The opinion of the court was delivered by: David O. Carter United States District Judge
AND CONSOLIDATED ACTIONS.
Before the Court*fn1 are the following Motions:
ORDER ON MGA'S MOTION FOR SUMMARY JUDGMENT; MATTEL'S MOTION FOR PARTIAL SUMMARY JUDGMENT; MACHADO'S MOTION FOR SUMMARY JUDGMENT
(1) MGA Entertainment, Inc. ("MGAE"), MGA de Mexico, S.R.L. de CV ("MGA Mexico"), MGA Entertainment (HK) Ltd. ("MGA HK"), and Isaac Larian ("Larian")'s (collectively "MGA") Motion for Summary Judgment;
(2) Mattel, Inc. ("Mattel") and Mattel de Mexico, S.R.L. de CV ("Mattel Mexico")'s joint Motion for Partial Summary Judgment; and
(3) Carlos Gustavo Machado Gomez ("Machado")'s Motion for Summary Judgment.
A hearing on these motions was held on November 16, 2010 and November 17, 2010, in advance of which the Court issued a minute order directing counsel for the parties to focus on certain issues in their argument to the Court. (Dkt. 9273.)
On April 27, 2004, Mattel filed a state court complaint against former employee Carter Bryant ("Bryant") alleging that Bryant breached his contractual and common law duties to Mattel by failing to disclose his concept sketches and sculpts of the Bratz dolls prior to leaving Mattel for MGA Entertainment, Inc. ("MGAE") on or about October 4, 2000. Bryant filed a counter-claim against Mattel in state court and filed a separate action for declaratory relief in federal court on November 2, 2004, on which date Bryant also removed Mattel's state court lawsuit to federal court. MGAE intervened in Mattel's suit against Bryant on December 7, 2004 and, four months later, filed a stand-alone complaint in federal court against Mattel for trade dress infringement, dilution, unfair competition, and unjust enrichment, alleging that Mattel infringed MGAE's distinctive packaging and interfered with MGAE's business relationships. On June 19, 2006, the Honorable Stephen G. Larson consolidated the three cases for all purposes upon finding that "the actions involve a number of common issues of law and fact."
Bryant was the only defendant named by Mattel's state court complaint. On November 20, 2006, Mattel sought leave to file an amended complaint that would "substitute [MGAE] for Defendant Doe 1, [MGA HK] for Defendant Doe 2, and [Larian] for Defendant Doe 3" and add MGA Mexico and Machado as defendants to a pleading that asserted a host of new claims unrelated to Bryant's conduct. (Dkt. 89.) Mattel's request was denied but only as a procedural matter; the court permitted Mattel to plead its proposed amendments "in the form of an amended answer and counterclaim in" MGAE's case against Mattel. (Dkt. 142.) Mattel filed its First Amended Answer and Counterclaims (FAAC) on January 1, 2007 (Dkt. 143) bringing the same claims that are now pending against MGA and Machado, though the substance of those claims and the detail with which they are alleged has changed considerably. Following the filing of Mattel's counter-claims against MGA and Machado, the court ordered claims related to the ownership of the Bratz line of dolls - raised in Mattel's complaint against Bryant and Mattel's FAAC - to be tried separately from, and prior to, MGAE's affirmative claims and Mattel's counter-claims arising out of conduct unrelated to the ownership of Bratz.
Mattel entered into a settlement with Bryant on the eve of the "phase 1" trial, leaving the following claims to be tried to the jury: (1) Mattel's claim for intentional interference with contract against Larian and MGAE; (2) Mattel's claim for aiding and abetting breach of fiduciary duty against Larian and MGAE; (3) Mattel's claim for aiding and abetting breach of duty of loyalty against Larian and MGAE; (4) Mattel's claim for conversion against MGAE, MGA HK, and Larian; (5) Mattel's claim for statutory unfair competition against Larian, MGAE, and MGA HK; (6) Mattel's claim for declaratory relief against Larian, MGAE, and MGA HK; and (7) Mattel's claim for copyright infringement against Larian, MGAE, and MGA HK. (Dkt. 3917 at 11.) Mattel prevailed on each of its claims and the jury found that Bryant conceived the idea for the name Bratz and created the concept drawings and sculpt for the Bratz dolls during his second term of employment with Mattel (January 4, 1999 to October 4, 2000). On the basis of the jury's special and general verdicts, and after independently examining the similarity between the concept sketches/sculpts and MGA's Bratz dolls, the district court placed the Bratz trademarks in a constructive trust and enjoined MGA from continuing to sell dolls that were substantially similar to Bryant's initial works. MGA appealed.
During the pendency of MGA's appeal of the phase 1 orders, discovery proceeded on the claims not tried in the phase 1 trial. Mattel amended its responsive pleading three times and joined Mattel Mexico as a plaintiff to its operative Fourth Amended Answer and Counterclaims ("4AAC"), which brings claims arising out of MGA's relationships with Bryant and other former Mattel employees who allegedly stole Mattel's confidential information before leaving Mattel. The 4AAC's claims also arise out of MGA's alleged litigation misconduct and unwillingness to comply with the phase 1 jury's verdicts, though many of these allegations were dismissed on August 2, 2010. MGA narrowed its trade dress infringement allegation to the two-pronged claim that Mattel copied MGA's trapezoidal and heart-shaped packaging. MGA also filed counterclaims-in-reply that arise out of Mattel's alleged market research tactics.
On July 22, 2010, MGA prevailed on its appeal. In vacating the constructive trust and injunction, the Ninth Circuit held that the equitable relief was impermissibly broad and predicated upon jury verdicts tainted by erroneous instruction. On October 22, 2010, this Court granted MGA's motion for a new trial on all claims and issues tried to the jury in phase 1, finding that the indistinct and inseparable claims were all infected by instructional error. The Court separately discarded with the earlier bifurcation of claims, and ordered that all pending claims between the parties be tried in a single proceeding to commence on January 11, 2011.
Rule 56 of the Federal Rules of Civil Procedure provides that "[a] party may move for summary judgment, identifying each claim or defense - or the part of each claim or defense - on which summary judgment is sought." Fed. R. Civ. P. 56(a). Summary judgment should be granted "when, viewing the evidence in the light most favorable to the non-moving party, there are no genuine issues of material fact" and the moving party is entitled to judgment as a matter of law. Avery v. First Resolution Mgmt. Corp., 568 F.3d 1018, 1021 (9th Cir. 2009); see also Fed. R. Civ. P. 56(a). In adjudicating cross-motions for summary judgment, the Ninth Circuit "evaluate[s] each motion separately, giving the nonmoving party in each instance the benefit of all reasonable inferences." ACLU of Nevada v. City of Las Vegas, 466 F.3d 784, 790-91 (9th Cir. 2006) (citations omitted); see also Friends of Columbia George, Inc. v. Schafer, 624 F. Supp. 2d 1253, 1263 (D. Or. 2008).*fn2
I. Bryant's Inventions Agreement
As explained in the order granting MGA's Motion for New Trial, Mattel's counter-claims for conversion, intentional interference with contractual relations, aiding and abetting breach of fiduciary duty, copyright infringement, and declaratory relief require the interpretation of Mattel's Employee Confidential and Inventions Agreement (the "Inventions Agreement") that Bryant signed on January 4, 1999. By paragraph 2 of the Inventions Agreement Bryant agreed to "communicate to [Mattel] as promptly and fully as practicable all inventions . . . conceived or reduced to practice by me (alone or jointly with others) at any time during my employment with [Mattel]." (Declaration of Dylan Proctor, Ex. 124.) Bryant also assigned to Mattel any "right, title and interest" in such inventions, which the Inventions Agreement defined as "includ[ing], but  not limited to, all discoveries, improvements, processes, developments, designs, know-how, data computer programs, and formulae, whether patentable or unpatentable." Id.
