Mattel Inc. v. MGA Entertainment, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

MATTEL, INC., a Delaware

corporation,

Defendant-counter-claimant-

Appellee,

v.

MGA ENTERTAINMENT, INC.; MGA

ENTERTAINMENT (HK) LIMITED, a

Hong Kong Special Administrative

Region business entity; ISAAC

LARIAN, an individual, No. 09-55673

Counter-defendants-Appellants,

ý D.C. No. CARTER BRYANT, an individual, 2:04-cv-09049-

Plaintiff-counter-defendant, SGL-RNB

CARLOS GUSTAVO MACHADO

GOMEZ, an individual; MGAE DE

MEXICO, S.R.L. DE C.V., a Mexico

business entity,

Counter-defendants,

ANNE WANG,

Third-party-defendant,

OMNI 808 INVESTORS LLC,

Movant. þ

10523

CARTER BRYANT, an individual, ü

Plaintiff-counter-defendant-

Appellee,

MGA ENTERTAINMENT, INC.; MGA

ENTERTAINMENT (HK) LIMITED, a

Hong Kong Special Administrative

Region business entity; ISAAC L No. 09-55812 ARIAN, an individual,

Counter-defendants-Appellees, D.C. No.

v. ý 2:04-cv-09049-SGL- RNB

MATTEL, INC., a Delaware

corporation, OPINION Defendant-counter-claimant-

Appellant,

CARLOS GUSTAVO MACHADO

GOMEZ, an individual; MGAE DE

MEXICO, S.R.L. DE C.V., a Mexico

business entity,

Counter-defendants. þ

Appeal from the United States District Court

for the Central District of California

Stephen G. Larson, District Judge, Presiding

Argued and Submitted

December 9, 2009—Pasadena, California

Filed July 22, 2010

Before: Alex Kozinski, Chief Judge, Stephen S. Trott and

Kim McLane Wardlaw, Circuit Judges.

Opinion by Chief Judge Kozinski

COUNSEL

E. Joshua Rosenkranz (argued) and Lisa T. Simpson, Orrick,

Herrington & Sutcliffe LLP, New York, New York; Annette

L. Hurst and Warrington S. Parker III, Orrick, Herrington &

Sutcliffe LLP, San Francisco, California; and Thomas J.

Nolan and Jason D. Russell, Skadden, Arps, Slate, Meagher

& Flom LLP, Los Angeles, California, for the appellants.

Daniel P. Collins (argued), Kelly M. Klaus, Aimee Feinberg

and Mark Yohalem, Munger, Tolles & Olson LLP, Los Angeles,

California; and John B. Quinn, Susan R. Estrich, Michael

T. Zeller and B. Dylan Proctor, Quinn Emanuel Urquhart Oliver

& Hedges, LLP, Los Angeles, California, for the appellee.

Simon J. Frankel, Margaret D. Wilkinson and Steven D. Sassaman,

Covington & Burling LLP, San Francisco, California;

Steven M. Freeman and Steven C. Sheinberg, Anti-

Defamation League, New York, New York; and Michelle N.

Deutchman, Anti-Defamation League, Los Angeles, California,

for amici Anti-Defamation League et al.

OPINION

KOZINSKI, Chief Judge:

Who owns Bratz?

I

Barbie was the unrivaled queen of the fashion-doll market

throughout the latter half of the 20th Century. But 2001 saw

the introduction of Bratz, “The Girls With a Passion for Fashion!”

Unlike the relatively demure Barbie, the urban, multiethnic

and trendy Bratz dolls have attitude. This spunk struck

a chord, and Bratz became an overnight success. Mattel,

which produces Barbie, didn’t relish the competition. And it

was particularly unhappy when it learned that the man behind

Bratz was its own former employee, Carter Bryant.

