Vacchi v. E* Trade Financial Corporation

Filing 22

OPINION AND ORDER.....E*Trades June 24, 2019 motion to dismiss is granted. The Clerk of Court shall close this case. (Signed by Judge Denise L. Cote on 9/13/2019) (gr)

Case 1:19-cv-03505-DLC Document 22 Filed 09/13/19 Page 1 of 19

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------X
:
GIANLUCA VACCHI,
:
:
Plaintiff,
:
:
-v:
:
E*TRADE FINANCIAL CORPORATION,
:
:
Defendant.
:
:
---------------------------------------X
APPEARANCES:

19cv3505 (DLC)
OPINION AND ORDER

For plaintiff:
Christopher Philip Milazzo
Carmel, Milazzo & DiChiara LLP
55 West 39th Street 18th Floor
New York, NY 10018
[phone]
For defendant:
Adam Michael Lazier
Marcia Beth Paul
Davis Wright Tremaine LLP (NYC)
1251 Avenue of the Americas
New York, NY 10020
[phone]
DENISE COTE, District Judge:
Defendant E*TRADE Financial Corporation (“E*Trade”) has
moved pursuant to Rule 12(b)(6), Fed. R. Civ. P., to dismiss
Gianluca Vacchi’s (“Vacchi”) copyright, trademark, and privacy
law claims against it.

E*Trade’s motion to dismiss is granted.

Case 1:19-cv-03505-DLC Document 22 Filed 09/13/19 Page 2 of 19

BACKGROUND
Unless otherwise noted, the following facts are taken from
the complaint and assumed to be true for the purpose of
addressing this motion.
Milan, Italy.

Vacchi is an entrepreneur who lives in

He is the president of a large Italian

manufacturing company.
Vacchi also has a significant social media presence.

More

than 11.9 million people follow Vacchi’s Instagram page, and
more than 1.77 million people follow his Facebook page.

He uses

Instagram and Facebook as platforms upon which to post videos,
pictures, and musical clips that he produces.
Vacchi alleges that his media postings feature a character
of Vacchi’s “own creation.”

The character is played by Vacchi,

uses Vacchi’s name, and has traits based on Vacchi’s
personality.

Nonetheless, the character that appears in

Vacchi’s social media is one that Vacchi has “authored and
created.”

The character is separate and apart from the man,

Gianluca Vacchi.
As alleged, the character created by Vacchi is “an
extravagant millionaire dancing with beautiful ladies in exotic
locations.”

He is “a successful daring business person who is

capable of doing things his own way.”

He is “tired of his

business routine [and] decides to dedicate his life to music,
dancing, and an opulent lifestyle.”
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Vacchi has registered five videos with the United States
Copyright Office (the “Registered Videos”).
the above-described character.

They all feature

As seen in the Registered

Videos, this character has distinctive physical features. 1

He is

an older gentleman with short white/gray hair and square-shaped
glasses.

He has a neatly trimmed, salt-and-pepper beard, which,

in four of the five videos, is tied into a knot beneath his
chin.

In each of the Registered Videos, he is topless, at least

for a portion of the video.

He is in prime physical shape, and

his body is covered in tattoos.
to be script writing.

The tattoos on his torso appear

In four of the five videos, he wears

shorts or swimming trunks, with the left leg of the garment
rolled up.

Also in four videos, he wears a cuff around his left

ankle, and metal cuffs around both of his wrists.
In the Registered Videos, Vacchi’s character DJ’s or dances
to music with younger, bikini clad-women on a boat or, in one
case, by a pool.

The videos last from thirty-five seconds to

one minute, and they have neither text nor dialogue.

In three

of the videos, Vacchi’s character performs a choreographed dance
with a younger woman.

At times, they face each other and dance

in sync.

1

The descriptions of the Registered Videos are the Court’s.
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In 2007, E*Trade released two professionally-shot
commercials (the “E*Trade commercials”). 2

In one commercial,

entitled Hard Work, an older gentleman appears on a boat.

The

man has a neatly trimmed, salt-and-pepper beard and squareshaped glasses.

His tattooed torso is exposed beneath

suspenders, although he lacks the muscle definition of Vacchi’s
character.

He is wearing long striped pants.

The first two

seconds of Hard Work show the man dancing to music.

For two

more seconds, the shot is of a younger, taller woman in a onepiece bathing suit, also dancing to music.

For another two

seconds, the man and woman dance together, face-to-face.