Prior to the phase 1 trial, Mattel successfully argued that the terms of the Inventions Agreement assigned to Mattel Bryant's right, title, and interest in his ideas for the names Bratz and Jade, leaving for the jury the question of whether Bryant's ideas were conceived at any time during his employment with Mattel. On appeal, the Ninth Circuit held that "the agreement could be interpreted to cover ideas, but the text doesn't compel that reading," and suggested that this Court evaluate whether the ambiguity "could be resolved by extrinsic evidence."
Mattel argues that Bryant and Mattel mutually intended for the Inventions Agreement to assign to Mattel Bryant's right, title, and interest in the ideas he conceived or reduced to practice at any time during his employment with Mattel. Because "[t]he fundamental goal of contractual interpretation is to give effect to the mutual intention of the parties," the Court may consider extrinsic evidence of the parties' intent when the contract is ambiguous. Morey v. Vannucci, 64 Cal. App. 4th 904, 912 (1998) (quoting Bank of the West v. Superior Court, 2 Cal. 4th 1254, 1264 (1992)) (quotation marks omitted).*fn4 Admissible extrinsic evidence includes "surrounding circumstances under which the parties negotiated or entered into the contract; the object, nature, and subject matter of the contract; and the subsequent conduct of the parties." Id.
Mattel cites Bryant's testimony from an unrelated lawsuit and the deposition testimony of Mattel's corporate designee to show that both Bryant and Mattel understood the Inventions Agreement to assign Bryant's right, title, and interest in his ideas. As a general rule, evidence of the contracting parties' "undisclosed intent or understanding" is irrelevant to the contract's interpretation. Cedars-Sinai Medical Ctr. v. Shewry, 137 Cal. App. 4th 964, 980 (2006). However, evidence of the parties' subjective intent may be used "in interpreting an ambiguity, although in the case of contracts, it is a mutual declaration of intention which is sought to be found." Heston v. Farmers Ins. Group, 160 Cal. App. 3d 402, 414 (1984) (finding prior representations about similar agreement relevant to whether parties shared intent).
During a 2007 trial between MGA and Art Attacks Ink, LLC, Bryant testified about his relationship with Mattel:
Q And part of your job [at Mattel] was to come up with new ideas, right? A Yeah, that was part of my job. . . .
Q I'm not asking you whether it was fair or whether [Mattel] explained [the
Inventions Agreement] to you. I'm just asking what your understanding of the agreement was.
A I really don't remember. . . .
Q Sir, [Exhibit 3074 is] a proprietary information checkout from Mattel that you signed on October 19th, 2000, your last day of employment there, correct?
Q Okay. And scroll up. Mattel wanted to make sure that you were aware that each terminating employee should be aware that in his employment agreement he has agreed to transfer all inventions made or conceived during the period of his employment at Mattel. By this time did not you understand that condition?
A I'm sorry. I'm not exactly sure what you're asking me.
Q Did you understand what this first sentence meant, by October 19th, 2000? A This is the first time I'd ever seen that contract.
THE WITNESS: No. On my exiting day this was the first time I'd ever seen this particular contract. And, again, it was a contract that was not explained to me.
BY MR. GRINNELL: Q Did you not understand that your interest in any and all inventions, improvements and ideas which you made or conceived during your employment at the company was the exclusive property of Mattel? Did you not understand that?
A You know, I think I was aware of that. It wasn't pointed out to me when I left.
Nothing on this contract was pointed out to me specifically.
Declaration of Jon Corey In Support of Mattel's Motion for Partial Summary Judgment, Exh. 84 (Art Attacks v. MGA May 2, 2007 Trial Tr. (Carter Bryant) at 115:25 to 123:15).
Bryant's ambivalent testimony about a distinct agreement, as well as his understanding at the time of his resignation, does not evidence "the mutual intention of the parties as it existed at the time of contracting." Cal. Civ. Code § 1636 (emphasis added). The October 19, 2000 proprietary information checkout form referenced in Bryant's testimony is a document he was asked to sign on his last day at Mattel. (Ex. 43 to MGA's MSJ.) As a reminder to Bryant, the checkout form purported to quote the assignment provision in the Inventions Agreement:
My interest in (a) any and all inventions, improvements and ideas (whether or not patentable) which I have made or conceived, or may make or conceive at any time during the period of my employment with the Company, either solely or jointly with others and in (b) any suggestions, designs, trademarks, copyrightable subject matter, literary works, artistic works, and computer software which I have made or conceived, or may make or conceive at any time during the period of my employment which relate or are applicable directly or indirectly to any phase of the Company's business shall be the exclusive property of the Company, its successors, assignees or nominees.
The checkout form misquoted Bryant's Inventions Agreement, which did not expressly assign to Mattel Bryant's interest in his ideas. This error may be attributable to the fact that prior versions of Mattel's Inventions Agreement expressly assigned the contracting employee's interest in his ideas. Compare id. and Exs. 9077, with Proctor Decl., Ex. 124. The minimal overlap between these prior versions and the version signed by Bryant - for example, Bryant's agreement identifies "discoveries, improvements, processes, developments, designs, know-how, data computer programs and formulae, whether patentable or unpatentable," many of which do not appear in prior versions - shows a genuine issue of material fact as to whether Bryant's understanding about the checkout form paralleled his prior understanding about the scope of the Inventions Agreement.
Mattel's evidence of its own intent is also undermined by the dissimilarity between the Inventions Agreement and checkout form. For example, Mattel's Vice President for Human Resources, Alan Kaye, submitted a declaration stating that:
Although the version of the Inventions Agreement signed by Mr. Bryant did not specifically identify 'ideas' among the categories of property to be assigned, it was Mattel's intent and understanding that ideas related to Mattel's line of business were included among the intellectual property assigned to Mattel. Invention is a fluid concept, and Mattel considers 'ideas' part and parcel with the creation of designs and inventions that are assigned to Mattel.
Declaration of Alan Kaye in Support of Mattel's Motion for Partial Summary Judgment ¶ 8.
Kaye's claim that Mattel considers ideas "part and parcel" with inventions is belied by the fact that the checkout form and earlier versions of the agreement treated inventions and ideas as distinct. Ninth Circuit Op. at 10534. Though he claims familiarity with "Mattel's understanding of and position with respect to ownership of ideas and concepts developed off-site," Kaye could not explain at his deposition why the Inventions Agreement signed by Bryant omitted the word "ideas." Deposition of Alan Kaye, Vol. I, June 19, 2010, 127:2 to 130:3. Nor could Kaye define the phrase "includes but is not limited to" in Bryant's agreement, even though his declaration claims a "familiar[ity] with the Inventions Agreement that Bryant signed in 1999." Compare id. at 127:23 with Kaye Decl. ¶ 4.
The fact that prior versions of the agreement used the word ideas may undermine the credibility of Mattel's witness. Travis v. Southern Pacific Co., 210 Cal. App. 2d 410, 421 (1962). However, contrary to MGA's argument, the evolution of the Inventions Agreement does not entitle MGA to judgment as a matter of law on this issue, since a reasonable fact-finder could conclude that Bryant intended for the agreement to encompass ideas. Both motions for summary judgment are denied on this issue.
