Cat and Dogma v. Target ( 2021 )

Case: 20-50674 Document: 00516048994 Page: 1 Date Filed: 10/08/2021
United States Court of Appeals
for the Fifth Circuit United States Court of Appeals
Fifth Circuit
FILED
October 8, 2021
No. 20-50674 Lyle W. Cayce
Clerk
Cat and Dogma, LLC,
Plaintiff—Appellant,
versus
Target Corporation,
Defendant—Appellee.
Appeal from the United States District Court
for the Western District of Texas
USDC No. 1:19-CV-1002
Before Wiener, Elrod, and Higginson, Circuit Judges.
Per Curiam:*
A Texas-based children’s clothing company, Cat and Dogma, sued
Target Corporation for copyright infringement. The district court granted
Target Corporation’s motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6). We REVERSE the judgment of the district court and
REMAND the case for further proceedings consistent with this opinion.
*
Pursuant to 5th Circuit Rule 47.5, the court has determined that this
opinion should not be published and is not precedent except under the limited
circumstances set forth in 5th Circuit Rule 47.5.4.
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No. 20-50674
I.
Cat and Dogma (“Dogma”) is an Austin-based children’s clothing
company. In 2015, Dogma published a two-dimensional design of a
children’s pajama garment (“The Design”). The Design consists of the
phrase “i love you” displayed in a cursive, italicized font and all lowercase
typeface. The phrase is arranged in 25 rows of repeating text. The phrase
repeats 3–5 times in each of The Design’s 25 horizontal rows. Dogma
registered The Design with the United States Copyright Office and was
granted Copyright Registration Number VA 2-172-249, with the effective
date of September 19, 2019.
In 2017, Target Corporation (“Target”) began selling a line of
children’s garments, sheets, and blankets that also incorporated the phrase
“i love you,” written in a cursive, italicized font and all-lowercase typeface.
Target’s garments also display the phrase in rows of repeating text.
In October 2019, Dogma filed a lawsuit against Target for copyright
infringement, alleging that Target infringed its copyright in The Design by
reproducing, distributing, and publicly displaying The Design without
Dogma’s authorization. In response, Target filed a motion to dismiss under
Federal Rule of Civil Procedure 12(b)(6). Target argued that Dogma’s
Design was not copyrightable and alleged a lack of substantial similarity
between The Design and Target’s products. The district court granted
Target’s motion to dismiss. Dogma timely appealed.
II.
“We review motions to dismiss de novo.” Franklin v. Regions Bank,
976 F.3d 443, 447 (5th Cir. 2020). We may not look beyond the pleadings
when considering a 12(b)(6) motion to dismiss. Cinel v. Connick, 15 F.3d
1338, 1341 (5th Cir. 1994). We accept all factual allegations as true and view
the facts in the light most favorable to the plaintiff. Jebaco, Inc. v. Harrah’s
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Operating Co., Inc., 587 F.3d 314, 318 (5th Cir. 2009) (“Viewing the facts as
pled in the light most favorable to the nonmovant, a motion to dismiss . . .
should not be granted if a complaint provides ‘enough facts to state a claim
to relief that is plausible on its face.’”) (quoting Doe v. MySpace, Inc., 528
F.3d 413, 418 (5th Cir. 2008)).
“To survive a motion to dismiss, a complaint must contain sufficient
factual matter, accepted as true, to ‘state a claim to relief that is plausible on
its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when
the plaintiff pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged.”
Id. (citing Twombly, 550 U.S. at 556). The plaintiff must therefore allege
sufficient factual matter for each required element of the cause of action. Id.;
Allen v. Walmart Stores, L.L.C., 907 F.3d 170, 178 (5th Cir. 2018) (citing Rios
v. City of Del Rio, 444 F.3d 417, 421 (5th Cir. 2006)).
III.
“To prove copyright infringement, a plaintiff must establish (1)
ownership of a valid copyright; (2) factual copying; and (3) substantial
similarity.” Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527,
549 (5th Cir. 2015) (quoting Armour v. Knowles, 512 F.3d 147, 152 (5th Cir.
