Art Attacks Ink, LLC v. Mga Entertainment ( 2009 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
ART ATTACKS INK, LLC, a 
California limited liability
company,
No. 07-56110
Plaintiff-Appellant,
v.  D.C. No.
CV-04-01035-RMB
MGA ENTERTAINMENT INC., a
OPINION
California corporation; ISAAC
LARIAN, an individual,
Defendants-Appellees.

Appeal from the United States District Court
for the Southern District of California
Rudi M. Brewster, District Judge, Presiding
Argued and Submitted
December 9, 2008—Pasadena, California
Filed September 16, 2009
Before: Harry Pregerson, Dorothy W. Nelson and
David R. Thompson, Circuit Judges.
Opinion by Judge Pregerson
13439
ART ATTACKS v. MGA ENTERTAINMENT 13443
COUNSEL
Michael W. Quade, Quade & Associates, San Diego, Califor-
nia, for the plaintiff-appellant.
Craig Holden, MGA Entertainment, Inc., Van Nuys, Califor-
nia, for the defendant-appellee.
OPINION
PREGERSON, Circuit Judge:
I. Introduction
Art Attacks Ink, LLC (“Art Attacks”) brought suit against
MGA Entertainment Inc. (“MGA”), alleging copyright, trade-
mark, and trade dress infringement. A jury found for MGA on
the trademark claim, but could not reach a verdict on the
remaining claims. MGA then moved for judgment as a matter
of law under Federal Rule of Civil Procedure 50(b). The dis-
trict court granted the motion and Art Attacks timely
appealed. We have jurisdiction under 28 U.S.C. § 1291. As a
preliminary matter, we must determine whether MGA timely
filed its Rule 50(b) motion. We conclude that it did not. How-
ever, because Rule 50(b) is not a jurisdictional rule, the time-
13444 ART ATTACKS v. MGA ENTERTAINMENT
liness argument is forfeitable. Art Attacks waived its timeli-
ness objection by failing to raise it before the district court.
On the merits of the appeal, we conclude that Art Attacks
failed to demonstrate that MGA had access to copyrighted
works and that Art Attacks designs acquired secondary mean-
ing. We therefore affirm the district court’s grant of judgment
as a matter of law as to Art Attacks’s copyright and trade
dress infringement claims.
II. Background
Art Attacks is a small airbrush art business that has sold
custom-made T-shirts and other items since 1993. Art Attacks
designs include animals, celebrities, cars, and a “Spoiled
Brats” collection. The Spoiled Brats collection features car-
toonish, predominantly female characters with oversized eyes,
disproportionately large heads and feet, makeup, and bare
midriffs.
Art Attacks sold its wares primarily from a booth at several
county fairs. Because Art Attacks is a small family business,
it did business at only one location at a time. Art Attacks trav-
eled to fairs in Orange County, San Diego County, Ventura
County, Riverside County, San Bernardino County, and, after
1998, Los Angeles County. Art Attacks also did business at
the Camp Pendleton Exchange, a convention in the Navajo
Nation, and several malls, amusement centers, and Wal-Mart
stores in Arizona. Art Attacks also sold its wares at Wal-Mart
stores in California, including the Santee, Chula Vista, and
Poway Stores.
At county fairs and other locations, Art Attacks airbrushed
designs onto a shirt or other garment, along with the custom-
er’s name and a small caption, while the customer waited.
Spoiled Brats designs could be tailored to resemble individual
customers. Art Attacks sold about 2,000 Spoiled Brats T-
ART ATTACKS v. MGA ENTERTAINMENT 13445
shirts per year. Art Attacks copyrighted the Spoiled Brats
characters in 1996.
