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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
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` CIVIL NO.: 12-1794 (MEL)
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`NOBERTO COLÓN-LORENZANA, et. al.,
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` Plaintiffs,
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` v.
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`SOUTH AMERICAN RESTAURANTS CORP.,
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` Defendant.
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`I.
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`PROCEDURAL HISTORY
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`OPINION AND ORDER
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`On September 10, 2013, Noberto Colón Lorenzana (“Mr. Colón”), Gladys Gozá
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`González, and the conjugal partnership they constitute (collectively “plaintiffs”) filed an
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`amended complaint against South American Restaurants Corporation1 (“SARCO” or
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`“defendant”) alleging violations of the Lanham Act, 15 U.S.C. § 1120, for false of fraudulent
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`trademark registration and a supplemental claims under the Puerto Rico Trademarks Act, Law
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`169 of December 16, 2009 (“Law 169”), and under Article 1802 of the Puerto Rico Civil Code,
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`P.R. Laws Ann. tit. 31, § 5141 (“Article 1802”). ECF No. 1. On December 12, 2013, SARCO
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`moved to dismiss the amended complaint for failure to state a claim upon which relief can be
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`granted pursuant to Federal Rule of Civil Procedure 12(b)(6) (“Rule 12(b)(6)”). ECF No. 31.
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`Pending before the court are SARCO’s motion, plaintiff’s response in opposition, SARCO’s
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`reply, and plaintiff’s surreply. ECF Nos. 31; 34; 37; 44.
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`1 The amended complaint also includes claims against AFC Enterprises, Inc., Cajun Operating Company, and Cajun
`Funding Corp.; however, the claims against those parties have already been dismissed. ECF No. 49.
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`II.
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`FACTUAL BACKGROUND
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`The following factual allegations are drawn from the amended complaint (ECF No. 29):
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`On August 17, 1987, Mr. Colón became an employee of a Church’s Fried Chicken
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`(“Church’s”) franchise in Puerto Rico. ¶ 9. Church’s is a restaurant chain owned by SARCO,
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`which SARCO purchased from Sheriff Jones. Id. Mr. Colón formerly worked for Sheriff Jones,
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`which sold a chicken breast sandwich Mr. Colón created. ¶ 10. While Mr. Colón was employed
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`by SARCO, he held various positions. ¶ 11. While he was working as a store manager,
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`Mr. Colón suggested the concept for a new chicken sandwich to Mr. Raúl Ramírez and
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`Mr. Gabriel Salvat, the President and Vice President of SARCO, respectively. ¶ 12. Mr. Colón
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`asked them to include it as part of their daily menu. Id. Various sandwich acceptance tests were
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`performed over the course of four or five months, which plaintiff attended. ¶¶ 13-15.
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`At the end of 1991, when Mr. Colón was employed as an Area Supervisor, SARCO held
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`an activity for Church’s staff and their families in the Caguas restaurant. ¶ 16. At the activity,
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`guests were asked to create their own versions of the chicken sandwich using Mr. Colón’s idea
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`and recipe. ¶ 17. Mr. Colón selected the name “Pechu Sandwich” for the product, and on
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`December 1991, SARCO started selling the Pechu Sandwich and ran an advertising campaign
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`for it. ¶ 18. AFC Enterprises, Inc. filed an application for registration of the trademark “Pechu
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`Sandwich,” and the Department of State for the Commonwealth of Puerto Rico (the “DOS”)
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`issued a certificate of registration on March 4, 1999. ¶ 19. AFC Enterprises, Inc. (“AFC”)
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`assigned and transferred all the rights and goodwill of the “Pechu Sandwich” trademark to Cajun
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`Operating Company (“COC”), and the DOS issued a certificate of assignment on February 28,
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`2008. ¶ 20. COC simultaneously assigned and transferred all rights and goodwill to Cajun
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`Funding Corporation. Id. Plaintiff was not employed by AFC or by COC and did not sign or
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`enter any agreement to transfer or assign his rights related to his invention and its trade name to
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`either corporation. ¶ 21.