MGA argues that Bryant lacked an assignable right, title, or interest in his ideas because ideas are not property under California law. The Ninth Circuit rejected this argument, which MGA made in its opening brief on appeal, by holding that a narrower constructive trust may be imposed after re-trial. MGA's argument is thus precluded by the law of the case doctrine. United States v. Houser, 804 F.2d 565, 567 (9th Cir.1986) ("A trial court may not [on remand] reconsider a question decided by an appellate court."). Given the broad and variable rights in intangibles, the Ninth Circuit's conclusion was not error, let alone clear error, which is the only applicable exception to the law of the case doctrine. See Kremen v. Cohen, 337 F.3d 1024, 1030 (9th Cir. 2003); cf. Painton & Co. v. Bourns, Inc., 442 F.2d 216, 223 (2d Cir. 1971) (finding that commercially valuable ideas may be licensed); Armorlite Lens Co. v. Campbell, 340 F. Supp. 273, 275 (S.D. Cal. 1972) (similar).
MGA also claims the assignment of ideas is (1) contrary to a reasonable employee's expectations and (2) unconscionable. These factors preclude the assignment of ideas if Mattel imposed and drafted the agreement and offered Bryant "only the opportunity to adhere to the contract or reject it." Neal v. State Farm Ins. Cos., 188 Cal. App. 2d 690, 694 (1961). Whether Bryant was forced to accept the agreement as drafted turns on his credibility. For example, a more senior Mattel employee declares that he negotiated a more limited assignment with Mattel. Declaration of Robert Hudnut in Support of Mattel's Opp. to MGA's MSJ ¶ 4. The fact-finder must also resolve whether the assignment of ideas was contrary to a reasonable employee's expectations, given Bryant's testimony acknowledging the assignment of ideas in his other agreements with Mattel. Graham v. Scissor-Tail, Inc., 28 Cal.3d 807, 820 (1981) ("[Graham] had been a party to literally thousands of . . . contracts containing a similar provision . . . ."). There is likewise a genuine issue of material fact as to whether the assignment of Bryant's interest in his ideas would have been unconscionable, since paragraph 2(a) of the Inventions Agreement similarly requires the non-disclosure of employee ideas. Contrary to MGA's argument, the assignment of ideas is no more offensive to employee mobility than the assignment of inventions, which MGA requires of its employees. Proctor Dec., Ex. 179 at 4604. As long the assignment does not extend to post-employment work, it is generally enforceable. See Patent & Licensing Corp. v. Olsen, 188 F.2d 522, 525 (2d Cir. 1951).
Both motions for summary judgment are denied on this issue of contract interpretation.
Bryant's Inventions Agreement assigned his rights, title, and interest in inventions "conceived or reduced to practice by me (alone or jointly by others) at any time during my employment with the Company." Proctor Dec., Ex. 124. Prior to the phase 1 trial, Mattel successfully argued that the phrase "at any time during my employment" extends to nights and weekends. (Dkt. 3285 at 5.) On appeal, the Ninth Circuit held that the term "at any time during my employment" was ambiguous. The parties' exclusion of inventions defined by Cal. Labor Code § 2870*fn5 did not necessarily evidence a mutual intent to capture everything else.
The Ninth Circuit's mandate forecloses this Court from deciding the issue at summary judgment. Concluding that "[e]xtrinsic evidence doesn't resolve the ambiguity," the court held that "[t]he issue should have been submitted to the jury." Ninth Circuit Op. at 10539; see also id. at 10540 (explaining that "Mattel might well convince a properly instructed jury that the agreement assigns works created outside the scope of employment" on remand); id. at 10548 (same).
No exception to the law of the case doctrine applies, because the Ninth Circuit's consideration of the extrinsic evidence was not erroneous, let alone "unreasonable," as MGA argues. For example, the Ninth Circuit cited the deposition testimony of Veronica Marlow, an independent contractor who both introduced Bryant to MGA and developed the Bratz fashions with three moonlighting Mattel employees. (See TX 05-0091-TX 05-0120; Proctor Dec., Ex. 67.) She testified "it was common knowledge" that Mattel employees did work on their own time, though she hesitated to name the employees who "worked for other companies." Deposition of Veronica Marlow, at 51:21-25. The fact-finder must measure the credibility of her testimony, possibly after determining whether her unwillingness to name names was reasonable.
Regardless, the additional extrinsic evidence cited by the parties does not resolve the ambiguity anyway. Bryant expressed concern that selling his sketches could interfere with his Mattel employment, but as Mattel elsewhere argues, his alleged breaches "are not limited to assigning rights to MGA that Mattel owns." (Dkt. 8679 at 16:4-7.) Indeed, Bryant testified at deposition that he thought he owned inventions he created on nights and weekends, though other Mattel employees felt otherwise. Bryant's intent is relevant to the extent it evidences the parties' mutual understanding, and Mattel's understanding turns on Kaye's credibility, which is undermined by his inability to explain why earlier versions of Mattel's inventions agreement used the phrase "at any time during the period of my employment" while Bryant's version only used the time "at any time during my employment."
Both motions for summary judgment on this issue of contract interpretation are denied.
II. Copyright Infringement
Mattel registered copyrights in Bryant's concept sketches, as well as two concept sculpts that Bryant allegedly created while working for Mattel. Declaration of Michael Moore, Exs. 1-28. Mattel claims that MGA, MGA HK, Larian, and Bryant "have reproduced, created derivative works from and otherwise infringed upon the exclusive rights of Mattel in its protected works without Mattel's authorization." 4AAC ¶ 145. MGA moves for summary judgment on two issues: (1) MGA's production sculpts, which served as the template for the dolls sold to market, did not infringe on Bryant's concept sculpts or sculpt sketches; and (2) MGA's Bratz doll products did not infringe on Bryant's concept sketches.
To prove copyright infringement, Mattel must establish that: (1) it owns copyrights in the concept sketches and sculpt; (2) MGA copied original elements of the copyrighted work. Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1076 (9th Cir. 2006) (internal citation and quotation marks omitted). Copying may be established by (1) direct evidence of the copying of original elements of the copyrighted work; or (2) access and substantial similarity "not only of the general ideas but of the expressions of those ideas as well." Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977); see also Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111, S.Ct. 1282 (1991)). Mattel's ownership of copyrights in the sketches and sculpt, as well as MGA's access to those works, are assumed for the purposes of this section.
A. There is No Direct Evidence of Infringement
Mattel claims there is a genuine issue of material fact as to whether MGA directly copied from Bryant's sketches and sculpt. It cites an MGA business plan stating that "[t]he Bratz are unique in many ways; their eyes are big with a hint of anim style; their lips are more pronounced, their feet and heads are oversized." A sculptor retained to work on the Bratz line testified that "Bryant's drawings have the factors that MGA say[s] are unique to the dolls, which is the oversized eyes, protrusive lips, and the diminished nose." MGA also conceded that Bryant's works inspired the dolls released to market.
Mattel's evidence of infringement is hardly direct. Testimony about MGA deriving inspiration from Bryant's sketches is prototypically circumstantial, and is incapable of rebutting evidence in the record that shows MGA's significant, independent investment in the design and development of the Bratz dolls. For example, it was MGAE's designers, not just Bryant, sent input to MGA's doll production team in Hong Kong. MGA also assigned the tasks of sculpt design, packaging, facial design, and fashions to individuals other than Bryant. All of these individuals participated in the production process and submitted input to MGA HK, which manufactured the dolls. See, e.g., Proctor Decl., Exs. 50-51, 66.
