# DELLAMORTE, LLC v. THE MICHAELS COMPANIES, INC.

> District Court, D. New Jersey · January 27, 2022

URL: https://www.frixlaw.com/law-library/cases/10272594

## Case

- **Court:** District Court, D. New Jersey
- **Decided:** January 27, 2022
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

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- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10272594

## How later opinions describe it (automated extraction)

- finding a plaintiff pleaded reasonable access by establishing that the publication at issue was available in bookstores

## Opinion text

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
DELLAMORTE, LLC, Civil Action No.: 21-cv-2029

Plaintiff,
OPINION
v.

THE MICHAELS COMPANIES, INC.,
Defendant.

CECCHI, District Judge.
I. INTRODUCTION
This matter comes before the Court by way of defendant The Michaels Companies, Inc.’s
(“Defendant”) motion to dismiss plaintiff Dellamorte, LLC’s (“Plaintiff”) First Amended
Complaint, pursuant to Federal Rule of Civil Procedure 12(b)(6). ECF No. 20. Plaintiff opposed
the motion (ECF No. 23), and Defendant replied (ECF No. 24). The Court decides this matter
without oral argument pursuant to Fed. R. Civ. P. 78. For the reasons set forth below,
Defendant’s motion to dismiss is denied.
II. BACKGROUND1
This case concerns an alleged instance of copyright infringement; specifically,
Defendant’s appropriation of Plaintiff’s Vampire Bat Mug. Michael Locascio (“Locascio”), the
individual behind the corporate entity Plaintiff, is an artist and sculptor known for designing and
creating lifelike pieces that “reflect an appreciation for the macabre, the mythic, and the
unusual.” ECF No. 18 (“Am. Compl.”) at ¶¶ 6–7, 9, 12. Locascio advertises and sells his art
through Plaintiff. Id. at ¶ 11.
One of Lacascio’s original pieces is his Vampire Bat Mug, a black drinking vessel

1 The following facts are accepted as true for purposes of the motion to dismiss.
adorned with a three-dimensional sculpture of a silver bat oriented towards the viewer with its
wings raised, a waxing crescent moon, and a decorative handle fashioned to look like an
archway. Id. at ¶¶ 13, 41. Locascio allegedly received a copyright for this creation on June 27,
2017. Id. at ¶¶ 17–18; see also ECF No. 10-1 (“Exhibit A”). After receiving the copyright for his

Vampire Bat Mug, Lacascio assigned all rights to the copyright to Plaintiff. Am. Compl. at ¶ 19.
Plaintiff manufactures the Vampire Bat Mug, advertises the Vampire Bat Mug on the internet
and social media platforms, including Facebook, Pinterest, Instagram, and Tumblr, and sells the
Vampire Bat Mug through retailers such as Etsy, eBay, and Amazon. Id. at ¶¶ 20, 22, 24–25.
Plaintiff alleges that his social media accounts reach at least 30,000 individuals and that his art is
noticed around the world, in particular by “designers and advertisers based in China.” Id. at
¶¶ 22–23.
Plaintiff alleges that before August 2019, Defendant began selling a vase decorated with
a “bat design copied from [Plaintiff’s] Vampire Bat Mug,” and trademarked with a mark,
Ashland®, owned by Defendant. Id. at ¶¶ 29, 33. Plaintiff’s customers allegedly notified Plaintiff

through social media and reviews left on Defendant’s website that Defendant had “ripped off,”
“stolen,” or “cop[ied]” Plaintiff’s Vampire Bat Mug by selling the vase. Id. at ¶¶ 36–37.
Thereafter, Plaintiff alleges that, on October 8, 2019, it sent a letter to Defendant
identifying Plaintiff’s copyright in the Vampire Bat Mug. Id. at ¶ 40. The letter allegedly also
requested that Defendant cease and desist from selling its vase and offered to discuss a possible
licensing agreement between the parties. Id. at ¶ 42. Plaintiff further alleges that, on October 25,
2019, it sent Defendant a second letter, asking for a response to the October 8th letter and
claiming that the vase continued to be sold in Defendant’s New Jersey stores. Id. Defendant
allegedly replied on November 13, 2019, asserting it purchased the vase from a Chinese vendor
who had no knowledge of the Vampire Bat Mug and that, in any event, the vase did not infringe
upon Plaintiff’s copyright. Id. at ¶¶ 43–45.
Plaintiff commenced this action on February 7, 2021 (ECF No. 1), and filed a First
Amended Complaint on June 2, 2021, alleging one claim for copyright infringement pursuant to