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`On August 6, 2005, CFC assigned and transferred all rights and goodwill in the “Pechu
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`Sandwich” trademark to SARCO. ¶ 22. On October 4, 2005, SARCO filed an application in the
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`United States Patent and Trademark Office (“PTO”) to register the name “Pechusandwich,”2 and
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`the name was registered on September 5, 2006. ¶ 23. SARCO acknowledged in writing that
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`Mr. Colón created the sandwich and Mr. Colón testified in a case between SARCO and
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`Kentucky Fried Chicken regarding the rights to the name “Pechu Sandwich.” ¶ 24. SARCO has
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`received economic benefit from Mr. Colón’s creation and he never received any kind of
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`compensation. ¶ ¶ 24; 27. Id. He did not sign or enter any agreement with SARCO to transfer or
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`assign his rights pertaining to his invention or its trade name. Id. Defendant registered the name
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`“Pechu Sandwich” as if it had been SARCO’s creation, without plaintiff’s knowledge, consent,
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`or benefit. ¶ 25. SARCO created additional menu items and derived the items’ names from the
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`name “Pechu Sandwich” without Mr. Colón’s consent or authorization, including: Pechuga
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`Mexicana, Pechu Milanesa, Pechu Jr., Pechu Pop, Pechu Blue, Pechu Salads, Pechurrones, Pechu
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`Filetes, Pechu Parrillera, and Pechu Bites. ¶ 26. SARCO, through Church’s operation, has sold
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`more than 46,000 “Pechusandwiches” and derived products daily resulting in revenues of more
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`than $369,000,000.00. ¶ 29. SARCO continues to offer Mr. Colón’s creation and products
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`bearing Mr. Colón’s creation for sale, without his authorization. ¶ 35.
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`2 This spelling is taken from the amended complaint with respect to two particular allegations, regarding SARCO’s
`registration of the mark and sale of the sandwiches. ¶¶ 23; 29. All other references to the sandwich in the amended
`complaint use the spelling “Pechu Sandwich”.
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`III.
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`STANDARD OF REVIEW
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`When considering a motion to dismiss under Rule 12(b)(6), the court must limit its focus
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`to the allegations of the complaint. Litton Indus., Inc. v. Colón, 587 F.2d 70, 72 (1st Cir. 1978).
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`Specifically, the inquiry should be “whether a liberal reading of [the complaint] can reasonably
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`admit of a claim . . . .” Id. An evaluation of a motion to dismiss under Rule 12(b)(6) requires the
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`court to “accept as true ‘all well-pleaded factual averments and indulg[e] all reasonable
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`inferences in plaintiff=s favor.’” Doyle v. Hasbro, Inc., 103 F.3d 186, 190 (1st Cir. 1996)
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`(quoting Aulson v. Blanchard, 83 F.3d 1, 3 (1st Cir. 1996)). Dismissal under Rule 12(b)(6) is
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`appropriate only if the facts alleged, taken as true, do not warrant recovery. Aulson, 83 F.3d at 3.
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`In order to survive a motion to dismiss, plaintiff must “set forth factual allegations, either direct
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`or inferential, respecting each material element necessary to sustain recovery under some
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`actionable legal theory.” Gooley v. Mobil Oil Corp., 851 F.2d 513, 515 (1st Cir. 1988). Although
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`all inferences must be made in plaintiff=s favor, the court need not accept “bald assertions,
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`unsupportable conclusions, periphrastic circumlocutions, and the like.” Aulson, 83 F.3d at 3.
