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Jurisdiction “Found”: Navigating E-Commerce Boundaries in Copyright Disputes

by | Oct 24, 2024 |

In a copyright case, the US Court of Appeals for the Tenth Circuit determined that the district court had jurisdiction over two Chinese companies that consented to jurisdiction in any judicial district in which a third-party e-commerce company could be “found.” The Tenth Circuit concluded that whether an e-commerce company is “found” in a district for purposes of jurisdiction is determined based on whether its officers or agents carry out the company’s business there, not on the manner in which it does business. DP Creations, LLC v. Adolly.com, Case No. 23-4126 (10th Cir. Oct. 15, 2024) (Tymkovich, Bacharach, Carson, JJ.)

As background, the Digital Millenium Copyright Act (DMCA) “preserve[d] strong incentives for service providers and copyright owners to cooperate and detect and deal with copyright infringements that take place in the digital networked environment.” After a copyright owner notifies a service provider of an infringement, the service provider can avoid liability for a subscriber’s copyright infringement if the service provider expeditiously moves or disables access to the allegedly infringing material and notifies the subscriber of such actions taken. Under Section 512(g)(3)(D) of the DMCA, a subscriber with an address outside the United States may have the material replaced by submitting a written counter-notification to the service provider that includes a statement that the “subscriber consents to the jurisdiction of the Federal District Court . . . for any judicial district in which the service provider may be found.”

DP Creations, d/b/a Bountiful Baby, is a copyright owner for reborn doll sculptures. Bountiful Baby notified a third-party e-commerce company (service provider) that two Chinese companies (subscribers), including Adolly, were selling counterfeit copies of reborn dolls through the e-commerce company. The e-commerce company took down the infringing materials, and Adolly submitted counter-notifications, including consent to personal jurisdiction in “any judicial district in which [the e-commerce company] may be found and agreeing to accept service of process from” Bountiful Baby. Bountiful Baby subsequently filed a copyright infringement action in the District of Utah. After the Chinese companies failed to respond, the district court denied the motion for entry of default judgment against the defendants for lack of personal jurisdiction. In construing the scope of jurisdiction under § 512(g)(3)(D), the district court used Black’s Law Dictionary to understand the plain meaning of “found” and required Bountiful Baby to show that the e-commerce company did business in Utah such that it was subject to suit and service of process there. Bountiful Baby appealed.

Because § 512(g)(3)(D)’s phrase “may be found” is not defined in the statute, the Tenth Circuit (like the district court) undertook to construe the ordinary meaning of the phrase. The Court decided against using the definition found in Black’s to construe the meaning of “found” as it relates to service of process on corporations that are not a subscriber of the involved service provider. The Court concluded that in cases where the service provider is not a resident of the forum state and potentially not “at home” in the forum state, Black’s [...]

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Arguing Internet Availability to Establish Copyright Infringement Is Bananas

by | Aug 29, 2024 |

In an unpublished opinion, the US Court of Appeals for the Eleventh Circuit affirmed a district court’s decision finding that a pro se Californian artist failed to establish that an Italian artist had reasonable opportunity to access the copyrighted work simply because it was available to view on the internet. Morford v. Cattelan, Case No. 23-12263 (11th Cir. Aug. 16, 2024) (Jordan, Pryor, Branch, JJ.) (per curiam).

A plaintiff alleging copyright infringement may show factual copying by either direct or indirect evidence showing “that the defendant had access to the copyrighted work and that there are probative similarities between the allegedly infringing work and the copyrighted work.” To do so, however, the copyright owner must establish a nexus between the work and the defendant’s alleged infringement. Mere access to a work disseminated in places or settings where the defendant may have come across it is not sufficient.

Joe Morford’s Banana and Orange and Maurizio Cattelan’s Comedian both “involve the application of duct tape to a banana against a flat surface” (see images below from the court decision’s appendix). Cattelan’s Comedian went viral and sold for more than $100,000 at Miami’s Art Basel. Morford claimed that Comedian was a copy. The district court found that Morford failed to show that Cattelan had reasonable opportunity to access Banana and Orange and thus could not establish a copyright claim. Morford appealed.

