In a four-page opinion issued on Wednesday, Judge Vince Chhabria opined that Cub Club Investment LLC fell short of proving the copyright and trade dress infringement claims it leveled against Apple Inc. Cub Club sued after the tech titan allegedly copied the racially diverse emoji available in a software application, asserting that although the companies tried to collaborate, Apple ultimately misappropriated its protected works.
After the case was transferred to the Northern District of California from the Western District of Texas at Apple’s request, the defendant moved to dismiss, arguing that Cub Club failed to state a claim for relief. Specifically, Apple argued that the idea of applying different skin tones to emoji is not protected by copyright law.
In this week’s opinion, the court agreed. Cub Club’s racially diverse emoji are entitled to protection only against “virtually identical copying,” the court opined after concluding that there are not many ways someone could depict body parts in certain positions and in varying, but still realistic, skin tones.
Because the complaint admitted that Apple’s emoji are similar but not identical, the court found the differences “sufficient to take Apple’s emoji outside the realm of Cub Club’s protected expression.”
The court also declined Cub Club’s trade dress infringement claims after finding its trade dress claim lacking. The court deemed the trade dress functional, “in the utilitarian sense, as each of these features—the insertion of an emoji into messages; the ability to select the desired emoji from a palette—‘relates to the performance of the product in its intended purpose.’” Even the range of skin tones available is functional, the court said, opining that “though aesthetic, ‘it serves a purpose wholly independent of any source identifying function.’”
Judge Chhabria then dismissed the plaintiff’s state law claims as each depended on the validity of its trade dress allegations. The court expressed skepticism about Cub Club’s ability to successfully amend its complaint, but nonetheless granted it 14 days to do so.
Apple is represented by Scott Douglass & McConnico LLP and Latham & Watkins LLP. Cub Club is represented by Patterson + Sheridan LLP.