Mattel's evidence does not establish the copying of original elements. The oversized head, protrusive lips, and diminished nose found in Bryant's sketches are not original elements. Ninth Circuit Op. at 10543-10544 ("[M]any fashion dolls have exaggerated features . . . Moreover, women have often been depicted with exaggerated proportions similar to those of the Bratz dolls . . . The concept of depicting a young, fashion-forward female with exaggerated features, including an oversized head and feet, is therefore unoriginal as well as an unprotectable idea."). Evidence that MGA copied the unoriginal, exaggerated features found in Bryant's sketches does not establish infringement. Cf. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109 n. 3 (9th Cir. 1970) ("Thus, if United had copied only the textual materials, which were not independently copyrightable, United might have been able to do so with impunity."); see also Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989) ("A finding that a defendant copied a plaintiff's work, without application of a substantial similarity analysis, has been made only when the defendant has engaged in a virtual duplication of a plaintiff's entire work."); Situation Management Systems, Inc. v. ASP Consulting LLC, 560 F.3d 53, 58 (1st Cir. 2009) (requiring evidence of both factual copying and infringement of protected elements).
B. Substantial Similarity
Summary judgment must be granted where "no reasonable juror could find substantial similarity of ideas and expression viewing the evidence in the light most favorable to the nonmoving party." Id. A two part extrinsic/intrinsic test determines whether two works are substantially similar. See Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir. 1990). The extrinsic test requires an objective examination of concrete manifestations of the ideas and expression in the two works, while the intrinsic test requires a subjective evaluation, most often by the fact-finder, of the "'total concept and feel of the works.'" Cavalier v. Random House, 297 F.3d 815, 822 (9th Cir. 2002) (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994)).
The "extrinsic" test originally required a comparison of only the ideas expressed by the two works, but has since been augmented to include an objective examination of articulable similarities in both ideas and expression. Funky Films, 462 F.3d at 1077 (quoting Kouf, 16 F.3d at 1044).*fn6 This inquiry focuses on whether "the specific details of an author's rendering of ideas . . . standing alone, are substantially similar." Funky Films, 462 F.3d at 1078 (quoting Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002) and Cavalier, 297 F.3d at 822).*fn7 Specific details, or "protectable elements," do not include (1) scenes a faire that "necessarily result from the choice of a setting or situation,"; (2) purely utilitarian elements; and (3) elements of expression merged with the underlying idea. See Well-Made Toy Mfg. Corp. v. Goffa Intern. Corp., 210 F. Supp. 2d 147, 160-161 (E.D.N.Y. 2002); see also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994). Because both the extrinsic and intrinsic tests must be satisfied in order to prove substantial similarity, a "plaintiff who cannot satisfy the extrinsic test necessarily loses on summary judgment." Kouf, 16 F.3d at 1045.
A genuine issue of material fact exists as to whether MGA's Bratz Production Sculpt (TX 17733) infringed Bryant's sculpt (TX 1136), in which Mattel registered a copyright. Since "[t]he expression of an attractive young, female fashion doll with exaggerated proportions is  highly constrained," the protectable elements subject to an extrinsic analysis are few, and the standard to be applied at the intrinsic stage is virtual identity overall. Am. Ninth Cir. Op. at 10544 & n.9 ("When there are few protectable features not required by the underlying idea, applying the substantial similarity test to them is effectively the same as determining whether the dolls or doll sculpts are virtually identical overall.").
Both the Bratz production sculpt and Bryant's sculpt depict a young, female fashion doll with exaggerated proportions - an unprotectable idea. The Bratz production sculpt and Bryant's sculpt also share large heads, thick lips, high cheekbones, slim arms, long legs, and slim torsos, all of which are unprotectable features as they are required by the underlying idea.
A reasonable fact-finder could conclude that the protectable expression of the Bryant sculpt is substantially similar to the Bratz production sculpt. For instance, a reasonable jury could find that the precise shape, size, and placement of the ears on the Bratz Sculpt and the Bryant Sculpt are substantially similar. In particular, a jury could find that the inner ear cochlea separates from the outer ear in an identical manner on both sculpts. A jury could further find that the precise design of the nose is substantially similar, noting that both sculpts almost completely lack a nasal bridge. With respect to overall face shape, a reasonable jury could find that the rear-most point of the scalp on both sculpts similarly slopes down to the jaw at about a fifteen degree angle before immediately curving forward at about a five degree angle.
A reasonable jury could also find substantial similarity in the precise angles, measurements, and shapes of the sculpts' midsections. For example, although the sculpts have very small, defined waists, both have a slightly protruding, rounded lower stomach. Both sculpts also lack the roundness in the breast area that is common to many other fashion dolls with exaggerated, idealized proportions. Likewise, a reasonable jury could note substantial similarity in the uniquely rounded shoulders of both sculpts, as well as the way in which both sets of lower arms flare out from the body in an unnatural and unrelaxed state. Looking at the back of the sculpts, a reasonable jury could find substantial similarity in noticeable indentation that exists between both sculpts' shoulder blades. A view of the sculpts' profile reveals the dramatic S-shaped curve in both sculpts' spines.
Both on this illustrative list of substantial similarities in protectable elements of the sculpt, a genuine issue of material fact remains as to whether the Bratz Sculpt infringes Bryant's Sculpt.*fn9 MGA's request for summary judgment is therefore denied.*fn10
2. First Generation Dolls*fn11
MGA contends the first generation of Bratz dolls are not substantially similar to any of Bryant's sketches.
(a). First Generation Jade
There is a genuine issue of material fact as to whether there are articulable similarities between the first generation Jade doll and Bryant's Jade sketches. Both the doll and the sketches express the idea of a complete, young, hip female fashion doll who wears trendy clothing and exhibits a bratty look or attitude. The doll and sketches use exaggerated physical proportions to express this idea, including larger eyes, heads, lips and feet, longer legs, and skinnier torsos and limbs than found in nature; however, the mere fact of these exaggerated features is both unoriginal and an unprotectable idea. See Ninth Circuit Op. at 10546-10547; cf. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, 136 (2d Cir. 2004) ("An upturned nose, bow lips, and wide eyes are the 'idea' of a certain type of doll face. That idea belongs not to Mattel but to the public domain.").
The dolls and sketches nevertheless share many protectable features, including "fashions and hairstyles." Ninth Circuit Op. at 10547. Both the doll and the girl in the sketch don pink, midriff-baring, short sleeved t-shirts. On the center of the t-shirts is an emblem of a creature that appears to be a pink Cheshire-like cat with green eyes. Compare TX 1107 with TX 17551. The t-shirts are worn over a long-sleeved, off-pink shirt adorned with dark pink, light pink, and white polka dots. See id. The doll and the girl in the sketch wear olive-green, flared, non-denim pants with off-pink vertical piping that runs down the outer seam. See id. Both the doll and the girl in the sketch sport red sneakers decorated with pink accenting and a lip on the front of the shoe that curls upwards, and, to complete the look, shoelaces untied. See id. Both accessorize with a silver satchel with quilted accenting. The doll and the girl in the sketch complete their look with light-colored lipstick and lip liner, pinkish eyeshadow, and dark bangs that protrude from a flat-topped, pink-based, multi-colored hat with horizontal stripes and two pink thread-braid tassels dangling from the uppermost corners.