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`The Supreme Court held in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), that in
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`order to survive a motion to dismiss under Rule 12(b)(6), a complaint must allege “a plausible
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`entitlement to relief.” Rodríguez-Ortiz v. Margo Caribe, Inc., 490 F.3d 92, 95 (1st Cir. 2007)
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`(quoting Twombly, 550 U.S. at 559). “While Twombly does not require heightened fact pleading
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`of specifics, it does require enough facts to ‘nudge [plaintiffs=] claims across the line from
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`conceivable to plausible.’ Accordingly, in order to avoid dismissal, the plaintiff must provide the
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`grounds upon which his claim rests through factual allegations sufficient ‘to raise a right to relief
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`above the speculative level.’” Torres v. Bella Vista Hosp., Inc., 523 F. Supp. 2d 123, 133 (D.P.R.
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`2007) (quoting Twombly, 550 U.S. at 555-56) (citation omitted). Although Twombly was
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`decided in the antitrust context, the Supreme Court has held that the standard expounded in that
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`decision applies to “all civil actions.” Ashcroft v. Iqbal, 556 U.S. 662, 684 (2009).
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`IV.
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`LEGAL ANALYSIS
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`1.
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`The Lanham Act
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`a. Trademark Infringement
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`Plaintiffs do not specifically allege a claim for trademark infringement in the amended
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`complaint. However, to the extent that they imply the same by referring to plaintiffs’ “rights” in
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`the invention and trade name and SARCO’s continued use of the same, the claim cannot succeed
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`and is dismissed with prejudice. As plaintiffs themselves acknowledge, “rights in trademarks are
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`. . . acquired by the first party to appropriate the mark and use it in commerce in connection with
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`a particular product or service . . . .” ECF No. 34, at 8; see also Arvelo v. American Intern Ins.
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`Co., 875 F.Supp. 95, 101 (D.P.R. 1995) aff’d, 66 F.3d 306 (1st Cir. 1995). “Rights in a
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`trademark, however, cannot be obtained through discovery or invention alone. Some actual use
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`of the trademark . . . is necessary to establish use. Neither conception of an idea for a mark, nor
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`solicitation of advertising business constitute use of the trademark sufficient to acquire
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`proprietary rights in the mark.” Id. (internal citations omitted) (finding that inventing the name
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`“Retail Plus” and presenting it to defendant did not constitute sufficient use to invoke trademark
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`protection). Plaintiffs do not allege that they used the name “Pechu Sandwich” or
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`“Pechusandwich” in commerce, let alone that they were the first to use it. The amended
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`complaint does not contain an allegation that plaintiffs have sold Mr. Colón’s chicken sandwich
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`“invention” beyond Mr. Colón’s capacity as an employee at Church’s and / or Sheriff Jones.
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`Furthermore, plaintiffs do not aver that they ever registered, or attempted to register, the mark
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`with the PTO. Overall, the allegations in the complaint do not support a finding that plaintiffs
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`ever acquired trademark rights in the Pechu Sandwich or its trade name, such that SARCO may
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`have infringed upon them in violation of the Lanham Act. Thus, the complaint fails to state a
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`plausible claim for trademark infringement.
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`b. Fraud in the Procurement
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`Section 38 of the Lanham Act provides that:
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`Any person who shall procure registration in the Patent and
`Trademark Office of a mark by a false of fraudulent declaration or
`representation, oral or in writing, by any false means, shall be
`liable in a civil action by any person injured thereby for any
`damages sustained as a consequence thereof. 15 U.S.C. § 1120.
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`The elements of a claim of fraud in the procurement of a federal trademark registration, include:
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`(1) that defendant made a false representation to the PTO regarding a material fact; (2) that
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`defendant knew that the representation was false; (3) that defendant intended to induce the PTO
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`to act in reliance on the misrepresentation; and (4) the PTO was thereby deceived into registering
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`the mark. See Bay State Sav. Bank v. Baystate Fin. Servs., LLC, 484 F. Supp. 2d 205, 220 (D.
