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.
Background
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.”[1]
Copyright
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.”[2]
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.”[3]
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.[4] 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.
The Gist
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.
[4] The Court did consider the intrinsic test