Tangle Inc. v. Aritzia, Inc.

698 F.Supp.3d 1180

TANGLE INC., Plaintiff, v. ARITZIA, INC., et al., Defendants.

Case No. 23-cv-01196-JSW

United States District Court, N.D. California

Signed October 18, 2023

Sean Phillips Rodriguez, Beko Osiris Ra Reblitz-Richardson, Boies Schiller Flexner LLP, San Francisco, CA, Anna Iskikian, Pro Hac Vice, John David van Loben Sels, Thoits Law, a Professional Corporation, Los Altos, CA, for Plaintiff.

John Paul Margiotta, Pro Hac Vice, Fross Zelnick Lehrman & Zissu, P.C., New York, NY, Brian Leary, Pro Hac Vice, Desmarais LLP, New York, NY, James Vincent Fazio, III, Gordon & Rees, San Diego, CA, for Defendants Aritzia, Inc., Aritzia LP.

John Paul Margiotta, Pro Hac Vice, Fross Zelnick Lehrman & Zissu, P.C., New York, NY, Brian Leary, Pro Hac Vice, Desmarais LLP, New York, NY, James Vincent Fazio, III, Gordon & Rees, San Diego, CA, Mark R. Conrad, Conrad | Metlitzky | Kane LLP, San Francisco, CA, for Defendant United States of Aritzia, Inc.

ORDER GRANTING DEFENDANTS' RENEWED MOTION TO DISMISS WITHOUT PREJUDICE

Re: Dkt. No. 42

JEFFREY S. WHITE, United States District Judge

Now before the Court is Defendants Aritzia, Inc., Aritzia LP, and Unites States of Aritzia, Inc.'s (collectively, "Defendants") Renewed Motion to Dismiss. The Court has considered the parties' papers, relevant legal authority, the record in this case, and oral argument. For the following reasons, the Court hereby GRANTS Defendants' motion and DISMISSES Plaintiff Tangle Inc.'s ("Tangle") Second Amended Complaint ("SAC") WITHOUT PREJUDICE.

BACKGROUND

Tangle is a toy manufacturer and distributor incorporated in California. (SAC ¶¶ 16, 17.) Tangle holds copyrights for nine sculptural works which Tangle alleges were infringed by Defendants.¹ (SAC ¶ 16.) Each of Tangle's registered works is a kinetic sculpture made of seventeen or eighteen interlocking, 90-degree curved pieces.

Coiled Tangle (17 sections), VA 120-368

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Zawitz Tangle Ornamental Sculpture No. I, VAu 35-387

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Zawitz Tangle Ornamental Sculpture No. II, VAu 35-390

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Zawitz Tangle Ornamental Sculpture No. III, VAu 35-389

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Zawitz Tangle Ornamental Sculpture No. IV, VAu 35-392

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Zawitz Tangle Ornamental Sculpture No. V, VAu 35-388

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Zawitz Tangle Ornamental Sculpture No. VI, VAu 35-391

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Tangle sells replicas of its sculptures at authorized dealers, including the Museum of Modern Art's Design Store. (SAC ¶¶ 13, 35.) Tangle also sells toy Tangle sculptures in pink chrome, as well as variations that light up, have textured pieces, or attach to key chains. (Id. ¶¶ 12, 33.) These toy pieces are not copyrighted.

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Defendants are Canadian entities located in Vancouver. (Id. ¶¶ 18-20.) Tangle alleges that Defendants collectively own 121 apparel retail stores, 49 of which are located in the United States. (Id. ¶ 21.) Defendants dispute which entity owns the stores, but for ease of reference, the Court will refer to the retail stores as "Aritzia."

In Spring 2023, Aritzia began displaying chrome pink sculptures made of eighteen interlocking, 90-degree curved pieces in its storefronts. (Id. ¶¶ 40, 43, 59.) Defendants also featured or permitted others to feature videos and photos of the sculptures on social media. (Id. ¶ 41.) Plaintiff's estimation of the number of Aritzia's sculptures varies in different parts of the SAC, from "approximately 100" to "perhaps more than 300." (Id. ¶¶ 2, 5.)

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Tangle claims that Aritzia's displays were recognized by the media and public as Tangle sculptures. (Id. ¶¶ 7-8.) Tangle alleges that Aritzia intentionally copied Tangle's protected works and used Tangle's unregistered trade dress. (Id. ¶¶ 49, 54.) Tangle alleges actual consumer confusion, including a social media comment in which a user described the Aritzia sculptures as "a giant Tangle toy!" (Id. ¶ 8.) Accordingly, Tangle brings a claim for copyright infringement in violation of 17 U.S.C. § 101, et seq., and infringement of trade dress in violation of 15 U.S.C. § 1125(a).