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`Mass. 2007) (citations omitted); see also San Juan Products, Inc. v. San Juan Pools of Kansas,
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`Inc., 849 F.2d 468, 473 (10th Cir. 1988) (“Thus, to prove that San Juan committed fraud in the
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`procurement of its federal trademark, [the plaintiff] was required to plead and prove: (1) the false
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`representation regarding a material fact; (2) the registrant's knowledge or belief that the
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`representation is false (scienter); (3) the intention to induce action or refraining from action in
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`reliance on the misrepresentation; (4) reasonable reliance on the misrepresentation; and (5)
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`damages proximately resulting from such reliance.”) “The ‘knowledge’ element is satisfied
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`where the applicant made material statements it knew or should have known were false.” Id.
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`(citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 31:61 (4th
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`ed. 2006)).
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`Unlike with respect to a claim for trademark infringement, as a form of fraud, plaintiffs
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`must state the circumstances constituting fraud in the procurement of a registered trademark with
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`particularity in accordance with Federal Rule of Civil Procedure 9(b). See San Juan Products,
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`Inc., 849 F.2d at 472 (citing 2 J. McCarthy, Trademarks and Unfair Competition § 31:21(D), at
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`616; and King Automotive, Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1010
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`(C.C.P.A.1981).); see also Oreck Corp. v. Thompson Consumer Electronics, Inc., 796 F.Supp.
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`1152, 1159 (S.D.Ind. 1992) (“Allegations of trademark fraud must be stated with particularity
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`. . . a general allegation of fraud without an accompanying recitation of details is insufficient.).
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`“A claim of fraud must also satisfy the particularity requirements set forth in Fed.R.Civ.P. 9(b),
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`mandating specifics about the time, the place, and content of the alleged false representations.’’
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`Woods v. Wells Fargo Bank, N.A., 733 F.3d 349, 358 (1st Cir. 2013) (internal citation omitted).
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`“Rule 9 imposes a heightened pleading requirement for allegations of fraud in order to give
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`notice to defendants of the plaintiffs' claim, to protect defendants whose reputation may be
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`harmed by meritless claims of fraud, to discourage “strike suits,” and to prevent the filing of suits
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`that simply hope to uncover relevant information during discovery.” Doyle v. Hasbro, Inc., 103
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`F.3d 186, 194 (1st Cir. 1996) (citing McGinty v. Beranger Volkswagen, Inc., 633 F.2d 226, 228–
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`29 & n. 2 (1st Cir.1980)).
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`Plaintiffs’ central allegations regarding this claim consist largely of the legal conclusions
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`that “defendant[] fraudulently registered the name ‘Pechu Sandwich’ as if it had been
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`[SARCO’s] creation without the plaintiff’s knowledge, consent or benefit” and that SARCO
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`“intentionally, willfully, fraudulently and maliciously procured the registration of [Mr. Colón’s]
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`creation in the [PTO] without his consent and proper compensation with the intent to injure
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`[p]laintiffs.” ECF No. 29, ¶ 25. These conclusory allegations do not suffice to state a claim for
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`fraud in the procurement under Rule 9(b), as they do not shed light on the circumstances
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`constituting fraud. While they make clear that Mr. Colón did not consent to SARCO’s
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`registration of the Pechu Sandwich trademark, it is not readily apparent how or why his
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`knowledge, consent, or benefit is relevant to any of the essential elements of a claim for fraud in
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`the procurement of a federal trademark.