17 U.S.C. § 101 et seq. (ECF No. 18). Defendant filed this motion to dismiss Plaintiff’s claim on
July 2, 2021 (ECF No. 20). Plaintiff opposed the motion (ECF No. 23), to which Defendant
replied (ECF No. 24).
III. LEGAL STANDARD
To survive dismissal under Federal Rule of Civil Procedure 12(b)(6), “a complaint must
contain sufficient factual matter . . . to ‘state a claim to relief that is plausible on its face.’”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citations omitted). A claim is facially plausible
when supported by “factual content that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.” Id. A complaint that contains “a formulaic
recitation of the elements of a cause of action” supported by mere conclusory statements or

offers “‘naked assertion[s]’ devoid of ‘further factual enhancement’” will not suffice. Id.
(alteration in original) (citation omitted). In evaluating the sufficiency of a complaint, the court
accepts all factual allegations as true, draws all reasonable inferences in favor of the non-moving
party, and disregards legal conclusions. See Phillips v. Cnty. of Allegheny, 515 F.3d 224, 231–34
(3d Cir. 2008).
When considering a copyright infringement claim on a motion to dismiss, courts may
consider evidence extrinsic to the complaint that is integral to the suit—namely, the copyrighted
and allegedly infringing works. Tanksley v. Daniels, 902 F.3d 165, 172 (3d Cir. 2018) (citing In
Re Rockefeller Ctr. Props., Inc. Sec. Litig., 184 F.3d 280, 287 (3d Cir. 1999)). Because all that is
required to evaluate a copyright infringement claim is the visual comparison of the relevant
works, no discovery is necessary, and, accordingly, a court may decide copyright claims at the
pleading stage. Nicassio v. Viacom Int’l, Inc., 776 F. App’x 761, 764–65 (3d Cir. 2019) (citing
Tanksley, 902 F.3d at 172). A court will dismiss a copyright infringement claim if it concludes

that “no trier of fact could rationally determine the two [works] to be [substantially] similar.”
Cianelli v. Nourison Indus., Inc., et al., No. 19-cv-19147, 2020 WL 4882500, at *5 (D.N.J. Aug.
20, 2020) (quoting Tanksley, 902 F.3d at 172) (first alteration in original).
IV. DISCUSSION
Defendant argues that no copyright infringement occurred because there is no substantial
similarity between the protectable elements of the Vampire Bat Mug and Defendant’s vase. ECF
No. 20 (“Moving Br.”) at 1. Further, even if substantial similarity exists between the works,
Defendant argues that Plaintiff has inadequately alleged that Defendant actually copied the
Vampire Bat Mug, or directed its vendor in China, who made the vase, to copy the Vampire Bat
Mug. Id. However, as explained further below, after viewing images of both the Vampire Bat

Mug and the vase (see Am. Compl. at ¶¶ 13, 41; Moving Br. at 5–6), and considering the
submissions of both parties, the Court finds that Plaintiff has sufficiently pleaded a copyright
infringement claim.
To establish a copyright infringement claim, a plaintiff must adequately allege: “(1)
ownership of a valid copyright; and (2) unauthorized copying of original elements of the
plaintiff’s work.” Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d
197, 206 (3d Cir. 2002). As to the first element, the parties do not dispute that Plaintiff is the
owner of the Vampire Bat Mug’s valid copyright. See, e.g., Moving Br. at 6; Am. Compl. at
¶¶ 17–18. The Court also notes that attaching a copy of the copyright registration to the
complaint is prima facie evidence that a plaintiff is the owner of a valid copyright. See Browne v.
Zaslow, 103 F. Supp. 3d 666, 671 (E.D. Pa. 2015). Plaintiff has done so here (see Exhibit A) and
thus has alleged facts sufficient to satisfy element one of a copyright infringement claim.
Turning to the second element, to sufficiently plead unauthorized copying, a plaintiff