The doll and the girls in the sketches also share anatomical similarities unrelated to standard features of the underlying idea, especially with respect to the eyes. For example, the doll and sketches both depict three equidistant and identically shaped eyelashes, having an equal and triangular girth, on each doll eye, with each of the eyelashes protruding from the eyelid at identical angles. Compare Ex. 302 at MGA 006463 with TX 17551-001. Although the upper eyelid in Bryant's Jade sketches droops a little lower than on the doll, the dolls and sketches all lack a lower eyelid and the surface area between the top of the upper eyelid and the bottom of the upper eyelid is consistent across the eyelid between the sketches and doll. See id. The doll is also substantially similar to the sketches' particular expression of the eyes: the pupils are dilated in a nearly identical manner, with the pupils situated at the top center of the iris (these sketches apparently depict young female fashion dolls with defective vision), and the inner corner where the upper and lower eye lids meet sits at the center of the nose. Id.
To be sure, there are dissimilarities between the doll and sketches. For example, the doll wears rolled up pants made of a shiny fabric that resembles an alligator's skin. By contrast, the pants worn by the doll depicted in the sketch appear to be made of cotton, and fall over the shoes depicted in the sketch; the pants drawn in the sketch also feature prominent orange piping. The doll's shoes reveal more white cushioning on the outside of the shoe than the shoes depicted in the sketch. The satchel depicted in the sketch bears the word "Purrfect" and the doll's satchel has no lettering or otherwise narcissistic terms incorporating sounds commonly made by animals. The doll's lips are darker than the lips depicted in the sketch, and the doll's eyeshadow is two-toned and more dramatic than the eyeshadow depicted in the sketch. Finally, the girl depicted in the sketch has rosier cheeks and shorter hair (in pigtails) than the doll.*fn12
A reasonable fact-finder could easily conclude that there are articulable and substantial similarities between the protectable expression of the Jade sketch (Trial Exhibit 1107, 10638) and sculpt (Trial Exhibit 17551). MGA's request for summary judgment as to the first generation Jade doll is therefore denied.
(b). First Generation Cloe
There is likewise a genuine issue of material fact as to whether the first generation Cloe doll and Bryant's sketches are substantially similar in their expression of the underlying idea. Compare TX 1109, 771 with TX 13903-001. Both the doll and the sketches express the idea of a complete, young, hip female fashion doll who wears trendy clothing and exhibits a bratty look or attitude. The doll and sketches share exaggerated physical proportions, including larger eyes, heads, lips and feet, longer legs, and skinnier torsos and limbs than found in nature; however, the mere fact of these exaggerated features is both unoriginal and an unprotectable idea. See Ninth Circuit Op. at 10546-10547; cf. Goldberger Doll Mfg. Co., 365 F.3d at 136 ("An upturned nose, bow lips, and wide eyes are the 'idea' of a certain type of doll face. That idea belongs not to Mattel but to the public domain.").
A reasonable fact-finder could nevertheless conclude that the doll and sketches are substantially similar in their particular expression of these anatomical features. See id. ("But Mattel's copyright will protect its own particularized expression of that idea and bar a competitor from copying Mattel's realization of the Barbie features."). For example, both the girl depicted in the sketch and the doll have bright, cerulean eyes with dilated pupils centered on the upper half of the iris. Unlike the eye lids depicted on the Jade doll and in the Jade sketches, which maintain a consistent inward gradient where the upper and lower eye lids meet, both the Cloe doll and Bryant's Zoe sketch depict lower eye lids that drop at a steep gradient and then immediately flatten for the latter half of their approach to the center of the face. Moreover, in addition to the three eye lashes located on the outside corner of the upper eyelid (as found on the Jade doll and in the Jade sketches), the Cloe doll and Zoe sketch depict a patch of much smaller eye lashes that protrude from the outside corner of the lower eye lid (the doll's three eye lashes are evenly spaced but the eyelashes in the sketch appear to merge together).
The doll and the girls in the sketches also share non-anatomical features, including hairstyle and fashions. Both the sketch and doll depict a baby-blue, midriff-baring t-shirt adorned with sequined studding along the collar and the word "Angel" in cursive font in the center of the shirt; sparkling bell-bottom jeans with a fringe on the outer seams and a slit on the bottom outer ankle, which fall over the boots worn in the sketch and on the doll; and a baby-blue, bumpy, rubbery-textured belt with a square buckle. The doll is sold with a jacket worn in the sketch and both three button jackets have fold-over collars, rolled up sleeves, and fringes around the lower seam. Both jackets appear to be composed of the same sparkly denim fabric as the jean pants. The doll is sold with a pair of boots that, like the boots depicted in the sketch, are weighty and white, with an orange and brown buckle that falls on top of the foot. The sketch and the doll share a one-shouldered bag with a white base, teal piping, and a leopard-print flap that covers most of the front of the bag. The sketch and the doll share light blonde, long hair parted to the side and pulled back with a wide headband made of teal and gold fabric. Both have metallic-pinkish lip color, with noticeably contrasting, darker lip liner.
There are nevertheless certain differences between the doll and sketches. In the sketches, the lips are slightly parted, though the doll's lips remain closed. The doll's eyes are surrounded by blue eyeshadow, whereas the sketch's eyeshadow appears to be more grayish in color. The sketch's cheeks are more flushed than the doll's. The doll's attire also differs from the sketch's: the leopard-print flap on the doll's bag overlays a white background whereas the sketch's leopard-print bag overlays a tan background; the doll's buttons appear to be more metallic than the sketch's; the doll's shirt exposes more of her stomach; and the sketch's jacket displays more noticeable, defined stitching. In addition, the buckle on the Doll's belt is silver, and the buckle on the sketch's belt is baby-blue, like the rest of the belt.
A reasonable fact-finder could easily conclude that the Cloe doll and Bryant's Zoe sketches share many protectable features. MGA's motion for summary judgment is therefore denied as to the first generation of Cloe dolls.
(c). First Generation Yasmin
There is a genuine issue of material fact as to whether there are substantial similarities between the protectable elements of Bryant's Lupe sketch and the first generation Yasmin doll. Compare TX 1110 with TX 13901. Both the doll and the sketches express the idea of a complete, young, hip female fashion doll who wears trendy clothing and exhibits a bratty look or attitude. The doll and sketches share exaggerated physical proportions, including larger eyes, heads, lips and feet, longer legs, and skinnier torsos and limbs than found in nature; however, the mere fact of these exaggerated features is both unoriginal and an unprotectable idea. See Ninth Circuit Op. at 10546-10547; c.f. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, 136 (2d Cir. 2004) ("An upturned nose, bow lips, and wide eyes are the 'idea' of a certain type of doll face. That idea belongs not to Mattel but to the public domain.").
The doll also depicts certain non-anatomical features found in the sketch, including fashions and certain elements of the hair style. For instance, the doll and the girl in the sketch don a purple, midriff-baring tube top as well as flared, light-colored pants that fall over pure platform shoes. Both pairs of pants feature prominent stitching along the sides of the outer leg and a pattern at the very bottom of each leg. Both accessorize with a tan satchel cinched at the top with a drawstring bow and decorated with a purple-themed, intricate, geometric pattern. Both sport a suede, maroon/brown bandana with fashion-keyhole designs along the edge that is threaded with an exposed drawstring tied into a bow at the nape. Both wear their hair with two small braids featured towards the front of their heads amongst their flowing locks. And both wear a similar smoky-purple eye makeup and identical lipstick surrounded by dark brown lip liner.