On appeal, Morford argued that because he could show striking similarity between Banana and Orange and Comedian, he was not required to proffer evidence of access to show copyright infringement. In the alternative, he argued that he could show substantial similarity and that Cattelan had reasonable opportunity to access Banana and Orange as it was widely disseminated and readily discoverable online.

The Eleventh Circuit explained that in circuits adopting a widespread dissemination standard, that standard requires showing that the work enjoyed “considerable success or publicity.” Morford showed that Banana and Orange was available on his public Facebook page for almost 10 years and featured on his YouTube channel and in a blog post, with views in more than 25 countries. But Banana and Orange’s availability on the internet, without more, was “too speculative to find a nexus” between Cattelan and Morford to satisfy the factual copying prong of a copyright infringement claim, according to the Court.

The Eleventh Circuit also found that Morford failed to meet the high burden of demonstrating that the original work and accused infringement were so strikingly similar as to establish copying. Such similarity exists if the similarity in appearance between the two works “is so great that [it] precludes the possibility of coincidence, independent creation or common source,” but identical expression does not necessarily constitute infringement. In this analysis, a court addresses the “uniqueness or complexity of the protected work as it bears on the likelihood of copying.” Morford argued that he [...]

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Canadian Legal Code? Copying Foreign Law Can’t Infringe Copyright Under US Law

by | Jul 25, 2024 |

The US Court of Appeals for the Fifth Circuit held that reprinting foreign law cannot be an infringement of US copyright law. Canadian Standards Association v. P.S. Knight Co., Ltd., Case No. 23-50081 (5th Cir. July 16, 2024) (King, Willett, Douglas, JJ.)

The Canadian Standards Association (CSA) is a nonprofit that owns Canadian copyright registrations to its model codes and standards. More than 40% of the CSA’s codes have been incorporated by reference into Canadian regulations and statutes.

Gordan Knight is the president and sole shareholder of both the Canadian company P.S. Knight and the US company P.S. Knight Americas. These companies sell versions of CSA’s copyrighted model codes and standards without a license.

In 2015, the CSA filed suit against Knight in Canada for infringing its copyrights to the Canadian Electrical Code. Knight was found to infringe, and the Canadian court enjoined Knight from reproducing, distributing or selling any publication that infringed CSA’s copyright to the code.

After losing his appeal against the Canadian court’s ruling, Knight formed P.S. Knight Americas. Using this company, Knight again produced his own versions of the CSA model codes. CSA filed suit against Knight, alleging infringement of its Canadian copyrights. The district court granted CSA’s motion for summary judgment of infringement and granted a permanent injunction against Knight, enjoining him from further infringing CSA’s copyrighted model codes.

Knight appealed, alleging that the district court erred in finding that Canadian copyrights covering laws could be enforced in the United States.

The Fifth Circuit explained that when analyzing infringement of a foreign copyright under US copyright law, a court first determines the ownership and the nature of the copyright by applying the law of the nation where the copyrights are held. Neither party contested that CSA owns valid Canadian copyrights in and to the model codes.

Infringement, however, is decided purely under US law. In a 2002 en banc opinion (Veeck v. Southern Building Code) the Fifth Circuit held that under US law, it is not copyright infringement to copy and reprint the law (in that case, model building codes that were enacted into law). Under Veeck, when model codes are enacted into law, “they become to that extent ‘the law’ of the governmental entities and may be reproduced or distributed as ‘the law’ of those jurisdictions.”

Here, it was uncontested that more than 40% of CSA’s model codes were incorporated into Canadian law by reference, and thus those model codes were part of Canadian law. Since the materials Knight copied were Canadian law, the Fifth Circuit held that such copying could not be infringement in the US: “because United States law applies to questions of infringement, Veeck is outcome determinative.” On this basis, the Fifth Circuit reversed the district court.

