IP Law Daily, COPYRIGHT—9th Cir.: Preliminary injunction over Cirque du Soleil hand-balancing routine vacated, (May 17, 2023)

By Brian Craig, J.D.

The district court failed to consider expert testimony to determine which aspects of the routine were protectable by copyright.

Concluding that the district court did not properly analyze whether which aspects of a hand-balancing routine performed in a choreographic routine at the Cirque du Soleil are protected by copyright, the federal appeals court in San Francisco has vacated the entry of a preliminary injunction. In reversing the decision of the federal district court in Nevada, the U.S. Court of Appeals for the Ninth Circuit held that the district court did not perform a proper analysis under the extrinsic test to determine which aspects of the routine performed by the plaintiff Alexis Brothers were protectable by copyright. Given the highly technical nature of the case, the district court needed to consider expert testimony in deciding whether to grant the preliminary injunction (Lorador v. Kolev, May 16, 2023, per curiam).

Two brothers, the Alexis Brothers, performed a hand-balancing routine for Cirque du Soleil called “Peace and Discord.” The Alexis brothers registered the routine as choreography with the U.S. Copyright Office in 2003. The Alexis Brothers stopped performing the routine in 2020 because of the COVID-19 pandemic. After performances resumed in 2021, Cirque du Soleil hired another hand-balancing duo, the Kolev Sisters, instead of the Alexis Brothers. The Alexis Brothers sued the Kolev Sisters, Cirque du Soleil, and Treasure Island, LLC for copyright infringement. The district court in Nevada granted, in part, a motion for preliminary injunction in favor of the Alexis Brothers, but the court limited the scope of the injunction to just one part of the routine that relates to the finale. The Alexis Brothers appealed to the Ninth Circuit.

Substantial similarity. The Ninth Circuit held that the district erred by failing to expert testimony to determine which aspects of the routine were protectable by copyright. To determine substantial similarity, courts use a two-part test: the intrinsic test and the extrinsic test. The extrinsic test considers whether two works share a similarity of ideas and expression as measured by external, objective criteria. The extrinsic test requires analytical dissection of a work and expert testimony.

Extrinsic test. While the district court correctly determined that a valid copyright exists, the district court did not analyze sufficiently, under the second step of the extrinsic test, similarities between the two routines that were protectable by copyright. The panel concluded the district court must disregard any similarities that contain unprotectable material. The Ninth Circuit held that it is essential to distinguish between the protected and unprotected material in a plaintiff’s work. The district court failed to address what the uncopyrightable elements were, which similar elements were protectable, or why the elements were protectable, and others were not. The district court did not perform an analysis based on sufficient external, objective criteria to determine which aspects of the routine were protectable by copyright. The appeals court ruled the district court’s analysis fell short of the analytical dissection required for the extrinsic test. Therefore, the Ninth Circuit vacated the district court’s granting, in part, the preliminary injunction. On remand, the appeals court directed the district court to reconsider the extrinsic test with the benefit of expert testimony.

The case is No. 22-15491.

Attorneys: Brian R. Hardy (Marquis Aurbach, Chtd.) for Marco Paulo Rodrigues Lorador. Brian K. Terry (Thorndal Armstrong Delk Balkenbush & Eisinger PC) for Michelle Kolev.

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