For

the last nine seconds of the commercial, the screen goes white,
and black text appears with the words, “The harder you work the
nicer the vacation . . . your boss goes on,” followed by the
slogan, “Don’t get mad . . . get E*TRADE.”
In the second commercial, which runs for 30 seconds and is
entitled Yacht Life, the man from Hard Work makes a brief
appearance.

The commercial opens with a shot of two

paddleboarders that are passed by a yacht.

The frame quickly

shifts to the yacht, where a young man is dancing.

The camera

follows the young man throughout the boat, until he arrives at a
dance party on the bow.

2

Among young men and young women who are

The descriptions of the E*Trade commercials are the Court’s.
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dancing in the background, is the older man from Hard Work.
is on screen for no longer than four seconds.

He

White text

appears that says “The dumbest guy in high school just got a
boat.”

The video resumes with the young man jumping off the

boat, and the appearance of text that says “Don’t get mad . . .
get E*TRADE.”
On April 19, 2019, Vacchi initiated the instant action.

In

his complaint, Vacchi alleges that the E*Trade commercials
infringe his copyright in the Registered Videos, the character
that appears in these videos, and certain other works that are
not registered with the United States Copyright Office (the
“Unregistered Works”).

Vacchi also pleads trademark

infringement claims under § 43(a) of the Lanham Act and state
privacy law claims under § 51 of the New York Civil Rights Law.
On June 24, E*Trade filed a motion to dismiss.

The motion was

fully submitted on August 9. 3
DISCUSSION
“To survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to state a claim to
relief that is plausible on its face.”

Geffner v. Coca-Cola

Co., 928 F.3d 198, 199 (2d Cir. 2019) (citation omitted).

“A

Vacchi does not oppose dismissal of his copyright infringement
claims as to the Unregistered Works. He also does not oppose
dismissal of his state law claim on statute-of-limitation
grounds. Dismissal of these claims is therefore granted.
3

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claim has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged.”
Charles v. Orange County, 925 F.3d 73, 81 (2d Cir. 2019)
(citation omitted).

“Threadbare recitals of the elements of a

cause of action, supported by mere conclusory statements, do not
suffice.”

Empire Merchants, LLC v. Reliable Churchill LLLP, 902

F.3d 132, 139 (2d Cir. 2018).

The plaintiff must plead enough

facts to “nudge[] [his] claims across the line from conceivable
to plausible . . . .”

Bell Atlantic Corp. v. Twombly, 550 U.S.

544, 570 (2007).
When a party moves to dismiss for failure to state a claim
upon which relief can be granted under Rule 12(b)(6), Fed. R.
Civ. P., a court must “constru[e] the complaint liberally,
accept[] all factual allegations as true, and draw[] all
reasonable inferences in the plaintiff’s favor.”

Coalition for

Competitive Electricity, Dynergy Inc. v. Zibelman, 906 F.3d 41,
48-49 (2d Cir. 2018) (citation omitted).

“A complaint is . . .

deemed to include any written instrument attached to it as an
exhibit, materials incorporated in it by reference, and
documents that, although not incorporated by reference, are
‘integral’ to the complaint.”

Sierra Club v. Con-Strux, LLC,

911 F.3d 85, 88 (2d Cir. 2018) (citation omitted).

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I.

Copyright Infringement
E*Trade moves to dismiss Vacchi’s claims that its

commercials infringe his copyright in the Registered Videos and
the character that appears therein.

To establish “copyright

infringement, a plaintiff must allege both (1) ownership of a
valid copyright and (2) infringement of the copyright by the
defendant.”

Spinelli v. Nat’l Football League, 903 F.3d 185,

197 (2d Cir. 2018) (citation omitted). 4
Registration with the United States Copyright Office is
prima facie evidence of ownership of a valid copyright, the
first element of copyright infringement.

Scholz Design, Inc. v.

Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012).
E*Trade does not dispute that Vacchi holds valid copyright
registrations in the Registered Videos.
To satisfy the second element of an infringement claim, a
plaintiff must show both that his work was actually copied and
that copying was wrongful.

Jorgensen v. Epic/Sony Records, 351

F.3d 46, 51 (2d Cir. 2003) (citation omitted).

Copying may be

established by indirect evidence, including access to the
original work.

Id.

