Colon-Lorenzana et al v. South American Restaurants Corp. et al

Filing 50

OPINION AND ORDER granting 31 Motion to dismiss for failure to state a claim. Signed by US Magistrate Judge Marcos E. Lopez on 5/6/2014. (MT)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO

NOBERTO COLÓN-LORENZANA, et. al.,
Plaintiffs,
v.

CIVIL NO.: 12-1794 (MEL)

SOUTH AMERICAN RESTAURANTS CORP.,
Defendant.

OPINION AND ORDER
I.

PROCEDURAL HISTORY
On September 10, 2013, Noberto Colón Lorenzana (“Mr. Colón”), Gladys Gozá

González, and the conjugal partnership they constitute (collectively “plaintiffs”) filed an
amended complaint against South American Restaurants Corporation1 (“SARCO” or
“defendant”) alleging violations of the Lanham Act, 15 U.S.C. § 1120, for false of fraudulent
trademark registration and a supplemental claims under the Puerto Rico Trademarks Act, Law
169 of December 16, 2009 (“Law 169”), and under Article 1802 of the Puerto Rico Civil Code,
P.R. Laws Ann. tit. 31, § 5141 (“Article 1802”). ECF No. 1. On December 12, 2013, SARCO
moved to dismiss the amended complaint for failure to state a claim upon which relief can be
granted pursuant to Federal Rule of Civil Procedure 12(b)(6) (“Rule 12(b)(6)”). ECF No. 31.
Pending before the court are SARCO’s motion, plaintiff’s response in opposition, SARCO’s
reply, and plaintiff’s surreply. ECF Nos. 31; 34; 37; 44.

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.

II.

FACTUAL BACKGROUND
The following factual allegations are drawn from the amended complaint (ECF No. 29):
On August 17, 1987, Mr. Colón became an employee of a Church’s Fried Chicken

(“Church’s”) franchise in Puerto Rico. ¶ 9. Church’s is a restaurant chain owned by SARCO,
which SARCO purchased from Sheriff Jones. Id. Mr. Colón formerly worked for Sheriff Jones,
which sold a chicken breast sandwich Mr. Colón created. ¶ 10. While Mr. Colón was employed
by SARCO, he held various positions. ¶ 11. While he was working as a store manager,
Mr. Colón suggested the concept for a new chicken sandwich to Mr. Raúl Ramírez and
Mr. Gabriel Salvat, the President and Vice President of SARCO, respectively. ¶ 12. Mr. Colón
asked them to include it as part of their daily menu. Id. Various sandwich acceptance tests were
performed over the course of four or five months, which plaintiff attended. ¶¶ 13-15.
At the end of 1991, when Mr. Colón was employed as an Area Supervisor, SARCO held
an activity for Church’s staff and their families in the Caguas restaurant. ¶ 16. At the activity,
guests were asked to create their own versions of the chicken sandwich using Mr. Colón’s idea
and recipe. ¶ 17. Mr. Colón selected the name “Pechu Sandwich” for the product, and on
December 1991, SARCO started selling the Pechu Sandwich and ran an advertising campaign
for it. ¶ 18. AFC Enterprises, Inc. filed an application for registration of the trademark “Pechu
Sandwich,” and the Department of State for the Commonwealth of Puerto Rico (the “DOS”)
issued a certificate of registration on March 4, 1999. ¶ 19. AFC Enterprises, Inc. (“AFC”)
assigned and transferred all the rights and goodwill of the “Pechu Sandwich” trademark to Cajun
Operating Company (“COC”), and the DOS issued a certificate of assignment on February 28,
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
enter any agreement to transfer or assign his rights related to his invention and its trade name to
either corporation. ¶ 21.
On August 6, 2005, CFC assigned and transferred all rights and goodwill in the “Pechu
Sandwich” trademark to SARCO. ¶ 22. On October 4, 2005, SARCO filed an application in the
United States Patent and Trademark Office (“PTO”) to register the name “Pechusandwich,”2 and
the name was registered on September 5, 2006. ¶ 23. SARCO acknowledged in writing that
Mr. Colón created the sandwich and Mr. Colón testified in a case between SARCO and
Kentucky Fried Chicken regarding the rights to the name “Pechu Sandwich.” ¶ 24. SARCO has
received economic benefit from Mr. Colón’s creation and he never received any kind of
compensation. ¶ ¶ 24; 27. Id. He did not sign or enter any agreement with SARCO to transfer or
assign his rights pertaining to his invention or its trade name. Id. Defendant registered the name
“Pechu Sandwich” as if it had been SARCO’s creation, without plaintiff’s knowledge, consent,
or benefit. ¶ 25. SARCO created additional menu items and derived the items’ names from the
name “Pechu Sandwich” without Mr. Colón’s consent or authorization, including: Pechuga
Mexicana, Pechu Milanesa, Pechu Jr., Pechu Pop, Pechu Blue, Pechu Salads, Pechurrones, Pechu
Filetes, Pechu Parrillera, and Pechu Bites. ¶ 26. SARCO, through Church’s operation, has sold
more than 46,000 “Pechusandwiches” and derived products daily resulting in revenues of more
than $369,000,000.00. ¶ 29. SARCO continues to offer Mr. Colón’s creation and products
bearing Mr. Colón’s creation for sale, without his authorization. ¶ 35.

