringement of a 1942 catalog that it had registered with the copyright office but only produced
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`an unregistered 1943 version, which was clearly shown to have been pirated, because the
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`plaintiff had not offered proof that the infringed material was contained in the 1942 edition).
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`Accordingly, Vil has not established a genuine issue of material fact as to whether Defendants
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`actually copied constituent elements of his original work and cannot succeed on his copyright
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`infringement claim.
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`B.
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`Vil’s Remaining Claims (Counts II-V)
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`Defendants’ motion for summary judgment as to Vil’s remaining claims is premised upon
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`the argument that Vil does not possess a valid copyright. D. 91 at 18-20; D. 93 at 14-16.
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`Specifically, Defendants argue that Vil’s remaining claims are preempted by the Copyright Act,
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`17 U.S.C. § 301(a), and are therefore subject to dismissal. D. 91 at 18; see also 17 U.S.C. §
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`301(a) (noting that “all legal or equitable rights that are equivalent to any of the exclusive rights
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`within the general scope of copyright . . . are governed exclusively by this title”); Steele v.
`
`13
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 14 of 16
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`Turner Broad. Sys., Inc., 607 F. Supp. 2d 258, 263 (D. Mass. 2009) (citation and internal
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`quotation marks omitted) (noting that the Copyright Act preempts state law claims where “1) the
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`work involved falls within the subject matter of copyright and 2) the state law claim incorporates
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`no extra element that is qualitatively different from the copyright claim”).
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`
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`1.
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`Vil’s Unfair Competition Claim (Count II)
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`In addition to his copyright claim, Vil alleges unfair competition pursuant to the Lanham
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`Act, 15 U.S.C. § 1125(a). D. 29 at 5. Vil alleges that “[a]s a result of [Defendants’] false and
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`misleading designation, it is likely that the public who happens to browse the internet for the
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`organization of FATEM that the Plaintiff founded and elsewhere will be confused about the
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`source and origination of FATEM and its ‘Learn to Read and Write is a Right.’” D. 29 ¶ 22.
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`The Lanham Act protects trademarks and prohibits unfair competition that could cause confusion
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`with respect to the “origin, sponsorship, or approval” of goods or services. 15 U.S.C. §
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`1125(a)(1)(A). Here, Vil has alleged his unfair competition claim “[a]s a direct and proximate
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`result of Defendant’s copyright infringement,” D. 29 ¶ 23, and has presented no evidence to
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`support an unfair competition claim that differs from the evidence proffered in support of his
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`copyright infringement claim. However, “[c]opyright infringement by itself does not amount to
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`a misrepresentation or false designation of origin to establish a claim under Section 43(a) of the
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`[Lanham] Act” and “[w]here a plaintiff’s Lanham Act claim merely alleges that the defendant
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`made unauthorized use of a copyrighted work, the Lanham Act claim will be dismissed as
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`duplicative of the copyright claim.” Mitchell Int'l, Inc. v. Fraticelli, No. 03-cv-1031-GAG/BJM,
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`2007 WL 4197583, at *12 (D.P.R. Nov. 26, 2007) (citations omitted). As such, Vil’s Lanham
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`Act “is duplicative of the copyright claim and should be dismissed.” Jalbert v. Grautski, 554 F.
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`Supp. 2d 57, 74 (D. Mass. 2008) (collecting cases); see also Dastar Corp. v. Twentieth Century
`
`14
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`
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`Case 1:11-cv-11622-DJC Document 121 Filed 03/03/15 Page 15 of 16
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`Fox Film Corp., 539 U.S. 23, 33-38 (2003) (noting that the Lanham Act does not protect a
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`person’s creative talent, which instead falls within the domain of copyright law). Accordingly,
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`the Court agrees with Defendants that Vil’s unfair competition claim is without merit.
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`
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`2.
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`Vil’s Breach of Contract Claim (Count III)
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`Vil also alleges breach of an implied contract.6 D. 29 at 6. At the hearing, Vil conceded
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`that “[t]here was no actual contract,” 10/30/2014 Draft Transcript, but nevertheless argues the
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`Defendants “understood and agreed that [Vil’s] works and ideas could be used only if they paid
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`[him] for its reasonable value” and that Defendants “have reproduced, displayed, and distributed
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`[Vil’s] creative works” without proper compensation. D. 29 ¶¶ 26-27. As such, Vil’s claim will
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`rise and fall on the existence of an implied contract.
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`Under Massachusetts law, to show an implied contract Vil must allege: (1) that he
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`“conferred a measurable benefit upon [Defendants];” (2) “that the [D]efendant[s] accepted the
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`services with the expectation of compensating [Vil];” and (3) “that [Vil] provided the services
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`with the reasonable expectation of receiving compensation from the [D]efendant[s].” Bolen v.
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`Paragon Plastics, Inc., 747 F. Supp. 103, 106-07 (D. Mass. 1990) (citations omitted). As
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`discussed above, Vil has not shown that Defendants used his copyrighted work. As a result, Vil
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`has not shown that he conferred any measureable benefit on Defendants. Furthermore, Vil stated
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`in his deposition that he never talked with board members about ownership rights to the program.
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`D. 94-1 at 18. Specif