E*Trade does not dispute that it had access

Section 411(a) of the Copyright Act of 1976 prohibits the
filing of an “action for infringement of the copyright in any
United States . . . until preregistration or registration of the
copyright claim has been made.” 17 U.S.C. § 411(a).
4

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to the Registered Videos, so copying is assumed for purposes of
this Opinion.
To establish wrongful copying, a plaintiff must show a
“substantial similarity” between the defendant’s work and
protectible elements of his own work.
273 F.3d 262, 268 (2d Cir. 2001).

Boisson v. Banian, Ltd.,

“When an original work

contains many unprotected elements, . . . a close similarity
between it and a copy may prove only copying, not wrongful
copying.”

Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95,

101 (2d Cir. 2014).

“This is because the similarity may derive

only from these unprotected elements.”

Id.

It is fundamental to copyright law that protection is only
afforded to “‘original works of authorship,’ those aspects of
the work that originate with the author himself.”

Id. at 102

(citing 17 U.S.C. § 102(a)); see also N.Y. Mercantile Exch.,
Inc. v. IntercontinentalExch., Inc., 497 F.3d 109, 113 (2d Cir.
2007) (“The sine qua non of copyright is originality.”)
(citation omitted).
Everything else in the work, the history it describes,
the facts it mentions, and the ideas it embraces, are
in the public domain free for others to draw upon. It
is the peculiar expressions of that history, those
facts, and those ideas that belong exclusively to
their author.
Zalewski, 754 F.3d at 102.

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The “scènes-à-faire” doctrine “separate[s] protectable
expression from elements of the public domain.”

Id.

Under the

scènes-à-faire doctrine, “elements of a work that are
indispensable, or at least standard, in the treatment of a given
topic -- like cowboys, bank robbers, and shootouts in stories of
the American West -- get no protection.”
omitted).

Id. (citation

“[T]he common use of such stock merely reminds us

that in Hollywood, as in the life of men generally, there is
only rarely anything new under the sun.”

Williams v. Crichton,

84 F.3d 581, 588 (2d Cir. 1996) (citation omitted).
To determine whether a plaintiff has established wrongful
copying, courts “usually apply the ordinary observer test and
ask whether the ordinary observer, unless he set out to detect
the disparities, would be disposed to overlook them, and regard
their aesthetic appeal as the same.”
(citation omitted).

Zalewski, 754 F.3d at 102

But, “when faced with works that have both

protectible and unprotectible elements, [the] analysis must be
more discerning.”

Peter F. Gaito Architecture, LLC v. Simone

Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010) (citation omitted).
In such cases, a court “must attempt to extract the
unprotectible elements from . . . consideration and ask whether
the protectible elements, standing alone, are substantially
similar.”

Id. (citation omitted).

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While courts never “are required to dissect the works into
their separate components, and compare only those elements which
are in themselves copyrightable,” id. (citation omitted), courts
reviewing works with protectible and unprotectible elements
“must begin by dissecting the copyrighted work into its
component parts in order to clarify precisely what is not
original.”

Tufenkian Import/Export Ventures, Inc. v. Einstein

Moomjy, Inc., 338 F.3d 127, 134 (2d Cir. 2003).

It is then

appropriate to “examine the similarities in such aspects as the
total concept and feel, theme, characters, plot, sequence, pace,
and setting of” the works.

Williams, 84 F.3d at 588.

A

plaintiff fails to establish copyright infringement “[w]hen the
similarities between the protected elements of [the] plaintiff’s
work and the allegedly infringing work are of small import
quantitatively or qualitatively.”

Id. (citation omitted).

The Second Circuit recognizes that copyright protection for
characters results when they are embodied in original works of
authorship that are themselves protected by the law of
copyright.

Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231,

235 (2d Cir. 1983) (“Plaintiffs own the copyrights in various
works embodying the character Superman and have thereby acquired
copyright protection for the character itself.”).

But, “the

less developed the characters, the less they can be copyrighted;
that is the penalty an author must bear for marking them too
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indistinctly.”

Williams, 84 F.3d at 589 (quoting Nichols v.

Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)
(Learned Hand, J.)).
A district court in the Second Circuit may resolve a
“substantial similarity” challenge on a Rule 12(b)(6) motion to
dismiss.

Peter F. Gaito Architecture, 602 F.3d at 64.

“[I]t is

entirely appropriate for the district court to consider the
similarity between those [relevant] works in connection with a
motion to dismiss, because the court has before it all that is
necessary in order to make such an evaluation.”

Id.

“When a

court is called upon to consider whether the works are
substantially similar, no discovery or fact-finding is typically
necessary, because what is required is only a . . . comparison
of the works.”

Id. (citation omitted).