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`The amended complaint is sufficiently specific with regard to the time of the false
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`representation, stating that SARCO filed an application with the PTO on October 4, 2005, and a
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`reasonable inference can be drawn that the location of the alleged false representation was on the
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`application SARCO submitted to the PTO. The allegations in the complaint are vague with
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`regard to the content of the alleged false representation; however, which presents an initial
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`problem under Rule 9(b). See Greebel v. FTP Software, Inc., 194 F.3d 185, 193 (1st Cir. 1999)
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`(citing McGinty v. Beranger Volkswagen, Inc., 633 F.2d 226, 228 (1st Cir.1980)) (“This circuit
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`has interpreted Rule 9(b) to require ‘specification of the time, place, and content of an alleged
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`false representation.’ Even where allegations are based on information and belief, supporting
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`facts on which the belief is founded must be set forth in the complaint.”); see also Woods, 733
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`F.3d at at 358 (“Although Woods’s complaint includes a basic recitation of the elements of
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`fraud, she does not indicate when, where, and how often the allegedly false states were made or
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`what, specifically, was stated.”). Plaintiffs’ most specific averment in furtherance of their claim
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`for fraud in the procurement is that the Pechu Sandwich was registered “as if it had been
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`SARCO’s creation . . . .” ECF No. 29, ¶ 25. It is ambiguous whether plaintiffs intend to assert
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`that SARCO affirmatively misrepresented who created the Pechu Sandwich, or whether the
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`misrepresentation consisted of an omission or implication that SARCO “created” the sandwich
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`by failing to inform the PTO that Mr. Colón had the ideas for the concept and name of the Pechu
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`Sandwich. Assuming for argument’s sake, however, that it can reasonably be inferred from
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`plaintiff’s allegations that SARCO knowingly made a false representation to the PTO in
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`asserting that SARCO, rather than Mr. Colón, created the concept and name for the Pechu
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`Sandwich, and that SARCO intended to induce the PTO into registering the trademark based on
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`its representations, the amended complaint nonetheless fails to meet the pleading standard for
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`fraud in the procurement.
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`The amended complaint’s greatest infirmity is with regard to the materiality of the
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`alleged misrepresentation. Plaintiffs simply do not allege that the creation of the sandwich was
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`material to the PTO or that the PTO relied on a representation that SARCO created the Pechu
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`Sandwich in registering the trademark, leading to SARCO’s procurement of the trademark. See
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`San Juan Products, Inc. v. San Juan Pools of Kansas, Inc., 849 F.2d 468, 473 (10th Cir. 1988)
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`(“The knowing misrepresentation must be material.”); Aveda Corp. v. Evita Mktg., Inc., 706 F.
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`Supp. 1419, 1426 (D. Minn. 1989) (“[T]he false statement is not material. Defendants do not in
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`any way suggest that the registration would have been denied had the true date of the first use
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`been provided on the application.”); see also Publications Intern. Ltd., v. Leapfrog Enterprises,
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`Inc., No. 01-C-3876, 2002 WL 31426652, *5 (N.D.Ill. Oct. 29, 2002) (finding that allegations
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`that registrant had knowledge of fraudulent representations to the PTO in registering a federal
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`trademark are insufficient to state a claim that it was fraudulently procured, and noting that “[a]s
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`the plain text of the statute suggests, it is the ‘procurement’ of the fraudulent registration that
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`triggers damages under § 38.”). Plaintiffs do not allege that the PTO would not have issued the
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`Pechu Sandwich trademark to SARCO had it been aware that the concept and name for the
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`sandwich were Mr. Colón’s creation.3 The complaint is silent with regard to whether the PTO
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`was “deceived into registering the mark” because of the alleged false representation or
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`“reasonably relied” on the same. Woods, 733 F.3d at 358 (“[T]he complaint is wholly silent on
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`the issue of her actual reliance. This vague pleading falls short of Rule 9(b)’s particularity
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`requirement.”).
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`This failure to aver that the PTO relied on Mr. Colón’s alleged misrepresentation is fatal
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`to plaintiff’s claim. As the First Circuit recently explained in Juárez v. Select Portfolio Servicing,
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`Inc., it is not enough that the allegations leave open the possibility that fraudulent representations
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`were relied upon to satisfy Rule 9(b),4 the compliant must actually allege reliance occurred to
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`meet the particularity requirement:
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`[I]t is possible that she relied upon defendants’ representations of
`ownership and that, if she had known about their alleged falsity,
`she would have acted to prevent the foreclosure. . . . But
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`3 Additionally, it is not apparent why the PTO would have relied on the alleged false representation in registering the
`trademark, as trademark rights do not derive from discovery or invention of the mark. See Carmichael v. Prime, IP
`02-0379-C-T/K, 2003 WL 1903355 (S.D. Ind. Jan. 6, 2003) (dismissing claim for fraud in the procurement of a
`federal trademark under Rule 9(b) due to alleged misrepresentation with regard to whether registrant had the
`exclusive rights to the trademark because “[t]he fact that Ms. Shea hatched the original idea for marketing perfume
`under the STARDUST name simply does not give her any rights to the trademark; only by actual usage—which
`Plaintiffs do not allege—do such rights accrue.”).
