USCA Ninth Circuit, September 16, 2009
- In copyright infringement action, Ninth Circuit affirms grant of judgment as a matter of law, holding that plaintiff failed to show access to the copyrighted work based on alleged wide dissemination of its Spoiled Brats designs on its booths at county fairs, on Spoiled Brats T-shirts, which served as “walking billboards, or via plaintiff’s website, where the site took two minutes to fully load, did not contain meta-tags that would have directed someone to the website using a search engine, and a viewer would have to scroll down the webpage to see the allegedly infringed designs
Since 1993, plaintiff created air-brushed pictures on T-shirts of “Spoiled Brats” characters with oversized eyes, heads and feet, makeup and bare midriffs that resemble defendant’s Bratz dolls. Plaintiff sold its T-shirts primarily from a booth at several county fairs in California, a few individual Wal-Mart stores and on its website. Plaintiff never advertised in broadcast or print media, but it did display the Spoiled Brats characters on its county fair booths.
After defendant began selling its Bratz dolls in 2001, plaintiff filed suit for copyright, trademark and trade dress infringement. A jury found for defendant on the trademark infringement claim and the district court granted defendant’s motion for judgment as a matter of law on the copyright and trade dress infringement claims.
As a threshold matter, the Ninth Circuit held that the filing deadline in Federal Rule 50(b), which allows a party to file a motion for judgment as a matter of law after a judge dismisses the jury, is not jurisdictional and thus it can be waived or forfeited. Because the plaintiff did not object to the defendant’s untimely Rule 50(b) motion before the district court, the Ninth Circuit held that the plaintiff forfeited its right to challenge defendant’s motion as untimely.
The Ninth Circuit affirmed the district court, holding that plaintiff failed to demonstrate that defendant had access to plaintiff’s work. The court stated that a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work. Where there is no direct evidence of access, circumstantial evidence can be used to prove access either by (1) establishing a chain of events linking the plaintiff’s work and defendant’s access, or (2) showing that the plaintiff’s work has been widely disseminated.
Looking at the first method of proof by a chain of events, the court held that plaintiff could not prove access through a claim that there was a chance that an MGA decision-maker attended one of the county fairs where plaintiff had a booth because that chance did not create more than a bare possibility of a chain of events linking the plaintiff’s design to the defendant. There was no direct evidence the employee saw plaintiff’s booth or visited the Los Angeles County Fair during the relevant period.
The court also held that plaintiff failed to show it widely disseminated its copyrighted works. Plaintiff claimed that it widely disseminated its works in three ways: (1) on the plaintiff’s booth itself, (2) on Spoiled Brats T-shirts, which served as “walking billboards,” and (3) via the Internet.
The court was not persuaded by plaintiff’s arguments. Although plaintiff presented evidence that millions of people attended the relevant county fairs, there was no evidence that significant numbers of passersby would notice plaintiff’s booth among the many other similar booths at the fair or be able to view the Spoiled Brats displays. The court also rejected plaintiff’s “walking billboard” argument, noting that plaintiff sold only 2,000 T-shirts each year and plaintiff provided evidence of only one sighting of an individual wearing one of plaintiff’s T-shirts, and that sighting was by the owner of plaintiff and designer of Spoiled Brats.
Regarding wide dissemination by the Internet, the court said that “[a]lthough we recognize the power of the Internet to reach a wide and diverse audience, the evidence here is not sufficient to demonstrate wide dissemination.” Plaintiff launched its website in 1996, during the early years of common Internet use. The image-heavy website took two full minutes to fully load. The Spoiled Brats design was only one of several images on the page. Viewers would not see the Spoiled Brats design without scrolling down on the page. And the webpage did not include meta-tags that would identify plaintiff’s website to Internet search engines. As a result, a potential viewer who typed “Spoiled Brats” into a search field would likely not encounter plaintiff’s website. According to the court, a “website with such limitations could not have widely disseminated the copyrighted Spoiled Brats material.”
Turning to plaintiff’s claim that MGA infringed its trade dress, the court stated that “[t]o prove trade dress infringement, a plaintiff must demonstrate that (1) the trade dress is nonfunctional, (2) the trade dress has acquired a secondary meaning, and (3) there is a substantial likelihood of confusion between the plaintiff’s and defendant’s products.” The court held that plaintiff failed to demonstrate that its trade dress had acquired secondary meaning. The court therefore affirmed the judgment as a matter of law on the copyright claim and trade dress infringement claims. The court found that plaintiff largely reiterated its widespread dissemination arguments in support of its attempt to show secondary meaning, and this evidence was not sufficient for that purpose. The court further held that a reasonable jury could not have found secondary meaning based solely on five years of use or based on evidence of actual confusion by witnesses who had a personal relationship with the plaintiff’s founder.