United States District Court, N.D. California
ORDER TO SHOW CAUSE
HAYWOOD S. GILLIAM, Jr., District Judge.
Plaintiff Alpi International, Ltd. ("Alpi") produces and sells soft foam and molded plastic toys known as "stress relievers." These squeezable toys come in a variety of shapes, and can be branded with corporate or other logos. Defendant Anga Supply, LLC ("Anga") is a direct competitor in the same business. Alpi alleges that eighteen of Anga's products infringe its copyrighted designs. Anga has moved for summary judgment on Alpi's claims, arguing: (1) that its products do not infringe as a matter of law; and (2) that Alpi has offered no evidence that the designers of Anga's toys had access to Alpi's designs prior to their creation. See Dkt. No. 46.
The Court has carefully considered the arguments and evidence offered by the parties, both in their written submissions to the Court and during the hearing on April 9, 2015. For the reasons discussed below, the Court ORDERS both Alpi and Anga to show cause why the copyrighted works they allege to be infringed in this case share protectable elements with the allegedly infringing works.
I. LEGAL STANDARD
Under Federal Rule of Civil Procedure 56(a), "the court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Material facts are those that may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is "genuine" if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party." See id. "[I]n ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden." Id. at 254. The question is "whether a jury could reasonably find either that the [moving party] proved his case by the quality and quantity of evidence required by the governing law or that he did not." Id. "[A]ll justifiable inferences must be drawn in [the nonmovant's] favor." See United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citation omitted).
The moving party must inform the district court of the basis for its motion and identify those portions of the pleadings, depositions, interrogatory answers, admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing motion for summary judgment "may not rest upon the mere allegations or denials of [that] party's pleading, but... must set forth specific facts showing that there is a genuine issue for trial." See Fed.R.Civ.P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need not show the issue will be resolved conclusively in its favor. See id. at 248-49. All that is necessary is submission of sufficient evidence to create a material factual dispute, thereby requiring a jury or judge to resolve the parties' differing versions at trial. See id.
A. Infringement of Alpi's Designs
i. Legal Standard for Establishing Copyright Infringement
"To distinguish between permissible lifting of ideas and impermissible copying of expression, [the Ninth Circuit has] developed a two-part extrinsic/intrinsic' test." Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 913 (9th Cir. 2010), as amended on denial of reh'g (Oct. 21, 2010) (citing Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994)). At the initial "extrinsic" stage, the court examines the similarities between the copyrighted and challenged works, determines whether shared elements are protectable, and identifies the standard to be applied at the intrinsic stage. Id. "For example, ideas, scenes a faire (standard features) and unoriginal components are not protectable" and thus cannot form the basis of an infringement claim. Id. When the unprotectable elements are "filtered out, " what remains is the author's protectable expression. Id. The Court then determines what standard will apply at the intrinsic stage based the breadth of possible expression. "If there's a wide range of expression... then copyright protection is broad' and a work will infringe if it's substantially similar' to the copyrighted work." See id. at 913-14 (citation omitted). In contrast, subjects that permit only a narrow range of expression warrant "thin" copyright protection, whereby a challenged work must be "virtually identical" to infringe. Id. (citations omitted).
If the allegedly infringing work and the copyrighted work share common protectable elements, the finder of fact (usually a jury) is asked to apply the standard for infringement determined by the Court during the extrinsic stage-either substantially similar or virtually identical, respectively-at the intrinsic stage. The intrinsic inquiry "examines an ordinary person's subjective impressions of the similarities between two works, [and] is exclusively the province of the jury." Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1077 (9th Cir. 2006) (citation omitted). However, a finding of similarity between two works "can't be based on similarities in unprotectable elements." Mattel, 616 F.3d at 916. "When works of art share an idea, they'll often be similar' in the layman's sense of the term.... The key question always is: Are the works substantially similar beyond the fact that they depict the same idea." Id. at 917.
ii. Protectable Elements of Alpi's Designs
In this case, the Court's analysis is stymied as soon as it begins. Alpi's Opposition did not identify any feature in its eighteen asserted designs that constitute an "original" element warranting even "thin" copyright protection. See Alpi Opp. at 1-4. Nor did Alpi identify any combination of unoriginal components that, when taken as a whole, "are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." Satava, 323 F.3d at 811. Instead, Alpi rests its entire opposition to Anga's motion for summary judgment on the conclusory assertion that "the similarities between [Alpi's] copyrighted works and [Anga's] accused products far outweigh any differences." Alpi Opp. at 2. In other words, Alpi does not engage, at all, with the relevant standard.
Alpi's failure stands in stark contrast to the showings made by plaintiffs pursuing infringement claims in this and other districts. See Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1077-78 (9th Cir. 2006) (plaintiff alleging infringement of television series identified similar plot points and characters); Craig Frazier Design, Inc. v. Zimmerman Agency, LLC, No. C 10-1094 SBA, 2010 WL 3790656, at *6 (N.D. Cal. Sept. 27, 2010) (noting artist's "specific use and style of shading on the duck bill" of stylized duck images shown in a variety of poses and perspectives); Aurora World, Inc. v. Ty Inc., 719 F.Supp.2d 1115, 1135 (C.D. Cal. 2009) (plaintiff alleging infringement of plush animal toys identified "large, round eyes, with large black pupils and colored borders.... placed close together on the front of each character's face, " and "recognizable stitching patterns, expressions, and color elements" as distinctive features warranting copyright protection). Under similar circumstances, the Ninth Circuit has found a plaintiff's inability to identify protectable elements fatal to its infringement ...