In dissent, Judge Douglas argued that the majority misapplied Veeck. He argued that the en banc court in Veeck held that law was not copyrightable subject matter in the US. Since copyrightability is determined based on the law of the foreign jurisdiction, and since [...]

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Late Expert Report Dooms Copyright Case

by | Apr 18, 2024 |

The US Court of Appeals for the Sixth Circuit weighed in for a third time on an eight-year copyright battle, this time finding that a district court did not abuse its discretion in excluding the plaintiff’s proposed expert or granting summary judgment to the defendant with respect to a copyright claim related to software. RJ Control Consultants, Inc., et al. v. Multiject, LLC, et al., Case No. 23-1591 (6th Cir. Apr. 3, 2024) (Siler, Cole, Mathis, JJ.)

This case concerns a copyright infringement claim filed by Paul Rogers through his company RJ Control Consultants (RJC) against his former friend Jack Elder, sole owner of Multiject. Multiject engineers and sells industrial accessories related to plastic injection molding. Rogers developed technical diagrams and software source code for a rotary turntable control system for Multiject. After Elder obtained copies of the code and drawings, he fired Rogers and hired a different company, RSW, to implement the technology. Rogers obtained copyright registrations for the code and drawings and filed suit against Elder, Multiject and RSW for copyright and trademark infringement, as well as certain state law claims.

The district court granted summary judgment to the defendants on RJC’s copyright infringement and trademark infringement claims and declined to exercise supplemental jurisdiction over the state law claims. RJC appealed the dismissal of its copyright infringement claim. In December 2020, in RJ Control I, the Sixth Circuit affirmed the decision regarding the technical drawings but reversed and remanded the copyright claim to the district court, finding that the software technology was complex and required an expert to answer material questions related to the functionality of the code.

On remand, the district court established deadlines for expert disclosures and for filing dispositive motions and motions challenging experts. Both parties timely served expert disclosures in which they identified the names of their respective experts, but neither side produced an expert report with their disclosures.

In April 2021, the district court extended the discovery and motions deadlines but not the expert disclosure deadline. The defendants moved to exclude RJC’s expert on the grounds that RJC failed to properly disclose the expert because RJC did not produce an expert report. The defendants also filed motions for summary judgment. The district court granted the defendants’ motions, finding that RJC “failed to put forth any expert evidence that identifies any specific portions of the code that they claim are protectible.” RJC appealed.

The Sixth Circuit dismissed the second appeal for lack of appellate jurisdiction, finding that the district court’s decision was not final because the court had not disposed of Multiject and Elder’s counterclaim (RJ Control II). The case was remanded again. On remand, the district court dismissed the then-pending counterclaim. RJC appealed again.

RJC argued that the Sixth Circuit lacked jurisdiction to decide RJ Control I, just as it did in RJ Control II, because at that time the counterclaim remained pending in district court. The Court agreed and vacated its decision in RJ Control I, but then affirmed [...]

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Gentlemen, Start Your Engines: Even Bland Works Support Copyright

by | Mar 7, 2024 |

The US Court of Appeals for the Sixth Circuit affirmed an award of profit disgorgement and attorneys’ fees in a copyright infringement case, holding that even “workaday” or “humdrum” subject matter can support a valid copyright. Premier Dealer Servs. Inc. v. Allegiance Adm’rs LLC, Case No. 23-3394 (6th Cir. Feb. 26, 2024) (Sutton, C.J.; Clay, Bloomekatz, JJ.)

Premier and Allegiance both administered car dealers’ loyalty programs. Customers enrolled in these programs were required to meet certain conditions (such as changing the car’s oil at predetermined intervals), and if a part under warranty broke, the dealer would help the car owner initiate a claim through the loyalty program administrator. In conjunction with administering these programs, Premier created a loyalty certificate. The certificate collected the customer’s personal information and provided the program’s terms and conditions. Premier registered its certificate for copyright protection in 2008.

In 2018, Tricolor – one of Premier’s large, long-standing customers – switched its program to Allegiance. When Allegiance took over, it repurposed Premier’s loyalty certificate by simply updating the administrator’s contact information. Allegiance and Tricolor continued to use the otherwise unaltered certificate. Premier sued for copyright infringement.