`4 Acknowledging that the underlying claim in Juárez was for fraud under Massachusetts law, the First Circuit’s
`expression in that case regarding Rule 9(b)’s particularity requirement is instructive in the case of caption, where the
`claim at hand also includes a reliance element. Id. at 279 (citing Doyle v. Hasbro, Inc., 103 F.3d 186, 193 (1st Cir.
`1996)) (“In order to state a claim for fraud under Massachusetts law, a complaint must plead: (1) that the statement
`was knowingly false; (2) that [defendants] made the false statement with the intent to deceive; (3) that the statement
`was material to the plaintiff’s decision . . . .; (4) that the plaintiffs reasonably relied on the statement; and (5) that the
`plaintiffs were injured as a result of their reliance.”).
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`establishing that something possibly happened is far distant from
`the threshold particularity requirements that must be pled under
`Fed.R.Civ.P 9(b). Much more would be required, for example, in
`the way of allegations regarding Juárez’s reliance on defendant’s
`allegedly false statements during the foreclosure proceedings. . . .
`Because the amended complaint is devoid of those specifics, we
`affirm the district court’s dismissal of the fraud claim. 708 F.3d
`269, 279-80 (1st Cir. 2013).
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`Like in Juárez, the amended complaint lacks particularity with regard to the specifics of the
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`PTO’s reliance on SARCO’s misrepresentation—in fact it does not assert that the PTO relied on
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`a misrepresentation by SARCO whatsoever. Therefore, taking as true that Mr. Colón created the
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`Pechu Sandwich, that he did not consent to SARCO’s registration of the Pechu Sandwich
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`trademark, that he never entered an agreement to transfer or assign his “rights” pertaining to his
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`invention and its trade name, and that SARCO registered the trademark as if it had been its own
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`creation, the amended complaint lacks a valid claim for relief under Section 38 of the Lanham
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`Act.5 Because plaintiffs do not satisfy the pleading standard for relief under 15 U.S.C. § 1120,
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`their claim for fraudulent trademark registration is dismissed, with prejudice.6
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`5 Assuming, arguendo, that plaintiffs did satisfy the reliance requirement of their claim for fraud in the procurement
`of a federal trademark registration, the amended complaint suffers from another infirmity under Rule 9(b), with
`respect to damages. The amended complaint states “[p]laintiffs have suffered damages as a result of the aforesaid
`acts.” ECF No. 29, ¶ 37. They do not, however, provide any elaboration with regard to the nature of the damages
`they sustained as a result of SARCO’s alleged fraudulent registration of the Pechu Sandwich trademark. Any injury
`plaintiffs might have sustained is speculative, as they do not allege that they are engaged in business such that
`SARCO’s registration of the trademark could impact their market share, sales, reputation, or goodwill, among other
`types of potential harm. While this may suffice for pleading other claims involving monetary damages, it is not
`enough under § 38. Compare Jackson v. Lynley Designs, Inc., F.Supp 498, 500 (E.D. La. 1990) (dismissing claim
`under § 38 of the Lanham act noting that plaintiff “is not engaged in a trade or business which might result in
`damage to good will. Nor has she attempted to commercially exploit her name in any fashion so that defendants’
`action has caused her to lose business. In short plaintiff simply has completely failed to explain how the alleged
`fraud has injured her.”); with Prof'l's Choice Sports Med. Products, Inc. v. Eurow & O'Reilly Corp., 13CV1484 AJB
`KSC, 2014 WL 524007 (S.D. Cal. Feb. 10, 2014) (“Plaintiff alleges damages, in terms of lost market share, sales
`decline, and damage to reputation, caused by the assertion or use of the fraudulently procured registration.”); and
`Santander Consumer USA v. Walsh, 762 F.Supp.2d 217 (D.Mass 2010) (“The temporal connection with the
`fraudulent registrations and the resulting damage to defendants’ reputations and loss of investors is not speculative.