Defendants move to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) on the basis that Tangle seeks to protect an unprotectable idea rather than protectable expression. Additionally, Defendants argue that the Court does not have personal jurisdiction over Aritzia, Inc., and they seek dismissal of Aritzia, Inc. pursuant to Federal Rule of Civil Procedure 12(b)(2).

ANALYSIS

A. Legal Standard on a Motion to Dismiss.

A complaint must contain a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). "[D]etailed factual allegations are not required" to survive a motion to dismiss if the complaint contains sufficient factual allegations to "state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (citing Bell Atl. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). "Labels and conclusions[ ] and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555, 127 S.Ct. 1955.

When a party moves to dismiss for failure to state a claim under Rule 12(b)(6), a district court accepts as true all well-pleaded material facts and draws all reasonable inferences in favor of the plaintiff. Faulkner v. ADT Servs., Inc., 706 F.3d 1017, 1019 (9th Cir. 2013). If the allegations are insufficient to state a claim, a court should grant leave to amend unless the court determines the pleading could not "possibly be cured by the allegation of other facts." Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir. 2000).

Where a party moves to dismiss for lack of personal jurisdiction under Rule 12(b)(2), "the plaintiff bears the burden of demonstrating that jurisdiction is appropriate." Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). The plaintiff must produce sufficient admissible evidence that, if believed, would establish personal jurisdiction. Id.

B. Tangle Has Not Plausibly Alleged Copyright Infringement.

In order to plead a claim for copyright infringement, Tangle must plausibly allege that (1) it owns a valid copyright, and (2) Defendants copied protected aspects of the copyrighted work's expression. Rentmeester v. Nike, Inc., 883 F.3d 1111, 1116-17 (9th Cir. 2018) (citing Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990)).

Defendants argue that Tangle seeks to monopolize the idea of sculptures made of interlocking tubular shapes, and that their use of interlocking tubular art infringes Tangle's registered works only if the copying is "virtually identical." Tangle responds that it seeks protection over a combination of choices—18 interlocked, 90-degree, curved pieces in pink chrome—that together constitute protectible expression. Tangle argues that, because its sculptures may be manipulated into different positions, its copyright extends to all sculptures consisting of 18 interlocking 90-degree curved pieces, and that any variations in size, finish, or positioning are protected derivative works. According to Tangle, Aritzia's displays infringed the "core expression" embodied in the seven copyrighted works.

1. Tangle Has Not Adequately Alleged Valid Copyrights.

In order to allege a valid copyright, a plaintiff must allege that the work is "original," meaning that "it possesses at least some minimal degree of creativity." Feist, 499 U.S. at 345, 111 S.Ct. 1282. "The vast majority of works make the grade quite easily, as they possess some creative spark, 'no matter how crude, humble or obvious.' " Id. (quoting 1 M. Nimmer & D. Nimmer, Copyright § 1.08[C][1]). Copyright does not "extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b). Ideas and "expressions that are standard, stock, or common to a particular subject matter or medium are not protectable under copyright law." Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003). Additionally, it is a prerequisite to copyright protection that the expression be "fixed." Kelley v. Chicago Park Dist., 635 F.3d 290, 303 (7th Cir. 2011).

Courts often struggle to locate the "faint line" between protectable expression and unprotectable ideas. Satava, 323 F.3d at 807; see Sid & Marty Krofft TV Prods. v. McDonald's Corp., 562 F.2d 1157, 1168 (9th Cir. 1977) (quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971)) ("The difficulty, as we have noted, is that on this record the idea and its expression appear to be indistinguishable. There is no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both.").

Tangle attached copyright registrations for nine works to its SAC and alleged that all of Aritzia's displays infringed all nine works. At oral argument, Tangle stated, "if you have the 17 or 18 interlocking segments of the same size, then any configuration of them, provided that the - the embodiment can be manipulated along the same axes, yes, it - it will be infringing." (Dkt. No. 55, at 24.) Tangle conceded two of the nine alleged copyrighted works were not infringed, and it argued the "core expression" was the original three-dimensional sculpture and that the other registered sculptures were derivative works. (See id. at 21.) Tangle also contended that any works with chrome finish are derivative works protected by the registration with the silver chrome...