The district court found that the certificate’s “dull” subject matter did not preclude copyright protection, enjoined Allegiance from further copyright infringement, and awarded Premier disgorgement of Allegiance’s profits as well as attorneys’ fees, totaling more than $1 million. Allegiance appealed, challenging the certificate’s copyrightability and the damages calculations.

As to the copyrightability of the certificate, the Sixth Circuit explained that while copyright requires originality, it is a low threshold that can be shown by making “non-obvious choices” or evidencing some creative spark. “[A]rtistic merit” is not necessarily required. The Court noted three categories that copyrights will not cover:

  • Facts that already exist in the world (although the expression of facts may be copyrightable)
  • Merger, “when there is only a single way to express a given set of facts” and
  • Scenes a faire, in which industry norms require expressing facts in a particular way.

Premier’s copyright was registered and therefore presumed valid, meaning the burden was on Allegiance to rebut that presumption. The Sixth Circuit rejected Allegiance’s challenge to the originality of Premier’s copyright, primarily because copyrights “protect all manner of works – mundane or lofty . . . so long as they satisfy the modest imperatives of originality.” Allegiance argued that Premier’s forms collected client information in a way that was unoriginal, because there was only one way to collect the information (merger) and because the layout was typical for the industry (scenes a faire). The Court looked to areas in which Premier indicated creativity, noting that its forms differed from other loyalty program certificates in evidence. Further, Premier made the creative choice to allow program members to select from various schedules for oil changes, instead of a single predetermined timetable. This and other evidence suggested choice, ideas and creativity, despite the functionality of the loyalty certificates.

The Sixth Circuit hinted at how Allegiance might have better established the [...]

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Rock On: Clichéd Song Themes Don’t Infringe Copyright

by | Mar 7, 2024 |

The US Court of Appeals for the Fifth Circuit affirmed a district court’s summary judgment grant to an alleged song copier, finding neither evidence of factual copying nor striking similarity between the two songs. Kirk Johnston v. Chad Kroeger et al., Case No. 23-50254 (5th Cir. Feb. 19, 2024) (Jones, Haynes, Douglas, JJ.) (per curiam) (non-precedential).

Kirk Johnston is a musician and songwriter who plays guitar for the Texas rock band Snowblind (now called Snowblind Revival). In 2001, he wrote a song called “Rock Star.” Four years later, the Canadian rock band Nickelback released a song called “Rockstar” that became one of its most popular singles. In 2020, Johnston sued Nickelback, its record label and its music publishing company for copyright infringement. Nickelback moved for summary judgment, and the district court referred the motion to a magistrate judge. The judge recommended summary judgment in favor of Nickelback, finding no genuine dispute of material fact as to factual copying and finding that the two songs did not sound alike. The district court accepted the magistrate judge’s recommendation and dismissed Johnston’s infringement claim. Johnston appealed.

The Fifth Circuit reviewed the motion of summary judgment de novo. With respect to the element of factual copying, Nickelback’s members and executives claimed that they had never even heard of Johnston’s song. The Court found Johnston’s circumstantial evidence that Nickelback had access to his song unpersuasive. Johnston said that access could be inferred from the fact that the two bands were “moving in relatively the same circles” and that executives associated with Nickelback likely attended Snowblind’s shows. The Court said that Johnston’s arguments regarding the likelihood that Nickelback had access to his song “Rock Star” required “leaps of logic” not supported by the record and were “mere speculation.”

Johnston also unsuccessfully argued that the district court erred by not applying the “more discerning ordinary observer test” and by considering all versions of the songs on the record rather than just the “stripped down” versions. The Fifth Circuit pointed out that those standards only apply under a substantial similarity analysis, which requires a plaintiff to establish factual copying. Because there was no proof of access, much less copying, Johnston had to show a “striking similarity” between his song and Nickelback’s hit.