`Defendants adequately allege an actual injury to their reputations and, drawing reasonable inferences in defendants’
`favor, their good will.”); see also Woods, 733 F.3d at 358 (noting “[plaintiff] also fails to state the specific nature of
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`2.
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`The Copyright Act
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`The amended complaint does not specifically plead a claim under, or cite to, the U.S.
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`Copyright Act, 17 U.S.C. §§ 101 et seq. (the “Copyright Act”). ECF No. 26. However, plaintiffs
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`largely base their response in opposition on the Copyright Act, arguing that plaintiff invented
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`and created the concept for a new chicken sandwich, authored its name, and that it is a “work”
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`entitled to copyright protection. ECF No. 34, at 6-11. SARCO responds that the amended
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`complaint does not include any copyright infringement claims, and that even if plaintiffs are
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`permitted to raise a copyright infringement claim at this stage in the proceeding, the amended
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`complaint fails to state a valid claim under the Copyright Act. ECF No. 37, at 2. Plaintiff points
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`out that the amended complaint does reference copyright law, stating: “Defendants’ acts have
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`been committed in the District Court of Puerto Rico, within the jurisdiction of this Court, and the
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`pecuniary rights of the work are obtained by the Copyright Law . . . .” ECF No. 29, ¶ 31. To the
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`extent that plaintiffs are warranted in pursuing a claim under the Copyright Act based on this
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`reference to copyright law in the amended complaint, that claim is nonetheless dismissed under
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`Rule 12(b)(6).
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`According to § 102(a) of the Copyright Act:
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`Copyright protection subsists, in accordance with this title, in
`original works of authorship fixed in any tangible medium of
`expression, now known or later developed, from which they can be
`perceived, reproduced, or otherwise communicated, either directly
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`the harm, indicating only that it was of a monetary nature” in finding that allegations did not satisfy Rule 9(b)’s
`particularity requirement).
`6 Defendant also argues in the alternative that plaintiff’s Lanham Act claims should be dismissed as untimely under
`the doctrine of laches. Although the court need not reach the merits of this argument, it is clear that plaintiffs waited
`a great deal of time to file this claim. Accordingly to plaintiffs’ own allegations, Mr. Colón came up with the idea
`for the Pechu Sandwich in 1991, and SARCO registered the trademark in 2006. The complaint is silent with regard
`to when plaintiffs learned of SARCO’s application to register the trademark, but around six years went by between
`the alleged registration and the filing of the original complaint in this case.
`
`
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`12
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`Case 3:12-cv-01794-MEL Document 50 Filed 05/06/14 Page 13 of 15
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`or with the aid of a machine or device. Works of authorship
`include the following categories: (1) literary works; (2) musical
`works, including any accompanying words; (3) dramatic works,
`including any accompanying music;
`(4) pantomimes and
`choreographic works; (5) pictorial graphic, and sculptural works;
`(6) motion pictures and other audiovisual works; (7) sound
`recordings; and (8) architectural works. 17 U.S.C. § 102(a).
`
`However, the Copyright Act specifically declines to extend protection to works that merely
`
`constitute ideas, procedures, processes, methods of operations, or discoveries. Id. at § 102(b).
`
`Further, the Register of Copyrights provides a list of works that may not be subject to copyright
`
`protection, among which it includes “mere listing of ingredients or contents.” 37 C.F.R.
`
`§ 202.1(a) (2014).
`
`
`
`Neither plaintiff’s idea for the chicken sandwich recipe or the name “Pechu Sandwich” is
`
`subject to copyright protection. First, the recipe itself and the concept for the chicken sandwich
`
`are ineligible for copyright protection. See Lambing v. Godiva Chocolatier, 142 F.3d 434, 434
`
`(6th Cir. 1998) (citing Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 480-81 (7th Cir.