Art Attacks also maintained an internet website as of 1996,
during the early years of widespread internet use. The website
displayed images of various Art Attacks airbrush designs,
including animals, celebrities, cars, animals, and the Spoiled
Brats. The website took two minutes to load. Users could
click through the main Art Attacks website to a linked Spoiled
Brats-specific page to obtain a mail-in order form. The web-
site also lacked Spoiled Brats “meta tags,” invisible pieces of
data that are embedded in websites and act as flags to internet
search engines. Because the Art Attacks website lacked such
flags, an internet search for “Spoiled Brats” might not lead to
the Art Attacks site.
Art Attacks never advertised in broadcast or print media. It
did, however, display images of the Spoiled Brats on the Art
Attacks booth. Millions of fair attendees have walked past the
booth over the years. The Del Amo Fair, for example, has
over one million yearly attendees, seventy-five percent of
whom pass by the Art Attacks booth near the main entrance.
In 2001, MGA began selling “Bratz” dolls, which, like Art
Attacks’s designs, feature large eyes, heavy makeup, over-
sized eyes, heads, and feet, and bare midriffs. Art Attacks
filed suit against MGA in 2004, alleging causes of action
including trademark, trade dress, and copyright infringement.
A jury found for MGA on the trademark claim, but could not
reach a verdict on the remaining claims. The district judge
dismissed the jury on Friday, May 11, and entered an order
declaring a mistrial on Monday, May 14. At a status confer-
ence on Monday, May 14, MGA declared its intention to file
a Rule 50(b) motion for judgment as a matter of law. A law
clerk indicated to MGA that such a motion would have to be
filed by May 29, ten court days after the May 14 status confer-
ence.1 Ten days later, on May 29, MGA filed a motion for
1
Saturdays, Sundays, and legal holidays do not count toward filing
deadlines when the filing period is less than eleven days. Fed. R. Civ. P.
6(a)(2).
13446 ART ATTACKS v. MGA ENTERTAINMENT
judgment as a matter of law under Federal Rule of Procedure
50(b). The district court granted the motion. This appeal fol-
lowed.
III. Discussion
A. Jurisdiction to Consider the Rule 50(b) Motion
Art Attacks contends that MGA failed to file its motion for
judgment as a matter of law within ten days of the jury’s dis-
charge, as required by Federal Rule of Civil Procedure 50(b),
and that the district court therefore lacked jurisdiction to con-
sider the motion. “Jurisdiction is a question of law that we
review de novo.” United States v. Neil, 312 F.3d 419, 421 (9th
Cir. 2002).
1. Whether MGA’s Motion Was Timely
[1] Federal Rule of Civil Procedure 50(b) states that “if the
[renewed] motion [for judgment as a matter of law] addresses
a jury issue not decided by a verdict, no later than 10 days
after the jury was discharged[,] the movant may file a
renewed motion for judgment as a matter of law . . . .” The
period begins to run on the day after the district court dis-
misses the jury. Fed. R. Civ. P. 6(a). Though the district court
did not enter the order granting a mistrial until Monday, May
14, the district judge dismissed the jury on Friday, May 11.
The ten-day filing period therefore began to run on Monday,
May 14 and closed on Friday, May 25. MGA’s renewed
motion for judgment as a matter of law was untimely.
2. Whether Rule 50(b)’s Timeliness Requirement is
Jurisdictional
[2] Federal Rule of Civil Procedure 6(b) forbids courts to
extend the ten-day filing period set out in Rule 50(b). Accord-
ingly, courts have sometimes characterized Rule 50(b)’s ten-
day filing requirement as mandatory and jurisdictional, and
ART ATTACKS v. MGA ENTERTAINMENT 13447
therefore incapable of being waived or forfeited. See, e.g.,
Goodman v. Bowdoin Coll., 380 F.3d 33, 46 (1st Cir. 2004);
Hodge ex rel. Skiff v. Hodge, 269 F.3d 155, 157 (2d Cir.
2001); U.S. Leather, Inc. v. H&W P’ship, 60 F.3d 222, 225
(5th Cir. 1995).