Bryant worked in the “Barbie Collectibles” department,

where he designed fashion and hair styles for high-end Barbie

dolls intended more for accumulation than for play. In August

2000, while he was still employed by Mattel, Bryant pitched

his idea for the Bratz line of dolls to two employees of MGA

Entertainment, one of Mattel’s competitors. Bryant was soon

called back to see Isaac Larian, the CEO of MGA. Bryant

brought some preliminary sketches, as well as a crude dummy

constructed out of a doll head from a Mattel bin, a Barbie

body and Ken (Barbie’s ex) boots. The Zoe, Lupe, Hallidae

and Jade dolls in Bryant’s drawings eventually made it to

market as Cloe, Yasmin, Sasha and Jade, the first generation

of Bratz dolls.

Bryant signed a consulting agreement with MGA on October

4, 2000, though it was dated September 18. Bryant gave

Mattel two weeks’ notice on October 4 and continued working

there until October 19. During this period, Bryant was

also working with MGA to develop Bratz, even creating a

preliminary Bratz sculpt.1 A sculpt is a mannequin-like plastic

doll body without skin coloring, face paint, hair or clothing.

MGA kept Bryant’s involvement with the Bratz project

secret, but Mattel eventually found out. This led to a flurry of

lawsuits, which were consolidated in federal district court.

Proceedings below were divided into two phases. Phase 1

dealt with claims relating to the ownership of Bratz; Phase 2

is pending and will deal with the remaining claims. This is an

interlocutory appeal from the equitable orders entered at the

conclusion of Phase 1.

During Phase 1, Mattel argued that Bryant violated his

employment agreement by going to MGA with his Bratz idea

instead of disclosing and assigning it to Mattel. Mattel

claimed it was the rightful owner of Bryant’s preliminary

sketches and sculpt, which it argued MGA’s subsequent Bratz

dolls infringed. And it asserted that MGA wrongfully

acquired the ideas for the names “Bratz” and “Jade,” so the

Bratz trademarks should be transferred from MGA to Mattel.

1The sculpt was actually crafted by a freelance sculptor with input from

Bryant. The parties disputed below whether Bryant “created” it, and the

jury found that Bryant did. This finding is not challenged on appeal.

Mattel won virtually every point below. The jury found that

Bryant thought of the “Bratz” and “Jade” names, and created

the preliminary sketches and sculpt, while he was employed

by Mattel. It found that MGA committed three state-law violations

relating to Bryant’s involvement with Bratz. And it

issued a general verdict finding MGA liable for infringing

Mattel’s copyrights in Bryant’s preliminary Bratz works. Mattel

sought more than $1 billion in copyright damages but the

jury awarded Mattel only $10 million, or about 1% of that

amount, perhaps because it found only a small portion of the

Bratz dolls infringing. See p.10537 infra.

The district court entered equitable relief based on the

jury’s findings. As to the state-law violations, the district

court imposed a constructive trust over all trademarks including

the terms “Bratz” and “Jade,” essentially transferring the

Bratz trademark portfolio to Mattel.2 The transfer prohibited

MGA from marketing any Bratz-branded product, such as

Bratz dolls (Bratz, Bratz Boyz, Lil’ Bratz, Bratz Lil’ Angelz,

Bratz Petz, Bratz Babyz, Itsy Bitsy Bratz, etc.), doll accessories

(Bratz World House, Bratz Cowgirlz Stable, Bratz Spring

Break Pool, Bratz Babyz Ponyz Buggy Blitz, etc.), video

games (“Bratz: Girlz Really Rock,” “Bratz: Forever Diamondz,”

“Bratz: Rock Angelz,” etc.) and Bratz the movie.

As to the copyright claim, the district court issued an

injunction prohibiting MGA from producing or marketing virtually

every Bratz female fashion doll, as well as any future

dolls substantially similar to Mattel’s copyrighted Bratz

works. The injunction covered not just the original four dolls,

but also subsequent generations (e.g., “Bratz Slumber Party

Sasha” and “Bratz Girlfriendz Nite Out Cloe”) and other doll

2Based on the finding that MGA wrongfully acquired the ideas for the

names “Bratz” and “Jade,” the district court also entered a UCL injunction

and a declaratory judgment concerning MGA’s right to the Bratz trademarks.

For simplicity, we will refer only to the constructive trust to

describe all equitable relief.

characters (e.g., “Bratz Play Sportz Lilee” and “Bratz Twins

Phoebe and Roxxi”).

