FILED

NOT FOR PUBLICATION

JAN 08 2018

UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

SOPHIA & CHLOE, INC., a California No. 15-56867 corporation, D.C. No. Plaintiff-Appellee, 3:12-cv-02472-AJB-KSC

v.

MEMORANDUM*

BRIGHTON COLLECTIBLES, LLC, a California corporation,

Defendant-Appellant.

SOPHIA & CHLOE, INC., a California No. 16-55681 corporation, D.C. No. Plaintiff-Appellant, 3:12-cv-02472-AJB-KSC

v.

BRIGHTON COLLECTIBLES, LLC, a California corporation,

Defendant-Appellee.

Appeal from the United States District Court for the Southern District of California

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Anthony J. Battaglia, District Judge, Presiding

Argued and Submitted October 2, 2017 Pasadena, California

Before: RAWLINSON and N.R. SMITH, Circuit Judges, and KORMAN,** District Judge.

1. In an action for copyright infringement, the district court must determine

whether to instruct the jury to apply the “substantially similar” standard or the

more exacting “virtually identical” standard. Mattel, Inc. v. MGA Entm’t, Inc., 616

F.3d 904, 913-14 (9th Cir. 2010), as amended on denial of reh’g (Oct. 21, 2010).

Given that others may freely copy a work’s ideas (and other unprotectable elements), we start by determining the breadth of the possible expression of those ideas. If there’s a wide range of expression (for example, there are gazillions of ways to make an aliens-attack movie), then copyright protection is “broad” and a work will infringe if it’s “substantially similar” to the copyrighted work. If there’s only a narrow range of expression (for example, there are only so many ways to paint a red bouncy ball on blank canvas), then copyright protection is “thin” and a work must be “virtually identical” to infringe.

Id. (internal citations omitted). Thus, if there are only a few ways to express the

idea contained in the Buddha’s Kiss earring, then the appropriate standard is

“virtually identical.” Whereas if there are numerous ways to express the idea in the

Buddha’s Kiss earring, then the appropriate standard is “substantially similar.”

** The Honorable Edward R. Korman, United States District Judge for the Eastern District of New York, sitting by designation. 2 The Buddha’s Kiss earring does not contain any individual protectable

elements. However, “[o]riginal selection, coordination, and arrangement of

unprotectible elements may be protectible expression.” L.A. Printex Indus., Inc. v.

Aeropostale, Inc., 676 F.3d 841, 849 (9th Cir. 2012), as amended on denial of

reh’g and reh’g en banc (June 13, 2012). The United States Copyright Office

rejected Sophia & Chloe’s initial copyright application, reasoning that the

Buddha’s Kiss design did not contain “sufficient creative authorship within the

meaning of the copyright statute and settled case law.” Sophia & Chloe submitted a

request for reconsideration, arguing that the Buddha’s Kiss was entitled to

copyright protection, because it selected and arranged three common,

unprotectable elements: (1) the henna symbol for the word kiss; (2) the image of

the Buddha; and (3) the teardrop shape. Based on this argument, the Copyright

Office granted Sophia & Chloe its copyright but noted that the Buddha’s Kiss

contained a “sufficient, although minimal, amount of original and creative

sculptural authorship in the treatment and configuration of its elements.” (emphasis

in original). Thus, the Buddha’s Kiss contains a single protectable idea: a teardrop-

shaped earring incorporating the henna symbol for the word “kiss” and the shape

of the Buddha.

3 Like the idea of painting “a red bouncy ball on blank canvas,” there are a

limited number of ways to design a teardrop-shaped earring incorporating the

henna symbol for the word kiss and the shape of the Buddha. See L.A. Printex, 676

F.3d at 851. The dissent is correct that there are numerous ways to design an

earring, but then misses the relevant question: whether there are many or few ways

to design a teardrop-shaped earring incorporating the henna symbol for the word

“kiss” and the shape of the Buddha. Because there are only a few ways to design an

earring that incorporates those three elements, the district court erred in instructing

the jury to apply the “substantially similar” standard.

Sophia & Chloe admitted at oral argument that it could not meet the

“virtually identical” standard. Therefore, we reverse and remand for the district

court to reconsider its denial of Brighton’s request for attorney’s fees under the

Copyright Act.

2. After the district court considered Brighton’s motion for attorney’s fees

under the Lanham Act, we overruled much of our precedent related to awarding

attorney’s fees under the Act. SunEarth, Inc. v. Sun Earth Solar Power Co., 839

F.3d 1179, 1181 (9th Cir. 2016). Thus, we vacate the district court’s order and

remand so that the district court can make a decision based on the legal standard

articulated in SunEarth.

4 The parties shall bear their own costs on appeal.

REVERSED in part, VACATED in part, and REMANDED.

5

FILED

Sophia & Chloe, Inc. v. Brighton Collectibles, LLC

JAN 08 2018

Case Nos. 15-56867 and 16-55681 Rawlinson, Circuit Judge, dissenting: MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

There are an infinite number of ways earrings can be configured to capture a

particular image. Otherwise, no woman would be motivated to own more than a

few pair of earrings. But we know that is not the case. See Women’s Earrings,

Amazon.com, https://www.amazon.com/Womens-Earrings/b?ie=UTF8&node=

7454917011 (last visited December 13, 2017) (offering 185,584 earring

selections). I seriously disagree with my colleagues in the majority that there were

only a limited number of ways to depict the Buddha’s Kiss earrings at issue in this

case.

At trial, evidence was presented through diagrams, expert testimony and

actual pieces of both designs. After seeing this evidence, a jury determined that

Brighton Collectibles had infringed on the copyrighted Buddha’s Kiss design. The

district court denied Brighton’s renewed motion for judgment as a matter of law.

The majority reversed the district court’s ruling on the basis that, because there is

only a limited number of ways to depict the Buddha’s Kiss design, the court should

have instructed the jury to find that the two designs were virtually identical rather

than substantially similar. I disagree.

Indeed, the majority’s conclusion is directly contrary to the testimony of the

1 designer. She testified that “the minute [she] looked at the [Buddha’s Kiss shape]

[she] thought [she] could manipulate this shape thousands of different ways.” She

explained that “[t]here are so many different things I could do with this [Buddha’s

Kiss shape]– big, small, multiple, three, ten, whatever.” She also explained that

the bracket portion of the earring “can be all different shapes” and “have all sorts

of dimensions.” The majority’s conclusion that there is only a limited number of

ways to depict the Buddha’s Kiss design completely ignores this testimony and the

reality of earring design. The majority accuses me of ignoring the relevant

question, but the majority ignores the relevant answer from the designer: that the

Buddha’s Kiss shape could be manipulated “thousands of different ways.”

We addressed a similar situation in L.A. Printex Indus., Inc. v. Aeropostale,

Inc., 676 F.3d 841 (9th Cir. 2012). L.A. Printex involved a floral fabric print

design. See id. at 850. Even though the floral pattern itself was not protectible, the

“original selection, coordination, and arrangement” of the floral pattern was

protectible. Id. The same is true for the Buddha’s Kiss earrings. As the designer

testified, her “selection, coordination and arrangement” of the design elements was

original and protectible. Id.

I respectfully dissent.

2