Case Title and Citation: Gorski v. The Gymboree Corporation. Case No. 14-CV-01314-LHK.
Court: United States District Court, N.D. California, San Jose Division (2014).
Document status: Order Granting in Part and Denying in Part Defendant’s Pre-Trial Motion to Dismiss
Issue or relevant point: 1. Can the court make a finding of non-infringement while considering a motion to dismiss? 2. Does Plaintiff’s complaint sufficiently plead ‘substantial similarity’ between protectable elements and the alleged copying?
Ruling or Findings: Yes – courts have authority to find non-infringement when considering a pre-trial motion to dismiss. In this case, the copyright claim was dismissed because the Plaintiff had not plead sufficient facts to show infringement; however, the court granted the Plaintiff the option to file an amended complaint.
Plaintiff Gorski makes t-shirts and other apparel which she sells in the SoHo neighborhood of New York and online via websites like etsy.com and supermarkethq.com. One of the designs she sells is a graphic of the phrase “Lettuce Turnip the Beet,” which she copyrighted and ultimately registered in 2011.
In 2014, Defendant Gymboree began selling a child’s shirt featuring the same phrase in its stores and through various online outlets. Gorski sued for copyright infringement and other related claims. Defendant Gymboree filed a motion to dismiss alleging that Plaintiff had inadequately pled ‘substantial similarity’, as she had failed to identify any protected elements that were copied in her Complaint.
The Court’s Authority
In the Ninth Circuit, there is “ample authority for holding that when the copyrighted work and the alleged infringement are both before the court, capable of examination and comparison, non-infringement can be determined on a motion to dismiss.”
As noted in our Summary of Krofft v. McDonalds, courts in the Ninth Circuit use both extrinsic and intrinsic tests to determine copyright infringement. Here, the Court first considered the extrinsic test, which was described as being a three-step process: i) a plaintiff must identify the source of the similarity, ii) a court must determine with analytic dissection and, if necessary, expert testimony, whether the allegedly infringed elements are subject to copyright protection, and iii) the court must determine whether there is "substantial similarity" between the protectable elements of the copyrighted work and the allegedly infringing work.”
The Plaintiff passed the first step of the extrinsic test by arguing in her complaint that “the overall arrangement, shapes, typefaces, sizes and placement of the design elements” were similar between her own design and the Defendant’s, thus identifying the source of the infringement.
However, the Court noted the second step requires the Plaintiff to identify specifically what copyrighted elements have been infringed upon, which was viewed insufficient here as the Court noted, “[s]hort phrases, no matter how distinctively arranged, are not protectable elements.”
Even though Plaintiff had copyrighted the designs, she could not claim copyright over the phrase “Lettuce Turnip the Beat,” and so she could not pass the second step of the extrinsic test. Because all of the similarities between the two products that Gorski alleged in her Complaint related only to an arrangement of a short phrase, the allegedly similar features were found unprotected by copyright. The Ninth Circuit's extrinsic test for substantial similarity requires the Court to "filter out and disregard the non-protectable elements" and compare only the protectable elements, for which there were none here.
The Court thus felt the complaint was not pleaded in an adequate manner to pass the extrinsic test. However, the Court did grant the Plaintiff leave to amend her Complaint, presumably in the off chance she could make a pleading with regard to protectable elements beyond the mere short phrase.
This case followed precedent in allowing a finding of non-infringement to be made in response to a motion to dismiss. The Court applied the extrinsic test to analyze Plaintiff’s claim and determined the Defendant was correct in arguing the Plaintiff had not sufficiently demonstrated what copyrighted elements she was alleging substantial similarity of. That is, in regard to the main thrust of her allegation that the Defendant had copied the phrase “Lettuce Turnip the Beet,” courts have ruled previously that short phrases or slogans are not subject to copyright protection.
 The Court did consider the intrinsic test