Johnston argued that his expert demonstrated that there were clear lyrical and musical similarities between the hooks of the songs, both of which concern the desire to be a rock star. However, the Fifth Circuit noted that the expert’s analysis was unpersuasive as to both the musical and lyrical similarities; concluding that neither was sufficiently similar to preclude all explanations but copying. The other themes in the song that Johnston pointed to as strikingly similar were “making lots of money,” “connections to famous people” and “references to sports.” The Court pointed out that as a general matter, those categories “are mere clichés of being a rockstar that are not unique to the rock genre.” As the Court put it, “[s]inging about being a rockstar is not [...]

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Copyrightability? Think Outside the Checkbox

by | Feb 22, 2024 |

The US Court of Appeals for the Eighth Circuit affirmed a district court’s judgment that a customer intake form was not copyrightable because it lacked requisite originality. Ronald Ragan, Jr. v. Berkshire Hathaway Automotive, Inc., Case No. 22-3355 (8th Cir. Feb. 2, 2024) (Grasz, Smith, Gruender, JJ.)

Ronald Ragan claimed that he owned the Guest Sheet, a form he designed to aid car dealerships in their sales processes. The form, registered with the US Copyright Office in 1999, included various questions, prompts, headings, fill-in-the-blank lines and checkboxes. Ragan initially accused an auto dealership of copying and using the Guest Sheet. However, subsequent legal action regarding the dealership’s alleged infringement was dismissed because of jurisdictional issues.

Five years later, Berkshire Hathaway Automotive acquired the dealership. Berkshire Hathaway continued to use the Guest Sheet post-acquisition despite Ragan’s objections. Allegedly, Berkshire Hathaway agreed to modify the form but continued to use it, prompting Ragan to initiate a copyright infringement lawsuit. Berkshire Hathaway moved for judgment on the pleadings, contending that the Guest Sheet was not copyrightable. After the district court granted the motion, Ragan appealed.

Ragan argued that the district court erroneously found the Guest Sheet uncopyrightable. The Eighth Circuit disagreed, stating that the Guest Sheet lacked the necessary originality to qualify for copyright protection. Despite Ragan’s contentions regarding the form’s sophistication distilled from years of experience, the Court found it to be a basic customer intake sheet with minimal creativity, consisting of simple questions, prompts and checkboxes and totaling fewer than 100 words. Citing and quoting from the 1991 Supreme Court decision in Feist Publ’ns. v. Rural Tel. Serv., the Eighth Circuit explained that to be copyrightable, a work must possess a minimal degree of originality: “To meet this [originality] requirement, a work must be ‘independently created by the author (as opposed to copied from other works), and . . . possess[] at least some minimal degree of creativity.’”

The Eighth Circuit rejected Ragan’s argument that the selection and arrangement of words on the Guest Sheet constituted sufficient originality, emphasizing the need for creativity beyond mere selection. The Court also noted that the Guest Sheet primarily served as a tool for collecting information rather than conveying substantial content, further diminishing its claim to copyright protection.

Ragan also argued that the Guest Sheet’s copyright registration certificate afforded it a presumption of validity. However, the Eighth Circuit rebuffed this argument noting that Berkshire’s challenge to Guest Sheet’s copyrightability could be based solely on examination of the form itself, notwithstanding the presumption of validity attendant to the registration certificate.

Practice Note: This decision highlights the importance of demonstrating substantial creativity in crafting documents for potential copyright protection and emphasizes that mere selection and arrangement of words may not suffice. Legal proceedings can hinge on the functionality and purpose of a document, as evidenced by the court’s distinction between information-conveying and information-capturing forms in determining copyrightability.



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Google It: Federal Copyright Law Preempts California Causes of Action

by | Feb 1, 2024 |

Addressing a state law-based challenge to the way search results are displayed on copies of websites, the US Court of Appeals for the Ninth Circuit held that copyright preemption precluded a website owner from invoking state law to control how the websites are displayed. Best Carpet Values, Inc. v. Google LLC, Case No. 22-15899 (9th Cir. Jan. 11, 2024) (Wallace, Thomas, Forrest, JJ.)