Since then, however, the Supreme Court has “clarified that
procedural rules formerly referred to as ‘mandatory and juris-
dictional’ may be, instead, simply ‘inflexible claim-
processing rule[s],’ mandatory if invoked by a party but for-
feitable if not invoked.” United States v. Sadler, 480 F.3d
932, 934 (9th Cir. 2007) (citing Eberhart v. United States, 546
U.S. 12 (2005) and Kontrick v. Ryan, 540 U.S. 443 (2004))
(internal quotations omitted)). “The distinction between juris-
dictional rules and inflexible but not jurisdictional timeliness
rules . . . turns largely on whether the timeliness requirement
is or is not grounded in a statute.” Sadler, 480 F.3d at 936.
“[T]ime constraints arising only from Court-prescribed, albeit
congressionally authorized, procedural rules [such as the Fed-
eral Rules] are not jurisdictional. Id. at 938.
[3] Though this circuit has not yet specifically addressed
whether the time restrictions in Rule 6(b) and Rule 50(b) are
jurisdictional, other circuits have concluded that these restric-
tions are non-jurisdictional. See, e.g., Dill v. Gen. Am. Life
Ins. Co., 525 F.3d 612, 618 (8th Cir. 2008); Weissman v.
Dawn Joy Fashions, Inc., 214 F.3d 224, 232 (2d Cir. 2000).
We agree. See also Eberhart, 546 U.S. at 19 (likening Federal
Rule of Criminal Procedure 45(b), a non-jurisdictional rule, to
Federal Rule of Civil Procedure 6(b). Because Rule 50(b)’s
ten-day filing deadline is a non-jurisdictional claim-
processing rule, it can be waived or forfeited.
3. Whether Art Attacks Waived Its Rule 50(b) Argument
[4] Art Attacks never objected to the timeliness of MGA’s
Rule 50(b) motion for summary judgment before the district
13448 ART ATTACKS v. MGA ENTERTAINMENT
court. Accordingly, Art Attacks has forfeited its untimeliness
objection. We therefore proceed to the merits of the appeal.
B. Copyright Infringement
We review de novo renewed motions for judgment as a
matter of law. Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir.
2002). A grant of such a motion is proper if the evidence, con-
strued in favor of the nonmoving party, permits only one rea-
sonable conclusion. Id.
[5] “Absent direct evidence of copying, proof of infringe-
ment involves fact-based showings that the defendant had
‘access’ to the plaintiff ’s work . . . .” Three Boys Music Corp.
v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (quoting Smith
v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996)). To prove
access, a plaintiff must show a reasonable possibility, not
merely a bare possibility, that an alleged infringer had the
chance to view the protected work. Id. at 482. Where there is
no direct evidence of access, circumstantial evidence can be
used to prove access either by (1) establishing a chain of
events linking the plaintiff ’s work and the defendant’s access,
or (2) showing that the plaintiff ’s work has been widely dis-
seminated. Id.
1. Chain of Events
Art Attacks does not explicitly raise a chain of events argu-
ment, but implicitly does so by referring to evidence that an
MGA decision-maker may have attended a county fair at
which Art Attacks displayed the Spoiled Brats designs. MGA
employee Aileen Storer (“Storer”) designed the text of the
Bratz mark displayed on doll packaging. Storer testified that
she attended the Los Angeles County Fair sometime between
1995 and 2005. Art Attacks did not attend the Los Angeles
County Fair until 1998. MGA began marketing Bratz dolls in
2001. The only relevant time period, therefore, is 1998-2001,
within which Art Attacks displayed the Spoiled Brats designs
ART ATTACKS v. MGA ENTERTAINMENT 13449
at the Los Angeles County but before MGA began marketing
the Bratz dolls.