must establish: (1) material appropriation of the copyrighted work and (2) actual copying. See
Tanksley, 902 F.3d at 173. The Court considers these components in turn.
Material Appropriation
To determine if material appropriation of the copyrighted work has occurred, a court
must assess whether the alleged copying has resulted in substantial similarity between the
plaintiff’s work and the defendant’s work. See Purohit v. Legend Pictures, LLC, 448 F. Supp. 3d
382, 386 (D. Del. 2020). Works are substantially similar if “a ‘lay-observer’ would believe that
the copying was of protectible aspects of the copyrighted work.” Tanksley, 902 F.3d at 174
(quoting Dam Things from Den. v. Russ Berrie & Co., 290 F.3d 548, 562 (3d Cir. 2002)). In
conducting this inquiry, a court must perform “a side-by-side comparison of the works, and

excluding any unprotectable elements, assess whether the two works are substantially similar.”
Id. (citing Dam Things from Den., 290 F.3d at 566). When performing this side-by-side
comparison, “the first step is to identify and exclude from the substantial similarity analysis any
unprotected material.” Id. at 175.
1. Unprotected Elements
The Court begins its analysis by determining which elements, if any, of the Vampire Bat
Mug are unprotected. Defendant argues that the Vampire Bat Mug contains two unprotected
elements: (1) the utilitarian aspects of the mug, and (2) the colors and the crescent moon as they
are part of the general Halloween-related theme of the mug. Moving Br. at 12.
A useful article is one that has “an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information,” and may not receive copyright
protection. Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007 (2017) (citation
omitted). However, “useful articles that ‘incorporate[] pictorial, graphic, or sculptural features

that can be identified separately from, and are capable of existing independently of, the utilitarian
aspects of the article’ may be eligible for protection of those features alone.” Silvertop Assocs.
Inc. v. Kangaroo Mfg. Inc., 931 F.3d 215, 219 (3d Cir. 2019) (citations omitted). A feature of a
useful article is copyrightable if: (1) the feature can be “perceived as a two- or three- dimensional
work of art separate from the useful article” and (2) the feature qualifies “as a protectable
pictorial, graphic, or sculptural work either on its own or in some other medium if imagined
separately from the useful article.” Id. at 219–20 (quoting Star Athletica, 137 S. Ct. at 1016).
Here, the Vampire Bat Mug contains a utilitarian feature—Plaintiff describes its work as
a mug. See generally Am. Compl. Indeed, the parties do not dispute that the work’s cylindrical
structure, closed at one end, but open at the other and otherwise hollow, performs a utilitarian

function, and is thus not protected by copyright. Moving Br. at 12–13; ECF No. 23 (“Opp.”) at
11. Remaining, however, are the bat sculpture, moon, and handle. The Supreme Court’s analysis
in Star Athletica, LLC v. Varsity Brands, Inc. is instructive in determining whether these
elements are protectable. There, the Court protected a two-dimensional design printed on a
cheerleading uniform. Star Athletica, 137 S. Ct. at 1016. The Court reasoned that the design
could be separated from the useful article (the cheerleading uniform) without simply replicating
the article. Id. at 1012–13. Further, once separated, the design was protectable because it could
be imagined existing in some other medium, like on a canvas. Id. Similarly, the Third Circuit in
Silvertop Assocs. Inc., v. Kangaroo Mfg., Inc., following Star Athletica, determined that a banana
costume constituted both a useful article (the costume as an article of clothing,) and a work of
sculpture separate from the useful article (the costume’s banana design). Silvertop Assocs., Inc.,
931 F.3d at 219–221. The Third Circuit held that the banana design was a protectable work of art
because “once split from the costume, [the sculptural design] is not intrinsically utilitarian and