In effect, Barbie captured the Bratz. The Bratz appeal.

II

[1] A constructive trust is an equitable remedy that compels

the transfer of wrongfully held property to its rightful

owner. Communist Party of U.S. v. 522 Valencia, Inc., 41 Cal.

Rptr. 2d 618, 623 (Cal. Ct. App. 1995); see also Cal. Civ.

Code § 2223 (“One who wrongfully detains a thing is an

involuntary trustee thereof, for the benefit of the owner.”). A

plaintiff seeking imposition of a constructive trust must show:

(1) the existence of a res (property or some interest in property);

(2) the right to that res; and (3) the wrongful acquisition

or detention of the res by another party who is not entitled to

it. Communist Party, 41 Cal. Rptr. 2d at 623-24.

Prior to trial, the district court held that Bryant’s employment

agreement assigned his ideas to Mattel, and so instructed

the jury. What was left for the jury to decide was which ideas

Bryant came up with during his time with Mattel. It found that

Bryant thought of the names “Bratz” and “Jade” while he was

employed by Mattel, and that MGA committed several statelaw

violations by interfering with Bryant’s agreement as well

as aiding and abetting its breach. After trial, the district court

imposed a constructive trust over all Bratz-related trademarks.

We review that decision for abuse of discretion. See GHK

Assocs. v. Mayer Group, Inc., 274 Cal. Rptr. 168, 182 (Cal.

Ct. App. 1990).

A.

[2] A constructive trust would be appropriate only if Bryant

assigned his ideas for “Bratz” and “Jade” to Mattel in the

first place. Whether he did turns on the interpretation of Bryant’s

1999 employment agreement, which provides: “I agree

to communicate to the Company as promptly and fully as

practicable all inventions (as defined below) conceived or

reduced to practice by me (alone or jointly by others) at any

time during my employment by the Company. I hereby assign

to the Company . . . all my right, title and interest in such

inventions, and all my right, title and interest in any patents,

copyrights, patent applications or copyright applications

based thereon.” (Emphasis added.) The contract specifies that

“the term ‘inventions’ includes, but is not limited to, all discoveries,

improvements, processes, developments, designs,

know-how, data computer programs and formulae, whether

patentable or unpatentable.” The district court held that the

agreement assigned Bryant’s ideas to Mattel, even though

ideas weren’t included on that list or mentioned anywhere

else in the contract.3 We review the district court’s construction

of the agreement de novo. See L.K. Comstock & Co. v.

United Eng’rs & Constructors Inc., 880 F.2d 219, 221 (9th

Cir. 1989).

Mattel points out that the list of examples of what constitutes

an invention is illustrative rather than exclusive. Ideas,

however, are markedly different from most of the listed examples.

Cf. People ex rel. Lungren v. Superior Ct., 926 P.2d

1042, 1057 (Cal. 1996) (courts avoid constructions that would

make “a particular item in a series . . . markedly dissimilar to

other items on the same list”). Designs, processes, computer

programs and formulae are concrete, unlike ideas, which are

ephemeral and often reflect bursts of inspiration that exist

only in the mind. On the other hand, the agreement also lists

less tangible inventions such as “know-how” and “discoveries.”

And Bryant may have conveyed rights in innovations

that were not embodied in a tangible form by assigning inventions

he “conceived” as well as those he reduced to practice.

3Contrary to Mattel’s argument, MGA adequately preserved its objections

to this ruling.

[3] We conclude that the agreement could be interpreted to

cover ideas, but the text doesn’t compel that reading. The district

court thus erred in holding that the agreement, by its

terms, clearly covered ideas. Had the district court recognized

the ambiguity, it might have evaluated whether it could be

resolved by extrinsic evidence. See Wolf v. Superior Court, 8

Cal. Rptr. 3d 649, 655-56 (Cal. Ct. App. 2004). At various

stages of litigation, the parties introduced such evidence supporting

their respective interpretations of “inventions.” Contracts

Mattel drafted for other employees, for example,

expressly assigned their “ideas” as well as their “inventions.”