[6] There is no direct evidence that Storer ever saw an Art
Attacks booth. Furthermore, Art Attacks has failed to show
that Storer visited the Los Angeles County Fair during the rel-
evant period. Though there may be some slight chance that
Storer did visit the fair sometime during the relevant period,
that chance does not create more than a “bare possibility” of
a chain of events linking Art Attacks designs to MGA. Thus,
Art Attacks has not shown a chain of events sufficient to dem-
onstrate that MGA had access to copyrighted material.
2. Wide Dissemination
[7] Art Attacks can also prove access by demonstrating
wide dissemination of its protected work. Three Boys Music,
212 F.3d at 482. Art Attacks argues that it widely dissemi-
nated the Spoiled Brats designs in three ways: (1) on the Art
Attacks booth itself, (2) on Spoiled Brats T-shirts, which
serve as “walking billboards,” and (3) via the internet.
In Rice v. Fox Broadcasting Co., we held that a video that
sold 19,000 copies over a thirteen-year period could not be
considered widely disseminated. 330 F.3d 1170, 1178 (9th
Cir. 2003). In Jason v. Fonda, book sales of no more than
2,000 copies nationwide and no more than 700 copies in
Southern California did not create more than a bare possibility
of access. 526 F. Supp. 774, 776 (C.D. Cal. 1981) (adopted
and aff’d by Jason v. Fonda, 698 F.2d 966 (9th Cir. 1982)).
Art Attacks attempts to distinguish Rice and Jason by arguing
that books and videos require far more attention to view than
T-shirts, which require only an instant. Art Attacks also
argues that we should look beyond Spoiled Brats sales figures
and instead consider the number of people potentially exposed
to Spoiled Brats merchandise. We do not find that either of
these arguments demonstrate wide dissemination of the
Spoiled Brats designs.
13450 ART ATTACKS v. MGA ENTERTAINMENT
[8] Art Attacks displayed Spoiled Brats images on its fair
booths and store kiosks. The Spoiled Brats designs were not
the only displays, but did appear in a binder on the booth’s
counter, as well as on the walls of the 20′x10′ booth.
Although Art Attacks did not present any evidence of how
many people saw or noticed the booth, Art Attacks showed
that millions of people attend the relevant county fairs. Even
so, there is no evidence that significant numbers of passersby
would notice the Art Attacks booth among the many other
similar booths at the fair or be able to view the Spoiled Brats
displays.
[9] Nor are we convinced by Art Attacks’s “walking bill-
board” argument. Art Attacks sold only 2,000 Spoiled Brats
T-shirts per year. The only evidence Art Attacks presented
that supports the “walking billboard” argument was testimony
from Jo Ann Mauck, the owner of Art Attacks and designer
of the Spoiled Brats, that she once saw a person wearing a
Spoiled Brats shirt in public. Even allowing for differences in
attentional requirements needed to view T-shirts and the
books and videos at issue in Rice and Jason, Art Attacks can-
not demonstrate that its Spoiled Brats designs were widely
disseminated to the extent necessary to create more than a
“bare possibility” that MGA had access to the designs.
[10] Art Attacks also contends that its website widely dis-
seminated the Spoiled Brats designs. Although we recognize
the power of the internet to reach a wide and diverse audi-
ence, the evidence here is not sufficient to demonstrate wide
dissemination. Art Attacks launched its website in 1996, dur-
ing the early years of common internet use. The image-heavy
website took two full minutes to fully load. Even then, the
Spoiled Brats design was only one of several images on the
page. Viewers would not see the Spoiled Brats design without
scrolling down on the page. Furthermore, the webpage did not
include “meta tags” that would identify the Art Attacks site to
internet search engines. As a result, a potential viewer who
typed “Spoiled Brats” into a search field would likely not
ART ATTACKS v. MGA ENTERTAINMENT 13451
encounter the Art Attacks page. A website with such limita-
tions could not have widely disseminated the copyrighted
Spoiled Brats material.
[11] A reasonable jury could not have concluded that there
was more than a “bare possibility” that MGA had access to
Art Attacks’s Spoiled Brats designs. Accordingly, we affirm
the district court’s grant of summary judgment to MGA on the
copyright infringement claim.