A. The Registered Videos
E*Trade argues that Vacchi’s claim for infringement of the
Registered Videos must be dismissed because they are not
substantially similar to the E*Trade commercials.

It is

correct.
The E*Trade commercial Yacht Life is not substantially
similar to the Registered Videos.

Yacht Life is focused on “the

dumbest guy in high school,” who recently purchased a yacht.

He

is seen dancing throughout the boat, either alone or in a group
of people, who are primarily peers his own age.
11

The subject of

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the Registered Videos, by contrast, is an older man, Vacchi’s
character.

In two videos, he acts as a DJ at a dance party

aboard a boat.

In three videos, he performs a choreographed

dance with a younger woman.

The Registered Videos are

character-driven works that focus on a character with no
similarities to the main subject of Yacht Life.

There is thus

no basis for finding substantial similarity between this
commercial and the Registered Videos.
To the extent that similarities exist between the E*Trade
commercial Hard Work and the Registered Videos, these elements
are not protectible.

Two of the Registered Videos, like Hard

Work, depict an older man dancing with a younger woman on a
boat, as music plays in the background.

This type of scene does

not provide a basis for finding substantial similarity.

See

Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d
Cir. 1980) (recognizing that scenes of soldiers celebrating in a
beer hall are scènes à faire).

Neither does the implied

relationship between an older man and a younger woman.

A stock

character in any work depicting a relationship between an older
man and younger woman is, necessarily, the older man and the
younger woman.

See Walker v. Time Life Films, Inc., 784 F.2d

44, 50 (2d Cir. 1986) (noting that an Irish cop is a stock
character in any piece of police fiction).

Thus, the depiction

of the older man dancing with a younger woman and the sunny,
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marine environment are not entitled to protection under
copyright law.
Vacchi argues that these elements render the Registered
Videos substantially similar to both E*Trade commercials because
they all “take place around the same event: a DJ-style dancing
party in a marine-themed environment.”

He also argues that the

“structure and style” of the Registered Videos and E*Trade
commercials are the same, in that they are “relatively short and
the characters interact solely through dancing and demonstrating
their intents, feelings, and motions through their body
language.”
These general descriptions obscure obvious differences
between the works in question.

As discussed, Yacht Life focuses

on a character who has no similarities to the man featured in
Vacchi’s Registered Videos.

And in Hard Life, the music, the

boats, the dancing, and the cinematography differ substantially
from those in the Registered Videos.

“In copyright infringement

actions, the works themselves supersede and control contrary
descriptions of them, including any contrary allegations,
conclusions or descriptions of the works contained in the
pleadings.”

Peter F. Gaito Architecture, 602 F.3d at 64

(citation omitted).
Recognizing as much, Vacchi concedes that these elements
are each “unprotected.”

He argues, however, that the “[t]he
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totality of the specifically arranged unprotected elements” are
“protectable.”

But, viewed from this vantage point as well,

there is no substantial similarity in the arrangement of the
unprotected elements.

The similarity amounts to little more

than their joint reliance on a scène à faire to create an
ambiance.
B. The Character
Even if the E*Trade commercials do not infringe his
copyright in the Registered Videos, Vacchi argues that the
E*Trade commercials infringe his copyright in the character
depicted in the Registered Videos.

The Second Circuit

recognizes that characters who are embodied in original works of
authorship may be entitled to copyright protection.
Bros. Inc., 720 F.2d at 235.

See Warner

Nonetheless, this claim also must

be dismissed.
It is true that Vacchi’s character shares certain
similarities with the male character depicted in Hard Work, who
also appears briefly as a background dancer in Yacht Life.

Both

men have neatly trimmed, salt-and-pepper beards, square-shaped
glasses, and exposed torsos with tattoos.

They also both enjoy

dancing with younger women.
That is, however, where the similarities end.

The E*Trade

character lacks many of the most distinctive physical attributes
of Vacchi’s character.

The E*Trade character is not fit, and
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his tattoos do not resemble those of Vacchi’s character.

He

does not roll up the leg of his shorts, and instead wears
trousers with suspenders.

His beard does not end in a knot, and

he does not wear the ankle bracelet or wrist cuffs seen on the
character of Vacchi.