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.

STANDARD OF REVIEW
When considering a motion to dismiss under Rule 12(b)(6), the court must limit its focus

to the allegations of the complaint. Litton Indus., Inc. v. Colón, 587 F.2d 70, 72 (1st Cir. 1978).
Specifically, the inquiry should be “whether a liberal reading of [the complaint] can reasonably
admit of a claim . . . .” Id. An evaluation of a motion to dismiss under Rule 12(b)(6) requires the
court to “accept as true ‘all well-pleaded factual averments and indulg[e] all reasonable
inferences in plaintiff=s favor.’” Doyle v. Hasbro, Inc., 103 F.3d 186, 190 (1st Cir. 1996)
(quoting Aulson v. Blanchard, 83 F.3d 1, 3 (1st Cir. 1996)). Dismissal under Rule 12(b)(6) is
appropriate only if the facts alleged, taken as true, do not warrant recovery. Aulson, 83 F.3d at 3.
In order to survive a motion to dismiss, plaintiff must “set forth factual allegations, either direct
or inferential, respecting each material element necessary to sustain recovery under some
actionable legal theory.” Gooley v. Mobil Oil Corp., 851 F.2d 513, 515 (1st Cir. 1988). Although
all inferences must be made in plaintiff=s favor, the court need not accept “bald assertions,
unsupportable conclusions, periphrastic circumlocutions, and the like.” Aulson, 83 F.3d at 3.
The Supreme Court held in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), that in
order to survive a motion to dismiss under Rule 12(b)(6), a complaint must allege “a plausible
entitlement to relief.” Rodríguez-Ortiz v. Margo Caribe, Inc., 490 F.3d 92, 95 (1st Cir. 2007)
(quoting Twombly, 550 U.S. at 559). “While Twombly does not require heightened fact pleading
of specifics, it does require enough facts to ‘nudge [plaintiffs=] claims across the line from
conceivable to plausible.’ Accordingly, in order to avoid dismissal, the plaintiff must provide the
grounds upon which his claim rests through factual allegations sufficient ‘to raise a right to relief
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
decided in the antitrust context, the Supreme Court has held that the standard expounded in that
decision applies to “all civil actions.” Ashcroft v. Iqbal, 556 U.S. 662, 684 (2009).
IV.

LEGAL ANALYSIS
1.