C. Trade Dress
[12] Art Attacks also accused MGA of trade dress infringe-
ment. Trade dress protection applies to “a combination of any
elements in which a product is presented to a buyer,” includ-
ing the shape and design of a product. J.Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 8:1, at 8-
3 (4th ed. 2008). To prove trade dress infringement, a plaintiff
must demonstrate that (1) the trade dress is nonfunctional, (2)
the trade dress has acquired secondary meaning, and (3) there
is a substantial likelihood of confusion between the plaintiff ’s
and defendant’s products. Disc Golf Ass’n v. Champion Discs,
158 F.3d 1002, 1005 (9th Cir. 1998). Our analysis here cen-
ters on the second factor: whether Art Attacks’s trade dress
has acquired secondary meaning.
To succeed on a trade dress infringement based on product
design, the plaintiff must show that her design has attained
secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205, 214 (2000). “Secondary meaning can be estab-
lished in many ways, including (but not limited to) direct con-
sumer testimony; survey evidence; exclusivity, manner, and
length of use of a mark; amount and manner of advertising;
amount of sales and number of customers; established place
in the market; and proof of intentional copying by the defen-
dant.” Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns,
Inc., 198 F.3d 1143, 1151 (9th Cir. 1999). To show secondary
meaning, a plaintiff must demonstrate “a mental recognition
13452 ART ATTACKS v. MGA ENTERTAINMENT
in buyers’ and potential buyers’ minds that products con-
nected with the [mark] are associated with the same source.”
Japan Telecom v. Japan Telecom Am., 287 F.3d 866, 873 (9th
Cir. 2002) (internal quotation omitted).
Art Attacks argues that a reasonable jury could have found
secondary meaning based on (1) purchaser perception, (2)
advertising, (3) extent and exclusivity of use, and (4) actual
confusion.
1. Purchaser Perception
[13] In its attempt to show purchaser perception of an asso-
ciation between the Spoiled Brats’ characteristics and a single
source, Art Attacks largely reiterates its widespread dissemi-
nation arguments. Art Attacks again focuses on the number of
attendees at county fairs, and additionally cites expert testi-
mony identifying the Spoiled Brats defining features. Art
Attacks correctly points out that direct survey evidence of
purchaser perception is not required. See Clamp Mfg. Co. Inc.
v. Enco Mfg. Co. Inc., 870 F.2d 512, 517 (9th Cir. 1989).
Nevertheless, Art Attacks fails to demonstrate that purchasers
of a product that displayed large eyes, oversized feet, and
other characteristics typical of the Spoiled Brats would link
that product with a single source. The only source of such evi-
dence is the testimony of Tammie Gallagher, who said that
she would associate the Spoiled Brats image with Art Attacks
no matter where she saw it. Testimony from a single source
is insufficient to demonstrate secondary meaning. See Japan
Telecom, 287 F.3d at 866-67 (two letters and six declarations
insufficient to demonstrate secondary meaning). A reasonable
jury could not have found sufficient purchaser association
between Spoiled Brats trade dress and Art Attacks to establish
secondary meaning.
2. Advertising
[14] To demonstrate secondary meaning based on advertis-
ing, the advertising must be of a “nature and extent to create
ART ATTACKS v. MGA ENTERTAINMENT 13453
an association” with the advertiser’s goods. Dep’t of Parks
and Recreation v. Bazaar Del Mundo, 448 F.3d 1118, 1128
(9th Cir. 2006). The “true test of secondary meaning” is the
effectiveness of the advertising effort. International Jensen v.
Metrosound U.S.A., 4 F.3d 819, 824 (9th Cir. 1993).
[15] Here, Art Attacks again reiterates its claims regarding
its website and county fair booths, discussed at length above.