Best Carpet Values filed a class action against Google asserting California state law claims for trespass to chattels, implied-in-law contract and unjust enrichment based on the way Google’s search app displayed their websites on Android phones. If an Android user used the search app to navigate to a website, the app delivered a copy of the website, which was displayed with a frame at the bottom of the page saying, for example, “VIEW 15 RELATED PAGES” and which allowed the user to click a button to expand the frame to display half-page banners advertising related websites. For Best Carpet (the class representative), these displayed results included websites for its direct competitors and even news stories about Best Carpet’s owner. Best Carpet argued that Google thereby occupied valuable space on Best Carpet’s websites, obtaining all the benefits of advertising from its use of that space without paying for such advertising.

Google moved to dismiss the complaint for failure to state a claim upon which relief could be granted. After the district court denied the motion to dismiss, Google moved to certify the order for interlocutory appeal. The district court granted Google’s motion and certified four questions for interlocutory review that it believed were potentially dispositive. The Ninth Circuit found that only two of the interlocutory questions were dispositive:

  • Whether prior Ninth Circuit authority, Kremen (2003), should be extended to protect as chattel the copies of websites displayed on a user’s screen
  • Whether preemption under copyright law precluded state law from controlling how websites are displayed on a user’s screen.

On the issue of whether a website display can be protected as chattel, the Ninth Circuit agreed with the district court that the “chattels” at issue were copies of Best Carpet’s websites. The Ninth Circuit reasoned, however, that they could not serve as the basis for a trespass claim because Best Carpet had no cognizable property interest in the website copies on an app user’s Android phone. The Court reasoned that website copies – unlike a website’s domain name – were not “capable of precise definition” or “capable of exclusive control,” and there was no “legitimate claim to exclusivity” over the website copies (citing Kremen).

As for the copyright preemption issue, the Ninth Circuit considered the two-part test for determining whether the Copyright Act preempted the state law claims. The first prong assesses whether the subject matter of the state law claim falls within the subject matter of the relevant provisions of the Copyright Act. Here, the parties agreed that commercial websites are copyrightable, and after considering the body of precedent interpreting the relevant provisions of the [...]

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Don’t Cut, Paste, Copyright: Bonding over Borrowed Words

by | Jan 25, 2024 |

The US Court of Appeals for the Seventh Circuit affirmed a district court’s award of attorneys’ fees and its determination that trivial additions to existing documents were not copyrightable. UIRC-GSA Holdings, LLC v. William Blair & Company, L.L.C., and Michael Kalt, Case Nos. 23-1527; -2566 (7th Cir. Jan. 12, 2024) (Brennan, Flaum, Kirsch. JJ.)

UIRC, a property management company overseeing leases for the US General Services Administration, sought copyright protection for two documents it produced related to a bond offering: a private placement memorandum (PPM) and an indenture of trust. UIRC did not create these documents from scratch but instead borrowed most of the language from the Idaho Housing and Finance Association. Nevertheless, UIRC secured copyright registrations by explicitly focusing on the “additional and revised text” it contributed, not the “standard legal language.”

While aiding UIRC in transactions utilizing its copyrighted documents, William Blair concurrently assisted a third party in a similar transaction. During that transaction, William Blair used UIRC’s copyrighted PPM and indenture of trust documents. In response, UIRC filed a copyright infringement suit against William Blair. The district court granted William Blair’s summary judgment motion, finding that UIRC’s documents lacked valid copyright protection because of the trivial nature of the language added to the bond documents, such as “facts, short phrases, and functional elements.” The district court also awarded attorneys’ fees to William Blair under 17 U.S.C. § 505, finding that three of the four factors from the 1994 Supreme Court of the United States decision in Fogerty v. Fantasy favored an award. UIRC appealed.

The Seventh Circuit affirmed, stressing that UIRC was not the original author of the copyrighted works since it did not independently create the PPM and indenture of trust documents. The Court explained that copyright protection requires original works with a minimal degree of creativity, a criterion UIRC failed to meet because its contributions resembled facts, fragmented phrases or language driven by functional considerations.