`
`1996)) (“Recipes, however, are not copyrightable. . . . The identification of ingredients necessary
`
`for the preparation of food is a statement of facts. There is no expressive element deserving
`
`copyright protection in each list. . . . Thus, recipes are functional directions for achieving a result
`
`and are excluded from copyright protection under 17 U.S.C. § 102(b).”). Furthermore, the idea
`
`for serving a chicken sandwich at a fast-food restaurant chain is also beyond the scope of
`
`protection under the Copyright Act. See e.g., Vásquez v. Ybarra, 150 F. Supp. 2d 1157, 1168
`
`(D. Kan. 2001) (“[T]he ‘idea’ of serving, at a Mexican theme restaurant, three tacos along with a
`
`side of rice and beans, is not copyrightable. . . . It is undebateable that defendant is allowed to
`
`serve three meat tacos on the same plate as a serving of rice and beans.”); see also Parham v.
`
`
`
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`Case 3:12-cv-01794-MEL Document 50 Filed 05/06/14 Page 14 of 15
`
`Pepsico, Inc., 927 F.Supp. 177, 179 (E.D.N.C. 1995) (“The mere idea for a clear soft drink
`
`cannot be the subject of copyright protection.”). Finally, taking Mr. Colón’s allegation that he
`
`created the expression “Pechu Sandwich” as true, the name of the sandwich itself does not
`
`warrant copyright protection. See CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d
`
`1504, 1519 (1st Cir. 1996) (“It is axiomatic that copyright law denies protection to ‘fragmentary
`
`words and phrases’ . . . ”); and Lewison v. Holt, 659 F.Supp. 547, 568 (S.D.N.Y 2009) (“[I]t is
`
`axiomatic that words, short phrases, titles, and slogans are not subject to copyright, even if they
`
`can be trademarked.”); see also 37 C.F.R. § 202.1(a) (2014) (excluding from copyright
`
`protection “[w]ords and short phrases such as names, titles, and slogans”). Overall, to the extent
`
`that the amended complaint can be read to raise a claim under the Copyright Act, the same is
`
`dismissed with prejudice.
`
`3.
`
`Supplemental Law Claims
`
`Federal courts may decline to exercise supplemental jurisdiction over a plaintiff’s state
`
`law claims when the federal claims that gave it original jurisdiction are dismissed. See 28 U.S.C.
`
`§ 1367(c)(3); González-De-Blasini v. Family Dept., 377 F.3d 81, 89 (1st Cir. 2004); Camelio v.
`
`Am. Fed’n, 137 F.3d 666, 672 (1st Cir. 1998). If all federal claims are dismissed prior to trial,
`
`then the state law claims “‘should be dismissed as well.’” Rodríguez v. Doral Mortg. Corp., 57
`
`F.3d 1168, 1177 (1st Cir. 1995) (quoting United Mine Workers of Am. v. Gibbs, 383 U.S. 715,
`
`726 (1966)). Since no federal cause of action would remain in this case, the Law 169 and Article
`
`
`
`14
`
`1802 are dismissed without prejudice.
`
`
`
`
`
`Case 3:12-cv-01794-MEL Document 50 Filed 05/06/14 Page 15 of 15
`
`V.
`
`CONCLUSION
`
`For the reasons above, SARCO’s motion to dismiss (ECF No. 31) is GRANTED.
`
`Plaintiffs’ claims under the Lanham Act and the Copyright Act are DISMISSED WITH
`
`PREJUDICE and their claims under Law 169 and Article 1802 are DISMISSED WITHOUT
`
`PREJUDICE.
`
`IT IS SO ORDERED
`
`
`
`In San Juan, Puerto Rico, this 6th day of May, 2014.
`
`s/Marcos E. López
`U.S. Magistrate Judge
`
`
`
`
`
`15