IP Law Daily, COPYRIGHT—9th Cir.: Mixed appellate ruling in Kinetic structure designer’s copyright and trade dress claims against Aritzia, (Jan 15, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Dismissal reversed for copyright infringement claims due to adequate allegations of copyrightability; affirmed for trade dress infringement claims due to insufficient specificity.

The U.S. Court of Appeals for the Ninth Circuit issued a mixed ruling on a kinetic structure designer’s copyright and trade dress infringement claims against Aritzia, Inc. The appellate court reversed the district court’s dismissal of the plaintiff’s copyright claim regarding kinetic and manipulable sculptures, concluding that it adequately alleged copyrightability and copying. However, the Ninth Circuit affirmed the dismissal of the trade dress infringement claim, citing insufficient specificity in the alleged trade dress elements. Further, the appellate court remanded the case to the district court for further proceedings on the copyright claim (Tangle, Inc. v. Aritzia, Inc., No. 23-3707 (9th Cir. Jan. 14, 2025)).

Background. Tangle, Inc., the plaintiff/appellant, designs and markets kinetic and manipulable sculptures. It owns copyrights for seven kinetic sculptures, each made of 17 or 18 identical, 90-degree curved tubular segments capable of 360-degree rotation at their joints. These sculptures, often chrome-finished, can assume various poses. Aritzia, Inc., the defendant/ appellee, operates over 120 high-end retail stores in the United States and Canada, offering lifestyle apparel and decorative window displays.

The dispute arose when Tangle discovered that Aritzia used sculptures in its retail store displays that allegedly replicated Tangle’s copyrighted kinetic designs. Tangle filed its initial complaint in the Northern District of California, asserting copyright infringement under the Copyright Act, 17 U.S.C. § 501(a). Aritzia moved to dismiss the claim under Rule 12(b)(6) of the Federal Rules of Civil Procedure, arguing that Tangle’s works were not copyrightable due to their movable nature and lack of fixation.

The district court dismissed the claim but allowed Tangle to amend its complaint. In the second amended complaint, Tangle introduced a new claim of trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a), asserting that Aritzia misappropriated its sculptures' distinctive aesthetic and design elements. Aritzia again moved to dismiss both claims. The district court granted the motion, dismissing the trade dress claim for failure to provide sufficient detail and the copyright claim for lack of substantial similarity and fixation. Tangle declined to amend further, electing to pursue an appeal instead.

Copyright protection analysis. The Ninth Circuit addressed two fundamental issues for copyright infringement: (1) whether Tangle’s sculptures were validly copyrighted, and (2) whether substantial similarity existed between Tangle’s and Aritzia’s works. Aritzia argued that movable sculptures could not be “fixed” in a tangible medium as required by 17 U.S.C. § 102(a). The appellate court rejected this argument, comparing Tangle’s sculptures to other forms of motion-based expression, such as movies and dance, which are protectable under copyright law. It relied on Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), holding that originality and fixation, even in a dynamic medium, sufficed for copyright protection.

The court clarified that fixation does not require absolute stasis, citing Hanagami v. Epic Games, Inc., 85 F.4th 931 (9th Cir. 2023) and Professor Jani McCutcheon’s published research works on kinetic art. It emphasized that the sculptures’ arrangement of segments, their rotational functionality, and the creative choices involved were sufficient to meet the fixation standard.

Applying the extrinsic test, established in Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977), the Ninth Circuit focused on whether the protectable elements of Tangle’s sculptures were substantially similar to Aritzia’s. The court highlighted shared features, including the number of identical segments, their curved shape, and their ability to twist 360 degrees. It concluded that Tangle adequately alleged substantial similarity, as the selection and arrangement of elements in its sculptures constituted protectable expression. The court noted that while differences such as size and color existed, these did not preclude a finding of substantial similarity at the pleading stage. The court left open the possibility for a more rigorous analysis of a complete factual record.

Trade dress specificity requirement. The appellate court affirmed the district court’s dismissal of Tangle’s trade dress claim, emphasizing that plaintiffs must provide a detailed and complete recitation of the alleged trade dress elements. Tangle’s second amended complaint relied on photographs and descriptions of its sculptures, identifying features such as a bright pink chrome finish, interlocking curved pieces, and the use of approximately 18 segments. However, the court held that this description was insufficient to satisfy the pleading standard.

Citing Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998), the court reiterated that trade dress claims must articulate a “precise expression” of the product’s visual and aesthetic elements. It also referred to YZ Prods. v. Redbubble, Inc., 545 F. Supp. 3d 756 (N.D. Cal. 2021), where courts held that photographs alone fail to provide the necessary specificity to put defendants on notice. The court found that Tangle’s failure to describe the individual elements of its trade dress, such as the exact shape, dimensions, and arrangement of components, warranted dismissal. The district court had offered Tangle an opportunity to amend, but its refusal to do so resulted in dismissal with prejudice.

The appellate court, therefore, reversed and remanded the dismissal of Tangle’s copyright infringement claims but affirmed the dismissal of the trade dress infringement claims.

The Case is No. 23-3707.

Judge: Johnstone, A.

Attorneys: Matthew L. Schwartz (Boies Schiller Flexner, LLP) for Tangle, Inc. Richard P. Sybert (Gordon & Rees Scully Mansukhani, LLP) for Aritzia, Inc., Aritzia, L.P., and United States of Aritzia, Inc.

Companies: Tangle, Inc.; Aritzia, Inc.; Aritzia, L.P.; United States of Aritzia, Inc.

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