The Lanham Act
a. Trademark Infringement

Plaintiffs do not specifically allege a claim for trademark infringement in the amended
complaint. However, to the extent that they imply the same by referring to plaintiffs’ “rights” in
the invention and trade name and SARCO’s continued use of the same, the claim cannot succeed
and is dismissed with prejudice. As plaintiffs themselves acknowledge, “rights in trademarks are
. . . acquired by the first party to appropriate the mark and use it in commerce in connection with
a particular product or service . . . .” ECF No. 34, at 8; see also Arvelo v. American Intern Ins.
Co., 875 F.Supp. 95, 101 (D.P.R. 1995) aff’d, 66 F.3d 306 (1st Cir. 1995). “Rights in a
trademark, however, cannot be obtained through discovery or invention alone. Some actual use
of the trademark . . . is necessary to establish use. Neither conception of an idea for a mark, nor
solicitation of advertising business constitute use of the trademark sufficient to acquire
proprietary rights in the mark.” Id. (internal citations omitted) (finding that inventing the name
“Retail Plus” and presenting it to defendant did not constitute sufficient use to invoke trademark
protection). Plaintiffs do not allege that they used the name “Pechu Sandwich” or
“Pechusandwich” in commerce, let alone that they were the first to use it. The amended
complaint does not contain an allegation that plaintiffs have sold Mr. Colón’s chicken sandwich
“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
with the PTO. Overall, the allegations in the complaint do not support a finding that plaintiffs
ever acquired trademark rights in the Pechu Sandwich or its trade name, such that SARCO may
have infringed upon them in violation of the Lanham Act. Thus, the complaint fails to state a
plausible claim for trademark infringement.
b. Fraud in the Procurement
Section 38 of the Lanham Act provides that:
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.
The elements of a claim of fraud in the procurement of a federal trademark registration, include:
(1) that defendant made a false representation to the PTO regarding a material fact; (2) that
defendant knew that the representation was false; (3) that defendant intended to induce the PTO
to act in reliance on the misrepresentation; and (4) the PTO was thereby deceived into registering
the mark. See Bay State Sav. Bank v. Baystate Fin. Servs., LLC, 484 F. Supp. 2d 205, 220 (D.
Mass. 2007) (citations omitted); see also San Juan Products, Inc. v. San Juan Pools of Kansas,
Inc., 849 F.2d 468, 473 (10th Cir. 1988) (“Thus, to prove that San Juan committed fraud in the
procurement of its federal trademark, [the plaintiff] was required to plead and prove: (1) the false
representation regarding a material fact; (2) the registrant's knowledge or belief that the
representation is false (scienter); (3) the intention to induce action or refraining from action in
reliance on the misrepresentation; (4) reasonable reliance on the misrepresentation; and (5)
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.
(citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 31:61 (4th
ed. 2006)).
Unlike with respect to a claim for trademark infringement, as a form of fraud, plaintiffs
must state the circumstances constituting fraud in the procurement of a registered trademark with
particularity in accordance with Federal Rule of Civil Procedure 9(b). See San Juan Products,
Inc., 849 F.2d at 472 (citing 2 J. McCarthy, Trademarks and Unfair Competition § 31:21(D), at
616; and King Automotive, Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1010
(C.C.P.A.1981).); see also Oreck Corp. v. Thompson Consumer Electronics, Inc., 796 F.Supp.
1152, 1159 (S.D.Ind. 1992) (“Allegations of trademark fraud must be stated with particularity
. . . a general allegation of fraud without an accompanying recitation of details is insufficient.).
“A claim of fraud must also satisfy the particularity requirements set forth in Fed.R.Civ.P. 9(b),
mandating specifics about the time, the place, and content of the alleged false representations.’’
Woods v. Wells Fargo Bank, N.A., 733 F.3d 349, 358 (1st Cir. 2013) (internal citation omitted).
“Rule 9 imposes a heightened pleading requirement for allegations of fraud in order to give
notice to defendants of the plaintiffs' claim, to protect defendants whose reputation may be
harmed by meritless claims of fraud, to discourage “strike suits,” and to prevent the filing of suits
that simply hope to uncover relevant information during discovery.” Doyle v. Hasbro, Inc., 103
F.3d 186, 194 (1st Cir. 1996) (citing McGinty v. Beranger Volkswagen, Inc., 633 F.2d 226, 228–
29 & n. 2 (1st Cir.1980)).
Plaintiffs’ central allegations regarding this claim consist largely of the legal conclusions
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
“intentionally, willfully, fraudulently and maliciously procured the registration of [Mr. Colón’s]
creation in the [PTO] without his consent and proper compensation with the intent to injure
[p]laintiffs.” ECF No. 29, ¶ 25. These conclusory allegations do not suffice to state a claim for
fraud in the procurement under Rule 9(b), as they do not shed light on the circumstances
constituting fraud. While they make clear that Mr. Colón did not consent to SARCO’s
registration of the Pechu Sandwich trademark, it is not readily apparent how or why his
knowledge, consent, or benefit is relevant to any of the essential elements of a claim for fraud in
the procurement of a federal trademark.
The amended complaint is sufficiently specific with regard to the time of the false
representation, stating that SARCO filed an application with the PTO on October 4, 2005, and a
reasonable inference can be drawn that the location of the alleged false representation was on the
application SARCO submitted to the PTO. The allegations in the complaint are vague with
regard to the content of the alleged false representation; however, which presents an initial
problem under Rule 9(b). See Greebel v. FTP Software, Inc., 194 F.3d 185, 193 (1st Cir. 1999)
(citing McGinty v. Beranger Volkswagen, Inc., 633 F.2d 226, 228 (1st Cir.1980)) (“This circuit
has interpreted Rule 9(b) to require ‘specification of the time, place, and content of an alleged
false representation.’ Even where allegations are based on information and belief, supporting
facts on which the belief is founded must be set forth in the complaint.”); see also Woods, 733
F.3d at at 358 (“Although Woods’s complaint includes a basic recitation of the elements of
fraud, she does not indicate when, where, and how often the allegedly false states were made or
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
SARCO’s creation . . . .” ECF No. 29, ¶ 25. It is ambiguous whether plaintiffs intend to assert
that SARCO affirmatively misrepresented who created the Pechu Sandwich, or whether the
misrepresentation consisted of an omission or implication that SARCO “created” the sandwich
by failing to inform the PTO that Mr. Colón had the ideas for the concept and name of the Pechu
Sandwich. Assuming for argument’s sake, however, that it can reasonably be inferred from
plaintiff’s allegations that SARCO knowingly made a false representation to the PTO in
asserting that SARCO, rather than Mr. Colón, created the concept and name for the Pechu
Sandwich, and that SARCO intended to induce the PTO into registering the trademark based on
its representations, the amended complaint nonetheless fails to meet the pleading standard for
fraud in the procurement.
The amended complaint’s greatest infirmity is with regard to the materiality of the
alleged misrepresentation. Plaintiffs simply do not allege that the creation of the sandwich was
material to the PTO or that the PTO relied on a representation that SARCO created the Pechu
Sandwich in registering the trademark, leading to SARCO’s procurement of the trademark. See
San Juan Products, Inc. v. San Juan Pools of Kansas, Inc., 849 F.2d 468, 473 (10th Cir. 1988)
(“The knowing misrepresentation must be material.”); Aveda Corp. v. Evita Mktg., Inc., 706 F.
Supp. 1419, 1426 (D. Minn. 1989) (“[T]he false statement is not material. Defendants do not in
any way suggest that the registration would have been denied had the true date of the first use
been provided on the application.”); see also Publications Intern. Ltd., v. Leapfrog Enterprises,
Inc., No. 01-C-3876, 2002 WL 31426652, *5 (N.D.Ill. Oct. 29, 2002) (finding that allegations
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
the plain text of the statute suggests, it is the ‘procurement’ of the fraudulent registration that
triggers damages under § 38.”). Plaintiffs do not allege that the PTO would not have issued the
Pechu Sandwich trademark to SARCO had it been aware that the concept and name for the
sandwich were Mr. Colón’s creation.3 The complaint is silent with regard to whether the PTO
was “deceived into registering the mark” because of the alleged false representation or
“reasonably relied” on the same. Woods, 733 F.3d at 358 (“[T]he complaint is wholly silent on
the issue of her actual reliance. This vague pleading falls short of Rule 9(b)’s particularity
requirement.”).
This failure to aver that the PTO relied on Mr. Colón’s alleged misrepresentation is fatal
to plaintiff’s claim. As the First Circuit recently explained in Juárez v. Select Portfolio Servicing,
Inc., it is not enough that the allegations leave open the possibility that fraudulent representations
were relied upon to satisfy Rule 9(b),4 the compliant must actually allege reliance occurred to
meet the particularity requirement:
[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
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).
Like in Juárez, the amended complaint lacks particularity with regard to the specifics of the
PTO’s reliance on SARCO’s misrepresentation—in fact it does not assert that the PTO relied on
a misrepresentation by SARCO whatsoever. Therefore, taking as true that Mr. Colón created the
Pechu Sandwich, that he did not consent to SARCO’s registration of the Pechu Sandwich
trademark, that he never entered an agreement to transfer or assign his “rights” pertaining to his
invention and its trade name, and that SARCO registered the trademark as if it had been its own
creation, the amended complaint lacks a valid claim for relief under Section 38 of the Lanham
Act.5 Because plaintiffs do not satisfy the pleading standard for relief under 15 U.S.C. § 1120,
their claim for fraudulent trademark registration is dismissed, with prejudice.6

