Los Angeles, CA — January 2012
LTL wins yet another Ninth Circuit appeal—its fourth straight victory in the Ninth Circuit since 2009. On January 26, 2012, the Ninth Circuit affirmed a grant of summary judgment that LTL obtained for its client, the defendant in a copyright and trade dress lawsuit. Firm partner Enoch H. Liang – together with attorney Daniel Taylor – defended Bedrosian’s (in Orange County) and Hirsch Glass Company (in New Jersey) both before the District Court and the Ninth Circuit. The plaintiff was represented by noted intellectual property boutique Christie Parker & Hale.
As reported in LTL’s June 2010 press release, the District Court granted LTL’s motion for summary judgment on Plaintiff’s trade dress claims in mid-2009. Then, in September 2009, less than 4 days before a jury trial was scheduled to begin, the District Court also dismissed Plaintiff’s 17 copyright claims. In July 2010, Plaintiff appealed to the Ninth Circuit, arguing that the District Court erred in both (1) holding that the scope of Plaintiff’s copyrights were “thin,” and (2) finding that “there is no substantial similarity (much less virtual identity) insofar as the protectable items are concerned as between Plaintiff’s copyrighted products and Defendants’ glass tiles.”
After extensive briefing, on January 13, 2012, LTL Partner Enoch Liang argued the case, defending the District Court’s ruling. Less than two weeks after the oral argument, the Ninth Circuit—Judges W. Fletcher, Fisher, and Zouhary—issued their unpublished opinion. The Ninth Circuit held that “protection over [plaintiff’s] designs is thin.” The Court further held that the defendants’ designs “are not ‘virtually identical’ to [plaintiff’s designs] because the streaking effect, color blends, and appearance of randomness in [defendant’s] designs are different . . . .”
This decision reaffirms the importance of a two-pronged strategy in copyright infringement actions. Often, the issue of infringement is determined by the “scope” of the copyright that the court determines as a matter of law. Hence, in litigating copyright matters, plaintiffs should pay particular attention to avoid falling into various limiting doctrines that may limit the scope of their copyrights. Defendants should do the opposite.