does not merely replicate the costume.” Id. at 221.
Applying this reasoning to the Vampire Bat Mug, the Court perceives the bat sculpture,
the waxing moon, and arch handle as a work separate from the useful article, the mug.2
Moreover, these elements are protectable because they could exist on their own as sculptural
works, or could be affixed to a different non-useful medium. See Day To Day Imports, Inc. v. FH
Group Int’l, Inc., No. 18-14105, 2019 WL 2754996, at *5 (D.N.J. July 2, 2019) (finding that car
seat covers are useful articles, but a two-dimensional design incorporated in the covers was
protectable as it could exist in a different medium). In either case, the sculptures are not
inherently utilitarian as the mug can perform its useful function with or without the sculptural
features affixed to its exterior, and the sculptures do not replicate the utilitarian features of the

mug. Silvertop Assocs., Inc., 931 F.3d at 221; see also Day To Day Imports, Inc., 2019 WL
2754996, at *5–*6 (finding that the design elements of car seat covers “add nothing to the
utilitarian function” of the seat covers). Accordingly, only the cylindrical structure is a useful
article, and is thus an unprotected element.
Defendant further argues that the black and silver coloring of the Vampire Bat Mug as
well as the crescent moon constitute unprotected elements because they are components common
to a Halloween-related theme. Moving Br. at 14–15. “[A] copyright only protects the holder’s

2 The Court notes that Defendant concedes the handle is a protectable element but argues that
such concession should not lead the Court to find copyright infringement because the vase has no
handle. Moving Br. at 14.
particular creative expression, not his ideas.” Tanksley, 902 F.3d at 174. Accordingly, an
individual does not receive copyright protection for those expressions “that are standard, stock,
or common to a particular topic or that necessarily follow from a common theme or setting.”
Dun & Bradstreet Software Servs., Inc., 307 F.3d at 214. Nevertheless, a combination of

unprotected elements may be protected by copyright because “[w]hat is protectable . . . is ‘the
author’s original contributions’—the original way in which the author has ‘selected, coordinated,
and arranged’ the elements of his or her work.” Tanksley, 902 F.3d at 175 (citations omitted).
Here, while silver and black coloring or a moon may not be independently protectable
because they could flow from a common theme, Plaintiff chose to combine these specific
components in creative and expressive ways to create the encompassing work of a “macabre”
sculpture adorned on a mug. Am. Compl. at ¶¶ 15–16. Even if Plaintiff’s choice of coloring the
bat silver and orienting the animal below a crescent moon constitutes minimal creativity, the
resulting combination still warrants copyright protection. See Kay Berry, Inc. v. Taylor Gifts,
Inc., 421 F.3d 199, 207 (3d Cir. 2005) ((finding that when an artist combines unprotected

elements and adds “his or her own imaginative spark . . . the [artist] is entitled to protection for
the result” even if the contribution is only minimal) (citing Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 345, 348 (1991))). Accordingly, considering the work in its entirety,
Plaintiff’s choice of colors and the crescent moon are not excluded from the substantial similarity
analysis. See Tanksley, 902 F.3d at 175 (suggesting that courts should “keep[] sight of the work’s
total concept and feel”).
2. Substantial Similarity
After identifying the unprotected element of the work—the cylindrical structure of the
Vampire Bat Mug—the Court must now determine whether there is substantial similarity
between the remaining, protectable portions of Plaintiff’s work and the Defendant’s vase. As
stated above, two works are substantially similar if “a ‘lay-observer’ would believe that the
copying was of protectible aspects of the copyrighted work.” Id. at 174 (quoting Dam Things
from Den. v. Russ Berrie & Co., 290 F.3d 548, 562 (3d Cir. 2002)).

Here, the Court has conducted a side-by-side comparison of the works, and it determines
that the Vampire Bat Mug and the vase are substantially similar. Day To Day Imports, Inc., 2019
WL 2754996, at *5–*6. Both works contain a silver sculpture of a bat protruding from a black
cylinder towards the viewer with its wings in a raised position. Am. Compl. at ¶¶ 13, 41; Moving
Br. at 5–6. Each bat is cropped at the torso and is bearing its teeth in a menacing fashion. Id.
Further, both works display vertical etchings on the wings, and etchings on the torso to evoke
rippling fur. Id. Placed immediately above the heads and between the wings of the bats in both
works is a silver crescent moon. Id. The sculptures also appear to be approximately the same
size. Id. Thus, it is plausible that a lay observer would believe that Defendant’s vase copied the
protected elements of Plaintiff’s Vampire Bat Mug.

