Ninth Circuit reverses denial of renewed motion for judgment as a matter of law, holding that district court should have instructed jury to apply “virtually identical” standard instead of “substantial similarity” standard to plaintiff’s claim that defendant infringed its earring design copyright.

Plaintiff Sophia & Chloe Inc. designs and sells women’s jewelry, including what it markets as its “Buddha’s Kiss” earring. Sophia & Chloe sought and obtained copyright protection for that earring’s design on the basis of its original selection and arrangement of “three common, unprotectable elements: (1) the henna symbol for the word kiss; (2) the image of the Buddha; and (3) the teardrop shape.” In granting Sophia & Chloe’s copyright application, the U.S. Copyright Office noted that the design contained a “sufficient, although minimal, amount of original and creative sculptural authorship in the treatment and configuration of its elements.”

Sophia & Chloe commenced an action in 2012 against apparel company Brighton Collectibles LLC, asserting a copyright infringement claim in which it alleged that Brighton copied its design for the “Buddha’s Kiss” earring. The case proceeded to a four-day jury trial in 2015, at the conclusion of which the district court instructed the jury to apply the “substantial similarity” standard to Sophia & Chloe’s infringement claim. Applying this standard, the jury found that Brighton had infringed Sophia & Chloe’s design. Following the verdict, Brighton made a renewed motion for judgment as a matter of law seeking to overturn the verdict, but the district court denied that motion. Brighton appealed, and the Ninth Circuit reversed and remanded.

A divided panel on the Ninth Circuit held that the district court instructed the jury to apply the wrong standard to Sophia & Chloe’s infringement claim. The “substantial similarity” standard, it stated, applies when there are “numerous ways to express” an idea in a creative work — for example, in the case of “an aliens-attack movie,” which can be made in “gazillions of ways.” The Ninth Circuit held that the lower court instead should have instructed the jury to apply the more exacting “virtually identical” standard, which applies when there is “only a narrow range of expression” for the idea embodied in an allegedly infringed work, and copyright protection for such work is therefore “thin.” Relying in part upon the basis for the Copyright Office’s grant of protection to the “Buddha’s Kiss” design, the Ninth Circuit held that the earring design “contains a single protectable idea: a teardrop-shaped earring incorporating the henna symbol for the word ‘kiss’ and the shape of the Buddha,” and that “there are only a few ways to design an earring that incorporates those three elements.” Noting that Sophia & Chloe had admitted at oral argument that it could not demonstrate the earrings were “virtually identical,” the Ninth Circuit reversed the denial of Brighton’s renewed motion for judgment as a matter of law and remanded the case to the district court.

A single judge on the panel dissented, disagreeing with the majority’s conclusion that there were a limited number of ways to depict the “Buddha’s Kiss” design and pointing to testimony from the earring’s designer that she could manipulate the shape of the earring in “thousands of different ways.”