The Yasmin doll also parallels Bryant's particularized expression of Lupe's anatomical features. Like the other first generation Bratz dolls and sketches, the Yasmin doll and the girl in the sketch share dilated pupils located in eyes partially covered by upper eyelids. The Yasmin doll and the girl in the sketch both have hazel eyes with a speck of blue, accentuated by four upper eye lashes, as well as eye lashes on the bottom corner of the bottom eye lid of only the left eye. And both have an identically located small dark mole below the left eye.
There are ways in which a fact-finder could nevertheless find that there relevant similarities between the Lupe sketch and Yasmin doll are not substantial. The speck of blue in the doll's eye is much smaller than in the sketch. Though the doll's upper lip is smaller than its lower lip, the opposite is true in the sketch. The sketch depicts a large necklace, though the doll wears no such accessory. Moreover, the doll's eyeshadow contains more shades of brown than the eyeshadow depicted in the sketch. Whereas the doll uses her brown bandana as a headband, with the exposed tan drawstring tied into a bow at the nape of the neck, the sketch wears the bandana as a sarong tied diagonally across the hips in the sketch. The doll's hair is longer and darker than the almost blonde hair depicted in the sketch, though the drawings on the back of the packaging for the Yasmin doll depict the character with lighter hair than the doll itself. The hair in the sketch is pulled back by a pair of barrettes, which the doll does not appear to own. The tube top worn by the doll is a pure magenta color, whereas the tube top depicted in the sketch is a darker purple with subtle pink striping. The doll's pants are khaki-colored, whereas the pants depicted in the sketch are white. The pattern on the bottom of the pants depicted in the sketch is geometric, with red orange, blue and yellow color themes. By contrast, the embroidery at the bottom of the doll's pants have two orange stripes and a floral pink and blue pattern. The platform clogs depicted in the sketch are open-toed, whereas the doll's platform clogs are closed-toed.
A reasonable fact-finder could easily conclude that the protectable details of the rendering of the underlying idea expressed by the sketch (Trial Exhibit 1110) and sculpt (Trial Exhibit 13901) are substantially similar. MGA's request for summary judgment as to the first generation Yasmin doll is therefore denied.
(d). First Generation Sasha
There is a genuine issue of material fact as to whether the first generation Sasha doll shares protectable elements of Bryant's Hallidae sketches. Compare TX 1108 and TX 3-5 with TX 17558. Both the doll and the sketches express the idea of a complete, young, hip female fashion doll who wears trendy clothing and exhibits a bratty look or attitude. The doll and sketches share exaggerated physical proportions, including larger eyes, heads, lips and feet, longer legs, and skinnier torsos and limbs than found in nature; however, the mere fact of these exaggerated features is both unoriginal and an unprotectable idea. See Ninth Circuit Op. at 10546-10547; cf. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, 136 (2d Cir. 2004) ("An upturned nose, bow lips, and wide eyes are the 'idea' of a certain type of doll face. That idea belongs not to Mattel but to the public domain.").
The doll nevertheless depicts protectable expression found in the sketch, including fashions and hair style. Both the sketches and the doll depict long-sleeved t-shirts with horizontal stripes on the sleeves with a burst of orange in the center. In another Bryant sketch, TX 3-5, Hallidae wears a similar ensemble comprised of a multicolored, striped, long-sleeved shirt overlaid with an orange puffy vest. Both the doll and sketch also depict long, oversized, flared denim skirts with cargo pockets, which fall over remarkably similar white, orange, and blue sneakers with oversized soles and untied white laces. Both also depict blue and orange backpacks that bear the term "hip hop" and, in a display of wit, pictures of bunny rabbits. Both depict long, kinky, black hair trapped underneath silver triangular hats made of a ribbed knitted material and topped with a poof ball. Both depict dramatically defined eyebrows and eyes covered in two-toned eyeshadow, and makeup that includes purple-toned lip liner and loud cheek paint.
There are some elemental differences between the doll and sketches, though the differences between TX 17558 and TX 3-5 are more defined than the differences between TX 17558 and TX 1108, which are minimal. TX 3-5 depicts brown-toned eyeshadow, whereas TX 1108 and the doll share purple-toned eyeshadow. The bunny rabbit on the backpack depicted in TX 3-5 is more cartoonish than the more realistic bunny rabbit on the backpacks depicted in TX 1108 and the doll (though the doll packaging depicts a bunny that is very similar to the bunny rabbit on TX 3-5's backpack). The hat depicted in TX 3-5 is orange with stripes, and covers the ears, whereas the hats worn in TX 1108 and on the doll are silver. The hair depicted in TX 3-5 is dredlocked, whereas the hair depicted in TX 1108 and on the doll is smoother and straight. With respect to differences in clothing, the t-shirt depicted in TX 1108's t-shirt shows the word "YUM", whereas the doll's shirt contains no words, images, or exclamations of satisfaction after a tasty treat. The pocket attached to the skirt depicted in TX 3-5 is located near the thigh, whereas the pockets depicted in TX 1108 and the doll are located near the calf. The pocket in sketch 3-5 is near the thigh, whereas the pocket in sketch 1108 is lower on the skirt, near the calf. Both TX 1108 and the doll depict a stitching indicating that the lower portion of the skirt can be removed to transform the skirt into a mini-skirt, but TX 3-5 does not appear to have that design. The shoes depicted in TX 3-5 differ from the shoes shared by TX 1108 and the doll, because the TX 3-5 depicts Timberland boots, whereas sneakers are worn by both TX 1108 and the doll.
A reasonable fact-finder could conclude that the Hallidae sketches and Sasha doll are substantially similar in not just the ideas depicted, but in the expression of those ideas as well. See Kouf, 16 F.3d at 1045 (summary judgment only appropriate if no reasonable fact-finder could find substantial similarity of ideas and expression). MGA's motion is therefore denied as to the first generation Sasha doll.
3. Subsequent Generation Dolls*fn13
In addressing the district court's errors, the Ninth Circuit stated that it "fail[ed] to see how the district court could have found the vast majority of Bratz dolls, such as 'Bratz Funk N' Glow Jade' or 'Bratz Wild Wild West Fianna,' substantially similar-even though their fashions are hair styles are nothing like anything Bryant drew-unless it was relying on similarities in ideas." Ninth Circuit Op. at 10547. Since the court must determine at the extrinsic stage whether "no reasonable juror could find substantial similarity of ideas and expression," Kouf, 16 F.3d at 1045 (emphasis added), the Ninth Circuit's inability to identify a basis for substantial similarity determination for dolls with distinct fashions and hair styles from Bryant's sketches disposes of the vast majority of Mattel's counter-claim as to the later generations of Bratz dolls.
Not only do the vast majority of the subsequent generations of Bratz dolls differ in their hair styles and fashions (the two elements identified by the Ninth Circuit), but they lack any meaningful similarities outside of ideas. Like Bryant's sketches, all of the subsequent generation Bratz dolls express the idea of a complete, young, hip female fashion doll who wears trendy clothing and exhibits a bratty look or attitude. The dolls also depict exaggerated physical proportions, including larger eyes, heads, lips and feet, longer legs, and skinnier torsos and limbs than found in nature; however, the mere fact of these exaggerated features is both unoriginal and an unprotectable idea. See Ninth Circuit Op. at 10546-10547; cf. Goldberger, 365 F.3d at 136 (2d Cir. 2004) ("An upturned nose, bow lips, and wide eyes are the 'idea' of a certain type of doll face. That idea belongs not to Mattel but to the public domain."). The similarities end there: with the exception of two subsequent generation dolls (identified below), the dolls sport distinct fashions; make up; jewelry; accessories; hair styles, colors, and sheens; eye colors and shapes; and eye lash shape, size, and texture; from Bryant's sketches. In its subsequent generation Bratz dolls, MGA unmistakably abandoned Bryant's particular expressions of the underlying idea.
