Case 3:21-cv-06948-VC Document 77 Filed 02/16/22 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`CUB CLUB INVESTMENT, LLC,
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`Plaintiff,
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`v.
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`APPLE INC,
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`Defendant.
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`Case No. 21-cv-06948-VC
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`ORDER GRANTING MOTION TO
`DISMISS
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`Re: Dkt. No. 54
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`Cub Club Investment created an app that allowed people to send racially diverse emoji.
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`According to the complaint, when Apple learned of the app, it liked the idea—so much so, in
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`fact, that it copied it. But even assuming the allegations in the complaint are true, the idea is all
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`that Apple copied. Because Cub Club has not alleged the copying of any protectable element of
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`its emoji, the motion to dismiss the copyright claim is granted. And because Cub Club has not
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`adequately alleged trade dress infringement, the remaining claims are dismissed as well.
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`1. “[C]opyright law does not forbid all copying.” Rentmeester v. Nike, Inc., 883 F.3d
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`1111, 1117 (9th Cir. 2018), overruled on other grounds by Skidmore v. Led Zeppelin, 952 F.3d
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`1051 (9th Cir. 2020). To survive a motion to dismiss, a plaintiff must allege that the defendant
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`“copied enough of the protected expression . . . to establish unlawful appropriation.” Id. at 1118.
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`In making this comparison, one of two standards applies, depending on the range of possibilities
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`open to someone attempting to implement the idea. Where the range of the possible expression
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`of the underlying idea is “broad,” a work will infringe if it is “substantially similar” to the
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`copyrighted work. Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913–14 (9th Cir.
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`2010) (quoting Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439, 1446–47 (9th Cir.
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`Case 3:21-cv-06948-VC Document 77 Filed 02/16/22 Page 2 of 4
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`1994)). But “[i]f there’s only a narrow range of expression . . . then copyright protection is ‘thin’
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`and a work must be ‘virtually identical’ to infringe.” Id. at 914.
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`The copyrighted works are expressions of Cub Club’s idea of racially diverse emoji. Each
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`of the emoji described in the complaint are variations on this theme, depicting body parts in
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`certain positions (thumbs up; thumbs down; a fist; etc.) in varying skin tones. There aren’t many
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`ways that someone could implement this idea. After all, there are only so many ways to draw a
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`thumbs up. And the range of colors that could be chosen is similarly narrow—only realistic skin
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`colors (hues of brown, black, and beige, rather than purple or blue) fall within the scope of the
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`idea. Cub Club’s emoji are therefore “entitled to only thin copyright protection against virtually
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`identical copying.” Mattel, 616 F.3d at 915.
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`As alleged in the complaint, Apple’s emoji are not “virtually identical” to Cub Club’s.
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`Compared side by side, there are numerous differences. Whereas Cub Club’s emoji are filled in
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`with a gradient, the coloring of Apple’s emoji are more consistent. The shape of Apple’s thumbs-
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`up emoji is cartoonish and bubbled, while Cub Club’s is somewhat flatter. Many of Cub Club’s
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`emoji have shadows; Apple’s do not. Even the colors used are distinct—although both Cub Club
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`and Apple have chosen a variety of skin tones ranging from dark to light, the specific colors
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`vary. These differences are sufficient to take Apple’s emoji outside the realm of Cub Club’s
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`protected expression.
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`2. To state a claim for trade dress infringement, a plaintiff must allege that “(1) the trade
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`dress is nonfunctional, (2) the trade dress has acquired secondary meaning, and (3) there is
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`substantial likelihood of confusion between the plaintiff’s and defendant’s products.” Art Attacks
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`Ink, LLC v. MGA Entertainment Inc., 581 F.3d 1138, 1145 (9th Cir. 2009).
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`The trade dress alleged in the complaint is functional. The asserted trade dress consists of
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`“the overall look and feel” of Cub Club’s “products,” including “the insertion of an emoji into
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`messages . . . on mobile devices by selecting from a palette of diverse, five skin tone emoji.”
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`This is functional in the utilitarian sense, as each of these features—the insertion of an emoji into
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`messages; the ability to select the desired emoji from a palette—“relates to the performance of
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`2
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`Case 3:21-cv-06948-VC Document 77 Filed 02/16/22 Page 3 of 4
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`the product in its intended purpose.” Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457
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`F.3d 1062, 1067 (9th Cir. 2006). Even the fact of the “palette” of diverse skin tones is functional,
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`as this aspect of the product, though aesthetic, serves a “purpose wholly independent of any
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`source identifying function.” Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859,
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`865 (9th Cir. 2020) (quoting Millennium Laboratories, Inc. v. Ameritox, Ltd., 817 F.3d 1123,
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`1131 (9th Cir. 2016)). You can’t build a product for sending racially diverse emoji if the emoji
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`are not racially diverse.
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`Cub Club’s allegations that the asserted trade dress goes beyond these functional
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`elements to the “look and feel” of the product is not enough to save its claim. “As a matter of
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`law, a product’s ‘overall appearance’ is functional, and thus unprotectable, where the product is
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`‘nothing other than the assemblage of functional parts.’” Blumenthal Distributing, Inc., 963 F.3d
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`at 866 (quoting Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009, 1013
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`(9th Cir. 1999)). In the absence of allegations identifying non-functional elements of Cub Club’s
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`product, such a conclusory statement is not sufficient to plausibly allege that the asserted trade
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`dress is non-functional.
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`This alone is enough to doom Cub Club’s trade dress claim. But the allegations fail on
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`the other elements as well. The complaint is devoid of allegations that the product has attained
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`secondary meaning. And the complaint does not lead to a plausible inference that consumers are
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`likely to face any confusion between Cub Club’s product and Apple’s. After all, Cub Club’s
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`product is a standalone application, while Apple’s is embedded within the phone keyboard.1
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`The motion to dismiss the trade dress claim is therefore granted. And because Cub Club’s
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`state law claims each depend upon the validity of the trade dress allegations, these claims are
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`dismissed as well.
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`* * *
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`1 The Court reads the complaint as alleging trade dress over Cub Club’s app, rather than the
`individual emoji. But a trade dress claim over the individual emoji would fail for the same
`reasons.
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`3
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`Case 3:21-cv-06948-VC Document 77 Filed 02/16/22 Page 4 of 4
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`The motion to dismiss is granted. Having seen many of the emoji side by side in the
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`complaint, the Court is skeptical that Cub Club will be able to allege copyright or trade dress
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`infringement in an amended complaint. But in the interest of caution, the complaint is dismissed
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`with leave to amend.2 Any amended complaint must be filed within 14 days of this order. If none
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`is filed by that time, the dismissal will be with prejudice.
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`IT IS SO ORDERED.
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`Dated: February 16, 2022
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`______________________________________
`VINCE CHHABRIA
`United States District Judge
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`2 The parties are reminded that briefing in any future motions must comport with this Court’s
`page limits. See Standing Order for Civil Cases Before Judge Vince Chhabria, at ¶ 38.
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`4
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