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.

The Copyright Act

The amended complaint does not specifically plead a claim under, or cite to, the U.S.
Copyright Act, 17 U.S.C. §§ 101 et seq. (the “Copyright Act”). ECF No. 26. However, plaintiffs
largely base their response in opposition on the Copyright Act, arguing that plaintiff invented
and created the concept for a new chicken sandwich, authored its name, and that it is a “work”
entitled to copyright protection. ECF No. 34, at 6-11. SARCO responds that the amended
complaint does not include any copyright infringement claims, and that even if plaintiffs are
permitted to raise a copyright infringement claim at this stage in the proceeding, the amended
complaint fails to state a valid claim under the Copyright Act. ECF No. 37, at 2. Plaintiff points
out that the amended complaint does reference copyright law, stating: “Defendants’ acts have
been committed in the District Court of Puerto Rico, within the jurisdiction of this Court, and the
pecuniary rights of the work are obtained by the Copyright Law . . . .” ECF No. 29, ¶ 31. To the
extent that plaintiffs are warranted in pursuing a claim under the Copyright Act based on this
reference to copyright law in the amended complaint, that claim is nonetheless dismissed under
Rule 12(b)(6).
According to § 102(a) of the Copyright Act:
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
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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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.

13

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
1802 are dismissed without prejudice.

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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

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