Mattel nonetheless argues that "the proof of infringement is substantial" as to these subsequent generation dolls, relying upon a report prepared by its expert. See Declaration of Lee Loetz in Opposition to MGA MSJ. Mr. Loetz does not analyze the subsequent generation dolls on a doll by doll basis, but instead purports to provide exemplar comparisons of the placement and proportions of body parts, (id., Ex. B at 7), poses, (id., Ex. B at 9), facial elements, (id., Ex. B at 10), and clothing/accessories, (id., Ex. B at 12).
Mr. Loetz's report commits a number of logical errors that corrode the foundation for his analysis. First, Mr. Loetz attempts, on numerous occasions in his report, to show that "parallels between the drawings and doll faces are not coincidental, but the result of executing the drawings in the dolls." See, e.g., id., Ex. B at 12. Mr. Loetz confuses evidence of factual copying-which is relevant to a defense of inadvertent infringement-with copying of original elements of Bryant's works that are protectable. See Goffa Intern. Corp., 210 F. Supp. 2d at 159. So long as the parallels between the drawings and the subsequent generations of dolls were parallels in ideas or unprotectable expression, MGA was free to execute the drawings with impunity. Narell, 872 F.2d at 910.
Second, Mr. Loetz bases almost all of his conclusions about the subsequent generation dolls on the express basis of similarity between ideas and unprotectable elements. For example, Mr. Loetz states that the placement of the body landmarks in the subsequent generation dolls in similar to the placement of such landmarks in Bryant's sketches, a conclusion that is both factually wrong and irrelevant. The placement of anatomical features is, as Mr. Loetz admits, relevant to making a doll "look older or younger." Loetz Dec., Ex. B at 7. Elongating the body expresses a different idea about the "age and gender," since "[a]s the human body grows from child to adult, the body proportions lengthen from top to bottom." Id. Just as "slightly larger heads, eyes and lips; slightly smaller noses and waists; and slightly longer limbs" are elements that necessarily result from the idea of a young, fashion forward female, so too does the idea require "proportionally shorter bodies." A body with compressed proportions is not a protectable element of Bryant's sketches and Mr. Loetz admits as much.
Mr. Loetz commits this error again when he states that the manner in which the facial features are situated in the subsequent generation dolls is substantially similar to Bryant's drawings. He argues:
The proportional placement of features on the face of a doll design is a key factor in how the design develops its look. To vary the placement of features on a face is to change who the character will be. Think of the compressed features of a cute baby, and then think of the elongated features in a traditional 'evil witch' character face. There are endless variations in between.
Id. at 11 (emphasis added).
Each of the endless variations of facial features to which Mr. Loetz refers can express a different idea. Working within Mr. Loetz's "cute baby" to "evil witch" spectrum, different variations of facial features can express different ideas - e.g., a cute witch, an evil baby, a toddler, or an old woman. Mr. Loetz concedes, however, that the compacted features in Bryant's drawings were necessary to "create a pleasing attractive look," which is an unprotectable idea that is distinct from the other ideas expressed by the "endless variations" in the placement of facial features discussed in Mr. Loetz's report. Allowing Mattel to prevent others from depicting the placement of facial features that necessarily result from the idea of a young, fashion forward female with exaggerated features is tantamount to giving Mattel a monopoly over the idea itself. See Am. Ninth Circuit Op. at 17341 ("[F]ashion dolls that look like Patty and Selma Bouvier don't express the idea behind Bratz.").
Mr. Loetz also argues that the dolls are substantially similar to specific facial features found in Bryant's sketches, like lips that curve, "the look of a girl who has too much eye makeup on," oversized almond eyes, and angular eyebrows. Loetz Dec., Ex. B at 11-12. But these unoriginal features are all unprotectable elements of Bryant's work, because they belong to the underlying idea of a young, fashion-forward doll with exaggerated features and a bratty look or attitude. Cf. Ideal Toy Corp. v. Sayco Doll Corp., 302 F.2d 623, 627 (2d Cir. 1962) (Clark, J., dissenting) ("But is it so that one gets a 56-year copyright in normal arms and legs of a doll or in a hidden smile? This gives plaintiff a destructive power against competitors of unexplored extent. For a grin or a smirk in their otherwise dissimilar product may turn out to make them accountable as infringers."). The features discussed by Mr. Loetz (e.g., a heavily made-up young female) are unprotectable ideas and, for the reasons discussed below, the subsequent generation dolls are not substantially similar to Bryant's particular expression of these ideas. See Goldberger Doll Mfg. Co., 365 F.3d at 136 ("Mattel's copyright will protect its own particularized expression" of the idea of a certain type of doll face composed of "[a]n upturned nose, bow lips, and wide eyes").
The vast majority of Mr. Loetz's actual comparisons (see Loetz Dec., Ex. B, Ex. 1-25) concern the first generation of Bratz dolls. Those comparisons that attempt to compare the second generation Bratz dolls reveal the lack of similarity between the dolls and the protectable elements of Bryant's sketches. For example, exhibit 20 to Mr. Loetz's report includes a side-by-side comparison of the head of a subsequent generation Cloe doll with Bryant's Lupe sketch. Both the doll and sketch share large eyes, large parted lips, light colored hair, and heavily made up eyes, none of which are protectable elements. The particularized expression of each of these elements is not similar, let alone substantially similar: the lips are of a different shape and color, the eyes rounder, the eye lashes more numerous and spaced differently, the faces shaped differently, and the hair of a different color, sheen, and style. The comparison between a subsequent generation Sasha doll and Bryant's Hallidae sketch located at exhibit 21 of Mr. Loetz's report reveals even more dissimilarities in Bryant's particular expression of the unprotectable idea: the hairstyles, lips, eye lashes, and face shape, and skin tone are all different.
Mattel attempts to remedy these defects by pointing to Mr. Loetz's conclusion that the dolls have "a visual consistency from Carter Bryant's sketches, to the first wave of dolls, and through the later waves of Bratz dolls, even including the most recent 2010 Bratz dolls." Mattel Mot. at 40. Mr. Loetz's observation may have be relevant to an intrinsic examination, which involves "mere subjective judgment as to whether two  works are or are not similar." Shaw, 919 F.2d at 1357. Since "objective manifestations of creativity" must be examined in the "extrinsic" test, the absence of any similarity in protectable expression, from fashions, to hair styles, to facial features, make up, and the eyes, means that Mattel cannot show a genuine issue of material fact on the extrinsic test for the subsequent generation Bratz dolls.
