Emoji Copyright Case Against Apple Transferred to NDCA

On Tuesday, Judge Alan D. Albright granted Apple Inc.’s request to move a Western District of Texas case concerning emojis to San Jose, California. On the same day that Apple moved to dismiss, it asked the court to move the case to its headquarters’ district, arguing that the suit would be more convenient to litigate there.

The lawsuit dates to September 2020 when Cub Club Investment LLC (CCI) sued Apple for federal copyright and trade dress infringement regarding its emojis, “digital images or icons used to express an idea or emotion by the sender” used in smartphone and social media platform communications. Katrina Parrott reportedly founded CCI and created the iDiversicons® brand, the world’s first diverse emoji, featuring emojis depicting human body parts in five different skin color hues. The integration reportedly debuted in the Apple App Store in October 2013.

Chiefly, CCI argued that after an almost-partnership with Apple that never materialized, Apple copied or created emojis substantially similar to those copyrighted by the plaintiff. A  comparison of the litigants’ emojis, one of several, is reprinted from the complaint below.

Last November, Apple moved to dismiss the suit and the plaintiff opposed. The motion was still pending when the case was transferred earlier this week.

In his decision, Judge Albright found that the suit could have been brought in the Northern District of California, then analyzed each of the seven private and public factors that form a whether-to-transfer balancing test. The court first found that the private interest factors clearly establish that the proposed transferee district is a more fitting venue. 

The court’s decision partly rested on the relative ease of access to sources of proof. It held that because Apple resides in the district and because “the accused features were apparently developed at Apple’s offices in California,” that factor weighed in favor of transfer.

As for the witness convenience factor, the defendant contended that all of the prospective witnesses with knowledge of Apple’s development of emojis with skin-tone variation are in the transferee district, except for one who lives in Oregon. Apple also pointed out that not a single witness resides or works in the current district nor is it likely that work would bring them to Apple’s Austin, Texas campus.

Taken as a whole, the public-interest factors were neutral, the court found. Judge Albright determined that the only public factor in favor of transfer was that considering local interest in having local issues decided at home. On this point, Apple successfully argued that the Western District of Texas has no real interest in this action since CCI is located in an entirely other district, the Southern District of Texas.

The case will now proceed before Magistrate Judge Virginia K. DeMarchi. A joint case management statement is due by November 30, with a conference scheduled for the first week of December.

Apple is represented by Scott Douglass & Mcconnico LLP and Latham & Watkins LLP and CCI by Patterson + Sheridan LLP and The Ribbeck Law Firm LPPC.