Assuming without deciding that Vacchi’s

character is sufficiently delineated to enjoy protection under
copyright law, the differences between the Vacchi character and
the E*Trade character prevent a finding of substantial
similarity between them as they appear in the Registered Videos
and the E*Trade commercials.
Vacchi counters that the character in the E*Trade
commercials is an “exact match” for his own, which he describes
as
a middle-aged, male playboy, with gray/salt-and-pepper
hair and beard, is heavily tattooed, wears black rim
glasses, is shirtless, and is in good physical shape.
[They] share the same love of boats, dancing, partying
and women (all of whom are visibly younger than the
main character.)
Apart from the differences in physiques, this description
largely captures qualities shared by the E*Trade and Vacchi
character.

It ignores, however, the myriad other features

that distinguish the two men.

Of course, this description

also underscores how much the character defined by Vacchi
reflects the stock character of the older man as playboy.

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Vacchi also disputes E*Trade’s contention that he is
improperly attempting to copyright his own life.
in the Registered Videos, he asserts, is not him.

The character

creation.

It is his

At this phase of the litigation, it is accepted as

true that the man who appears in the Registered Videos is a
character created by Vacchi.

But, this has no bearing on

whether the character, assuming he is sufficiently delineated in
the Registered Videos to achieve copyright protection, is
substantially similar to the character depicted by E*Trade.
Vacchi further contends that his character is not
undeserving of copyright protection simply because his “attire
slightly changes from work to work, and sometimes is seen
dancing and other times seen DJ’ing.”
relevant.

That is correct, but not

Here, the problem is not the minor adjustments to

Vacchi’s character among the Registered Videos.

It is the

dissimilarities between the consistent qualities of Vacchi’s
character and those of the E*Trade character.
Finally, Vacchi protests E*Trade’s characterization of his
character as a “‘stock character’ not entitled to protection.”
Again, this argument fails to address the flaw in Vacchi’s claim
against E*Trade.

Assuming Vacchi has a valid copyright in his

character, E*Trade has not infringed this right through the
depiction of a dancing, bare-torsoed older man in its
commercials.
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II.

False Endorsement
E*Trade moves to dismiss Vacchi’s claim that it used his

likeness or persona to falsely imply that Vacchi or Vacchi’s
character endorsed E*Trade in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a)(1).

Courts have applied Section

43(a) to protect the “‘persona’ of an artist against false
implication of endorsement generally resulting from the use of
look-alikes.”

Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 62 (2d

Cir. 2001).
To prevail on a claim under Section 43(a), a plaintiff must
establish that “the defendant’s use of the allegedly infringing
mark would likely cause confusion as to the origin or
sponsorship of the defendant’s goods with plaintiff’s goods.”
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97,
114 (2d Cir. 2009).

This test has been applied by courts

reviewing celebrity false endorsement claims.

See e.g., Fifty-

Six Hope Road Music, Ltd. A.V.E.L.A., Inc., 778 F.3d 1059, 1069
(9th Cir. 2015); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007,
1020 (3d Cir. 2008); Bruce Lee Enters., LLC v. A.V.E.L.A., Inc.,
No. 10 Civ. 2333(LTS), 2011 WL 1327137, at *5 (S.D.N.Y. Mar. 31,
2011); Allen v. Nat’l Video, Inc., 610 F. Supp. 612, 627
(S.D.N.Y. 1985).

In the Second Circuit, when a plaintiff fails

to establish “substantial similarity” in a parallel claim for
copyright infringement, he has “little basis for asserting a
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likelihood of confusion . . . for purposes of a claim under
[S]ection 43(a) of the Lanham Act.”

Warner Bros. Inc., 720 F.2d

at 246 (citation omitted).
As discussed, Vacchi has failed to state a claim for
copyright infringement because he cannot establish substantial
similarity between the protectible elements of the character in
the Registered Videos and the E*Trade commercials.

Vacchi

therefore cannot state a claim that E*Trade violated Section
43(a) of the Lanham Act by falsely implying that Vacchi or his
character endorsed E*Trade.
Vacchi does not dispute that his Lanham Act claim must fail
if he cannot establish substantial similarity for purposes of
his copyright infringement claim.

E*Trade’s motion to dismiss

Vacchi’s Lanham Act claim is therefore granted. 5

Vacchi argues that it would be inappropriate to dismiss either
his copyright infringement or Lanham Act claim based on
E*Trade’s fair use defense. As dismissal of Vacchi’s claims
have been granted because he has failed to establish substantial
similarity or likelihood of confusion, it was not necessary to
address fair use.
5

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CONCLUSION
E*Trade’s June 24, 2019 motion to dismiss is granted.
Clerk of Court shall close this case.

Dated:

New York, New York
September 13, 2019
____________________________
DENISE COTE
United States District Judge

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