Nevertheless, there are two subsequent generation dolls as to which an "indicia of sufficient disagreement concerning the substantial similarity of [the] two works" remains. Swirsky v. Carey, 376 F.3d 841, 846 (9th Cir. 2004) (internal citations omitted). First, a reasonable fact-finder could conclude that Ooh La La Cloe is substantially similar to the protectable elements of the sketch depicted in TX 5.051, TX 11810.001. Ooh La La Cloe likes to shop til she drops at "the world's most chic boutiques" and wears a fashion ensemble that resembles the ensemble depicted in the sketches: a plaid, short, A-line skirt with a ribbon around it; a midriff-baring, slightly scoop-necked shift worn underneath a cropped jacket with a flared collar, chest-level pockets, and exposed stitching; (differently adorned and shaped) knee-high boots; and a distinctively-shaped, pleated, somewhat floppy hat that falls to the middle of the forehead and tilts to one side in a loose manner. Second, a reasonable fact-finder could conclude that Formal Funk Dana is substantially similar to protectable elements to TX 3-4. Formal Funk Dana is dressed for the ball and, like the doll in the sketch, wears a midriff-baring, two-pieced gown that is cinched at the waist with a bow, a sequined top held up by two thin shoulder straps, and, to finish her look, a beaded, dangling, choker and drop-earrings, as well as a triangle, sequined tiara.
For the foregoing reasons, MGA's Motion is granted as to all subsequent generation Bratz dolls with the exception of Ooh La La Cloe and Formal Funk Dana.
III. Misappropriation of Trade Secrets
Mattel's third counter-claim seeks to hold MGA, MGA Mexico, Larian and Machado liable for misappropriating Mattel's trade secrets. Mattel alleges the illegal acquisition, use and disclosure of its trade secret materials, which include "documents, materials, designs, names, and other information stolen by Machado, Trueba, Vargas, Brisbois, Castilla, Cooney, Contreras, Brawer, other former Mattel employees, and other persons acting for, on behalf of or at the direction of MGA and/or Larian." 4AAC ¶ 134.
California's Uniform Trade Secrets Act proscribes the improper disclosure, acquisition or use of a trade secret. Cal. Civ. Code § 3426.1. The term "trade secret" is defined by the Act as:
[I]nformation, including a formula, pattern, compilation, program, device, method, technique, or process, that:
(1) Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure; and
(2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
Information derives independent economic value from not being generally known when its secrecy "provides a business with a 'substantial business advantage.'" Morlife, Inc. v. Perry, 56 Cal. App. 4th 1514, 1522 (1997) (quoting Klamath-Orleans Lumber, Inc. v. Miller, 87 Cal. App. 3d 458, 465 (1978)). Both parties request broad summary judgment rulings on the issue of whether Mattel's alleged trade secrets derived independent economic value from not being generally known. The arguments in the parties' briefs failed to discuss each identified trade secret with particularity, but the Court nevertheless did so. For the reasons that follow, the Court finds genuine issues of material fact as to independent economic value that the vast majority of Mattel's alleged trade secrets derived from not being generally known.
The determination of whether information is the subject of efforts that are reasonable under the circumstances to maintain its secrecy is fact specific. See Rockwell Graphic Sys., Inc. v. DEV Indus., Inc., 925 F.2d 174, 176-77 (7th Cir. 1991). It is relevant whether an employer "required its employees to sign confidentiality agreements respecting its trade secrets." See Mai Sys. Corp. v. Peak Comp., Inc., 991 F.2d 511, 521 (9th Cir. 1993). However, an employer's vague descriptions of exactly what it is that constitutes a trade secret renders the confidentiality agreement largely meaningless. Moreover, an employer's failure to mark documents as confidential or trade secret "precludes in many cases trade secret protection for those materials." Gemisys Corp. v. Phoenix Am., Inc., 186 F.R.D. 551, 559 (N.D. Cal. 1999) (citing Jensen v. Redevlopment Agency of Sandy City, 998 F.2d 1550, 1557 (10th Cir. 1993)). At the same time, it makes no sense to hold, as a matter of law, that the failure to mark documents as confidential precludes a finding of reasonable efforts, since the very employee that creates the trade secret at the employer's direction may be the individual who misappropriates it. On the basis of these principles, the Court finds genuine issues of material fact as to whether Mattel took reasonable efforts to maintain the secrecy of its trade secret materials. Although Mattel conducted extensive employee training, had its employees sign agreements, and controlled access to its databases, it often provided vague direction to its employees and in many circumstances failed to mark proprietary documents, including the documents that are at issue in this case, as confidential.
Mattel claims that the Bratz fashion doll concept is a trade secret, to which Mattel claims ownership under the assignment clause of the Inventions Agreement. The concept includes the group name Bratz, the four doll names Jade, Hallidae, Lupe, and Zoe, as well as the doll designs, fashions, themes, and marketing slogans in Bryant's pitch book. It is undisputed that Bryant disclosed the Bratz concept to MGA and shared his pitch book and concept sculpts with MGA while he was still employed by Mattel. (Bryant Tr. 2481:18-2482:5.) It is also undisputed that the dolls eventually released to market by MGA used the names Bratz and Jade.
1. MGA's Procedural Objection
On the grounds that a trade secret counter-claim predicated upon the acquisition, disclosure, and use of the Bratz concept implicated phase 1 issues, the Court refused to allow Mattel to allege the Bratz concept was a trade secret until the Ninth Circuit ruled on MGA's appeal from the post-phase 1 equitable relief. Following the Ninth Circuit ruling, Mattel timely moved to confirm the pendency of a trade secret misappropriation counter-claim predicated upon the disclosure, acquisition, and use of the Bratz fashion doll concept. On the basis of extensive briefing and oral argument, the Court granted Mattel's request. MGA "reiterates its objection to amendment of Mattel's pleading," and claims to have suffered prejudice as a result of Mattel's "change [in] legal theory," which MGA claims "violated the [Ninth Circuit's] mandate." (MGA MSJ at 25 & MGA Reply at n. 2.)
MGA's request for reconsideration of the two-month old order granting Mattel's motion to confirm is denied as untimely. United States v. Comprehensive Drug Testing, Inc., 473 F.3d 915, 928-29 (9th Cir. 2006). MGA's request for reconsideration is also denied because no "new material facts or a change of law occurring after the time" of the court's order compel a different outcome. Local Rule 7-18. To the contrary, the Court has since granted MGA a new trial on all phase 1 issues, eliminating the potential that Mattel's Bratz trade secret counter-claim will undermine the phase 1 jury's findings.
MGA's arguments are not just procedurally defective but predicated upon a paranoid misreading of trade secret law. MGA is specifically concerned that identifying the Bratz concept as a trade secret allows Mattel to (1) lose the contractual assignment issues discussed above and still capture the Bratz line; and (2) avoid the supersessive effect of California's Uniform Trade Secret Act. Neither concern is valid.
Mattel cannot prevail on a trade secret misappropriation counter-claim predicated upon the acquisition, disclosure, or use of the Bratz concept unless it proves it owned the concept. See Cytodyn, Inc. v. Amerimmune Pharmaceuticals, Inc., 160 Cal. App. 4th 288, 297 (2008) ("[A] prima facie claim for misappropriation of trade secrets 'requires the plaintiff to demonstrate [that it] owned [the] trade secret") (citation omitted).*fn14 Identifying the Bratz concept as a trade secret does not diminish, or even affect, Mattel's burden to prove that Bryant assigned his rights to the ideas and creative works that composed the Bratz concept. Of course, by proving the doll names Bratz and Jade are trade secrets, Mattel may defeat MGA's challenge to the existence of a property right in an idea. See Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210, 239 (2010) ("Information is not property unless some law makes it so."). But MGA already failed to convince the Ninth Circuit that ...