Indeed, Plaintiff has alleged that lay observers believed that Defendant copied Plaintiff’s
work. Specifically, Plaintiff alleges that, after seeing Defendant’s vase on sale in stores,
customers contacted Plaintiff to ask whether its “idea was stolen” by Defendant, “the sculpture
was ripped off” by Defendant, or if Defendant “had licensed [Plaintiff’s] work.” Am. Compl. at ¶
37. Some customers also allegedly described the vase as “clearly a copy” and “exactly the same”
as the Vampire Bat Mug (Id.), while others allegedly commented on the works’ similarity in the
review section of Defendant’s website. Id. at ¶¶ 38–39. Accordingly, Plaintiff has adequately
pleaded substantial similarity.
Actual Copying
Turning to the next factor of actual copying, it occurs when the defendant uses “the
copyrighted work in creating his own.” Tanksley, 902 F.3d 173. Actual copying need not be
proved by direct evidence; instead, indirect evidence can suffice. Id. To establish actual copying
by indirect evidence, a plaintiff must show: (1) that the defendant could reasonably access the

copyrighted work, Cottrill v. Spears, 87 F. App’x 803, 805 (3d Cir. 2005), as amended on reh’g
(June 2, 2004) (citing Dam Things From Denmark, 290 F.3d at 561), and (2) that there is a
“probative similarity” between the plaintiff’s work and the defendant’s work.3 Tanksley, 902
F.3d at 173.
Here, Plaintiff alleges facts sufficient to establish that Defendant could reasonably access
the Vampire Bat Mug. Specifically, Plaintiff alleges that it advertises its products, including the
Vampire Bat Mug, on various social media platforms, such as Facebook, Pinterest, Instagram,
and Tumblr. Am. Compl. at ¶ 22. Through these social media accounts, Plaintiff has allegedly
reached at least 30,000 followers. Id. In addition to its social media presence, Plaintiff alleges it
advertises the Vampire Bat Mug on the internet more generally, and sells it through online

retailers, including Etsy, eBay, and Amazon. Id. at ¶ 25. Plaintiff’s reach over the internet
allegedly extends to customers all over the world, in particular customers in China, where
designers and advertisers have purportedly seen the Vampire Bat Mug. Id. at 23. These
allegations are sufficient to show that Defendant could have reasonably accessed Plaintiff’s
work. See Prokos v. Covered Wagon Invs. Inc., No. 19-cv-8493, 2020 WL 1433132, at *3 (C.D.

3 The Third Circuit has noted that “probative similarity” is a less onerous standard than the
substantial similarity standard required to establish material appropriation. Tanksley, 902 F.3d at
173. In assessing probative similarity, courts may consider both protected and unprotected
elements of the copyrighted work. Id. In any event, because the Court has determined the works
at issue here are substantially similar, the Court finds that Plaintiff has also met actual copying’s
probative similarity requirement. Thus, the Court focuses its actual copying inquiry into whether
Defendant had reasonable access to the Vampire Bat Mug.
Cal. Mar. 23, 2020) (finding allegations that the photograph at issue was on plaintiff’s website,
social media sites, and third-party websites such as Tumblr and Pinterest satisfied the reasonable
access requirement); Kelly Tracht, LLC v. Dazzle Up, LLC, No. 17-80434, 2017 WL 4681329, at
*3 (S.D. Fla. Oct. 18, 2017) (finding plaintiff established reasonable access by alleging that the

work at issue was sold and marketed on websites such as Etsy, Facebook, and Pinterest as well
as trade group websites); F.A. Davis Co. v. Wolters Kluwer Health, Inc., 413 F. Supp. 2d 507,
513 n.2 (E.D. Pa. 2005) (finding a plaintiff pleaded reasonable access by establishing that the
publication at issue was available in bookstores). Accordingly, Plaintiff has sufficiently pleaded
actual copying.
V. CONCLUSION
For the reasons set forth above, Defendant’s motion to dismiss is denied. An appropriate
Order accompanies this Opinion.
DATED: January 27, 2022

s/ Claire C. Cecchi
CLAIRE C. CECCHI, U.S.D.J.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10272594. Public record. Not legal advice.