2007) (per curiam)).
A.
The first element of a copyright infringement claim is ownership of a
valid copyright. “Copyright ownership is shown by proof of originality and
copyrightability in the work as a whole and by compliance with applicable
statutory formalities.” Eng’g Dynamics, Inc. v. Structural Software, Inc., 26
F.3d 1335, 1340 (5th Cir. 1994) (citing Plains Cotton Coop. Ass’n v.
Goodpasture Comput. Serv., Inc., 807 F.2d 1256, 1260 (5th Cir. 1987)). This
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includes copyright registration. See 17 U.S.C. § 410(c). “A certificate of
registration, if timely obtained, is prima facie evidence both that a copyright
is valid and that the registrant owns the copyright.” Gen. Universal Sys., Inc.
v. Lee, 379 F.3d 131, 141 (5th Cir. 2004) (per curiam). The defendant may
rebut this presumption by offering evidence to dispute the plaintiff’s prima
facie case of infringement. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345
F.3d 1140, 1144 (9th Cir. 2003) (citing Entm’t Rsch. Grp., Inc. v. Genesis
Creative Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997)); see also Norma Ribbon
& Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995) (discussing evidence
brought by the defendant to dispute the copyright’s presumptive originality
on a motion for summary judgment).
Here, Dogma alleges its ownership of Copyright Registration
VA 2-172-249 for The Design. We must accept all of Dogma’s factual
allegations as true and view such facts in the light most favorable to Dogma.
Jebaco, Inc., 587 F.3d at 318. Accordingly, we hold that Dogma adequately
alleges ownership of a valid, registered copyright at the pleading stage.
Target attempts to rebut the presumptive validity afforded by
Dogma’s registration and asks us to affirm the district court’s decision that
Dogma’s design is not copyrightable because it lacks the minimum level of
creativity to be sufficiently original. Cat & Dogma v. Target Corp., No. 19-
1002, 2020 U.S. Dist. LEXIS 152762 at *5–6 (W.D. Tex. July 23, 2020).
However, these arguments are premature. Reaching this issue would require
us to look beyond the pleadings to make a factual determination and is thus
inappropriate on a motion to dismiss. Cinel, 15 F.3d at 1341 (stating “[w]e
may not look beyond the pleadings” on a 12(b)(6) motion to dismiss).
Accordingly, we do not decide whether Target has successfully rebutted the
presumption of validity.
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B.
The second element of a copyright infringement claim is factual
copying. In its Amended Complaint, Dogma alleges that Target had access
to The Design before Target began selling the allegedly infringing pajama
garments. Target does not dispute this allegation. We will therefore assume
that Dogma adequately alleges factual copying. See Audler v. CBC Innovis
Inc., 519 F.3d 239, 255 (5th Cir. 2008) (“A party ‘waives an issue if he fails
to adequately brief it.’”) (quoting Castro v. McCord, 256 F. App’x 664, 665
(5th Cir. 2007)).
C.
The third element of a copyright infringement claim is substantial
similarity. To assess substantial similarity, “a side-by-side comparison must
be made between the original and the copy to determine whether a layman
would view the two works as substantially similar.” Nola Spice, 783 F.3d at
550 (quoting Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.
1997)) (cleaned up). However, where the original work contains
unprotectable elements, courts must first “distinguish between protectable
and unprotectable elements of the copyrighted work,” filtering out any
unprotectable elements. Id. at 550. The court then determines whether the
allegedly infringing work is substantially similar to the protectable aspects of
the original work. Id. (citing Peel & Co. v. Rug Mkt., 238 F.3d 391, 398 (5th
Cir. 2001)). We address in turn: (1) whether Dogma has alleged the existence
of a protectable design element, and (2) whether Dogma has alleged
substantial similarity between Target’s products and the protectable element
of The Design.
1.
In the first step of the Nola Spice filtration analysis, we consider
whether Dogma has alleged the existence of a protectable element in The
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Design that can be used as the touchpoint of the substantial similarity
analysis. Nola Spice, 783 F.3d at 550.