The Seventh Circuit heavily relied on the Supreme Court’s 1991 Feist Publ’ns v. Rural Tel. Serv. decision, drawing parallels to emphasize that UIRC’s bond documents, being “incredibly similar” to the Idaho Housing and Finance Association documents, lacked the necessary creative expression for copyright protection. The Seventh Circuit deemed trivial additions made by UIRC, which the Court categorized as “facts, short phrases, and functional language” ineligible for copyright protection. The Court highlighted the importance of independent creation using examples where even photographs of familiar characters were copyrightable due to the photographer’s “unique angle, perspective, lighting, and dimension.” In the present case, the Court found that UIRC’s contributions lacked the necessary creative expression. Accordingly, the Court concluded that UIRC’s bond documents were not protected by valid copyrights.

In addressing the attorneys’ fees award to William Blair, the Seventh Circuit applied the Fogerty factors:

  • Frivolousness of the Suit: The Court found that UIRC’s suit lacked merit, emphasizing the frivolousness factor in favor of William Blair.
  • Losing Party’s Motivation: UIRC’s lack of disclosure about the Idaho Housing and Finance Association documents was deemed [...]

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A Step Forward for Choreography and Copyright

by | Nov 16, 2023 |

In a rare ruling on infringement of a copyright on choreography, the US Court of Appeals for the Ninth Circuit reversed the dismissal of a copyright infringement action, holding that the district court erred in its application of the substantial similarity standard in terms of the line between animation and choreography, and remanded for further proceedings. Hanagami v. Epic Games, Inc., Case No. 22-55890 (9th Cir. Nov. 1, 2023) (Murguia, C.J.; Paez, Nguyen, JJ.)

Kyle Hanagami, a Los Angeles-based choreographer with a substantial social media following, brought this action against Epic Games, creator of the blockbuster video game Fortnite. Hanagami alleged that Epic infringed his copyrighted choreography by incorporating a portion of his dance work into a virtual animation, known as an “emote,” that players can purchase for video game avatars to perform. Hanagami has created choreography for famous pop stars and globally recognized brands. The five-minute choreographic work at issue in this action was originally published on YouTube in November 2017 and had received almost 36 million views as of Hanagami’s original March 2022 complaint.

In August 2020, Epic released a version of Fortnite that included a new emote called “It’s Complicated.” The allegedly copied choreography consisted of a two-second combination of eight bodily movements set to four beats of movement, which Hanagami alleged “contain[ed] the most recognizable portion” of his choreography. Hanagami brought federal claims alleging direct and contributory infringement of a copyright, as well as a state law unfair competition claim.

The district court granted Epic’s motion to dismiss wherein Epic asserted that Hanagami had not plausibly alleged that the Fortnite emote displayed “substantial similarity” to his choreographic work. Hanagami appealed.

At issue in this appeal was whether the district court had properly applied the Ninth Circuit’s two-part test for substantial similarity in assessing Hanagami’s infringement allegations. The first part, called the “extrinsic test,” focuses only on the protectable elements of the plaintiff’s expression and assesses the objective similarities between the original and the allegedly infringing work. The second part, referred to as the “intrinsic test,” gauges similarity of expression from the perspective of the ordinary reasonable observer and is reserved for the trier of fact. Hence, at the pleadings stage, only the extrinsic test is applied.

The Ninth Circuit concluded that the district court erred in its application of the extrinsic test in two ways. First, the district court incorrectly analyzed Hanagami’s choreography as a series of unprotectable “poses,” rather than as a movement sequence that includes expressive elements such as body position, timing, use of space, energy, pauses and repetition. The Court explained that when a dance work is properly analyzed as a selection and arrangement of movements, Hanagami “plausibly alleged that the creative choices he made in selecting and arranging elements . . . are substantially similar to the choices Epic made in creating the emote.” Second, the district court erred in dismissing Hanagami’s claim because the choreography in the emote was “short” and a “small component” of the original work. The Ninth Circuit [...]

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