Art Attacks states, in short, that many people passed by the
Art Attacks booths at various county fairs, and that the Art
Attacks website made Spoiled Brats images widely available
to consumers. As discussed above, Art Attacks has provided
no evidence that these efforts were effective. A reasonable
jury could not have concluded otherwise.
3. Extent and Exclusivity of Use
Art Attacks attempts to show that its trade dress has
acquired secondary meaning based on the fact that Art
Attacks held a copyright to Spoiled Brats designs for over five
years. See Filipino Yellow Pages, 198 F.3d at 1151
(“Secondary meaning can be established in many ways,
including . . . exclusivity, manner, and length of use of a
mark”).
[16] Other circuits have explicitly held that extensive use
alone cannot establish secondary meaning. See, e.g. Vision
Center v. Opticks, 596 F.2d 111, 119 (5th Cir. 1979)
(“[C]ourts have summarily rejected claims of secondary
meaning predicated solely upon the continued use of the mark
for many years”) (internal quotation omitted). Our own cases
have suggested that secondary meaning requires more than
extensive use alone. See, e.g., Clamp Mfg., 870 F.2d at 517
(“[e]vidence of use and advertising over a substantial period
of time is enough to establish secondary meaning”) (emphasis
added); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d
1280, 1291 (9th Cir. 1992) (holding that a mark acquired sec-
13454 ART ATTACKS v. MGA ENTERTAINMENT
ondary meaning due to continued use of forty-six years and
“extensive and expensive advertising and promotion”).
[17] Art Attacks also cites 15 U.S.C. § 1052(f) for support.
That statute, which applies to trademark registration, clearly
states, however, that “proof of substantially exclusive and
continuous use thereof as a mark by the applicant in com-
merce for the five years before the date on which the claim
of distinctiveness is made” can serve as prima facie evidence
of distinctiveness. Id. (emphasis added). Art Attacks showed
no evidence of exclusivity. Here, therefore, a reasonable jury
could not have found secondary meaning based solely on five
years of use.
4. Actual Confusion
[18] Lastly, Art Attacks attempts to show secondary mean-
ing by demonstrating actual consumer confusion between
MGA’s Bratz dolls and Art Attacks’s Spoiled Brats designs.
To support this claim, Art Attacks refers to testimony from
three witnesses: Tim Lowery, Emerson Kovacs, Pamela
Karns. All three of these witnesses were Art Attacks employ-
ees or personal friends of Art Attacks founder Jo Ann Mauck,
or both. In Japan Telecom, we rejected evidence of actual
confusion from witnesses who had personal relationships with
the plaintiff company’s president. Japan Telecom, 287 F.3d at
874. Similarly, we held in Self-Realization Fellowship Church
v. Ananda Church of Self-Realization that declarations from
employees have little probative value. 59 F.3d 902, 910 (9th
Cir. 1995). A reasonable jury therefore could not have found
actual confusion sufficient to establish secondary meaning.
IV. Conclusion
Because we conclude that a reasonable jury could not find
that Art Attacks’s trade dress has acquired secondary mean-
ing, we do not address the functionality or substantial likeli-
hood of confusion prongs of the trade dress analysis. See Disc
ART ATTACKS v. MGA ENTERTAINMENT 13455
Golf Ass’n, 158 F.3d at 1005. Though MGA’s renewed
motion for summary judgment was untimely, Federal Rule of
Civil Procedure 50(b)’s ten-day filing limit is an inflexible
claim-processing rule, not a jurisdictional rule. Art Attacks
waived its forfeitable timeliness argument by failing to raise
it to the district court. A reasonable jury could not have found
that MGA had access to Art Attacks’s copyrighted work, nor
that Art Attacks’s trade dress had acquired secondary mean-
ing. Accordingly, we AFFIRM the district court’s grant of
summary judgment on the copyright infringement and trade
dress claims.2
2
We also affirm the district court’s grant of judgment as a matter of law
with respect to Isaac Larian.