The record shows that in creating The Design, Dogma: (1) selected
the phrase “I love you;” (2) selected the cursive, italicized font in which to
display the phrase; (3) selected the all lowercase typeface in which to display
the phrase; (4) arranged the foregoing selected elements in vertical rows of
repeating text; and (5) arranged the rows of repeating text in a layout
depicting the shape of a nightgown. Dogma does not allege that any of the
individual constituent elements of The Design constitute original,
protectable expression. Instead, Dogma alleges that the sole protectable
aspect of The Design is the selection and arrangement of those unprotectable
constituent elements. Dogma alleges that this arrangement and selection is
sufficiently original to warrant copyright protection.
Dogma points to its certificate of copyright registration to support this
position. The registration certificate “constitute[s] prima facie evidence of
the validity of the copyright and of the facts stated in the certificate.” 17
U.S.C. § 410(c). Prior to issuing a certificate of copyright registration, the
Register of Copyrights determines whether the work “constitutes
copyrightable subject matter and that the other legal and formal requirements
of [The Copyright Act] have been met.” 17 U.S.C. § 410(a). Therefore, in
issuing Dogma’s certificate of registration in The Design, the Register of
Copyrights necessarily determined that The Design possessed the requisite
degree of originality to warrant copyright protection. See Feist Publ’ns, Inc.
v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345 (1991) (“To qualify for
copyright protection, a work must be original to the author.”) (citing Harper
& Row, Publishers v. Nation Enters., 471 U.S. 539, 547–49 (1985)).
Accepting the foregoing facts as true and construing the presumptive
validity of the copyright in favor of Dogma, we hold that Dogma has
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sufficiently alleged originality in its selection and arrangement of the
unprotectable elements which comprise The Design.
Target raises several arguments challenging the degree of originality
underlying Dogma’s selection and arrangement of the elements in The
Design. However, reaching the merits of those arguments requires us to go
beyond the pleadings and is improper on a motion to dismiss under FRCP
12(b)(6). Cinel, 15 F.3d at 1341 (stating “[w]e may not look beyond the
pleadings” on a 12(b)(6) motion to dismiss).
2.
In the second step of the Nola Spice filtration analysis, we consider
whether Dogma has alleged substantial similarity between the protectable
selection and arrangement of The Design and Target’s allegedly infringing
products.1 Nola Spice, 783 F.3d at 550.
Dogma’s Amended Complaint provides images of The Design and
Target’s products in a side-by-side comparison. Comparing the designs in
the light most favorable to Dogma, the designs appear to be similarly
arranged. We therefore determine that a reasonable jury could find the
designs to be substantially similar based solely upon the similarity of the
selection and arrangement of the underlying elements. For this reason, the
question of substantial similarity, or any other appropriate standard, should
be left to the factfinder. See id. at 550 (“[T]he question of substantial
similarity typically should be left to the factfinder . . . .”) (quoting Peel & Co.,
238 F.3d at 395); see also 4 Nimmer on Copyright § 13.03[A][4] (2021)
(describing “thin” copyrights).
1
We assume, without deciding, that the standard of substantial similarity applies
here. Cf. 4 Nimmer on Copyright § 13.03[A][4] (2021) (describing “thin”
copyrights).
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Relevant to this stage of analysis, Target enumerates what it believes
to be key differences between its products and The Design. However,
deciding whether those asserted dissimilarities negate a finding of substantial
similarity again requires the court to go beyond the pleadings. Such action is
improper in considering a motion to dismiss under 12(b)(6). Cinel, 15 F.3d
at 1341; cf. Nola Spice, 783 F.3d 527 (resolving questions of fact related to
substantial similarity on a motion for summary judgment).
Although a court or jury may ultimately conclude that the similarities
between Target’s products and the protected selection and arrangement of
Dogma’s design are insubstantial, we are convinced that they are sufficiently
substantial to survive a 12(b)(6) motion to dismiss.
IV.
We hold that Dogma has alleged sufficient facts for each required
element of copyright infringement. We therefore REVERSE the district
court’s dismissal and REMAND for further proceedings consistent with
this opinion.
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