This tends to show that the term “inventions” alone doesn’t

include ideas. On the other hand, a Mattel executive claimed

during her deposition that it was common knowledge in the

design industry that terms like “invention” and “design” did

include employee ideas. Because the district court concluded

that the language of the contract was clear, it didn’t consider

the extrinsic evidence the parties presented. Even if it had, it

may not have been able to resolve the meaning of “inventions.”

If the meaning turns in part on the credibility of conflicting

extrinsic evidence, a properly instructed jury should

have decided the issue. See Morey v. Vannucci, 75 Cal. Rptr.

2d 573, 579 (Cal. Ct. App. 1998). Because we must vacate the

constructive trust in any event, for reasons explained below,

this is a matter the district court can take up on remand.

B.

The very broad constructive trust the district court imposed

must be vacated regardless of whether Bryant’s employment

agreement assigned his ideas to Mattel. Even assuming that it

did, and that MGA therefore misappropriated the names

“Bratz” and “Jade,” the value of the trademarks the company

eventually acquired for the entire Bratz line was significantly

greater because of MGA’s own development efforts, marketing

and investment. The district court nonetheless transferred

MGA’s entire Bratz trademark portfolio to Mattel on the

ground that the “enhancement of value [of the property held

in trust] is given to the beneficiary of the constructive trust.”

As a result, Mattel acquired the fruit of MGA’s hard work,

and not just the appreciation in value of the ideas Mattel

claims it owns.

[4] In general, “[t]he beneficiary of the constructive trust

is entitled to enhancement in value of the trust property.”

Haskel Eng’g & Supply Co. v. Hartford Accident & Indem.

Co., 144 Cal. Rptr. 189, 193 (Cal. Ct. App. 1978). This is so

“not because [the beneficiary] has a substantive right to [the

enhancement] but rather to prevent unjust enrichment of the

wrongdoer-constructive trustee.” Id. Thus, a person who

fraudulently acquired a house worth $100,000 in 2000 that

appreciates to $200,000 by 2010 because of a strong real

estate market can’t complain when the rightful owner takes

the benefit of the $100,000 increase. “[I]t is simple equity that

a wrongdoer should disgorge his fraudulent enrichment.”

Janigan v. Taylor, 344 F.2d 781, 786 (1st Cir. 1965).

[5] This principle has the greatest force where the appreciation

of the property is due to external factors rather than the

efforts of the wrongful acquisitor. Id. at 787. “When the

defendant profits from the wrong, it is necessary to identify

the profits and to recapture them without capturing the fruits

of the defendant’s own labors or legitimate efforts.” Dan B.

Dobbs, Dobbs Law of Remedies: Damages-Equity-Restitution

§ 6.6(3) (2d ed. 1993). This is because “the aim of restitution

has been to avoid taking the defendant’s blood along with the

pound of flesh.” Id. § 6.6(3) n.4. A constructive trust is therefore

“not appropriate to every case because it can overdo the

job.” Id. § 4.3(2).

[6] When the value of the property held in trust increases

significantly because of a defendant’s efforts, a constructive

trust that passes on the profit of the defendant’s labor to the

plaintiff usually goes too far. For example, “[i]f an artist

acquired paints by fraud and used them in producing a valuable

portrait we would not suggest that the defrauded party

would be entitled to the portrait, or to the proceeds of its

sale.” Janigan, 344 F.2d at 787. Even assuming that MGA

took some ideas wrongfully, it added tremendous value by

turning the ideas into products and, eventually, a popular and

highly profitable brand. The value added by MGA’s hard

work and creativity dwarfs the value of the original ideas Bryant

brought with him, even recognizing the significance of

those ideas. We infer that the jury made much the same judgment

when it awarded Mattel only a small fraction of the

more than $1 billion in interest-adjusted profit MGA made

from the brand.

From the ideas for the names “Bratz” and “Jade,” MGA

created not only the first generation of Bratz dolls (Cloe,

Yasmin, Sasha and Jade), but also many other Bratz characters

(Ciara, Dana, Diona, Felicia, Fianna and so on), as well

as subsequent generations of the original four dolls (“Bratz

Flower Girlz Cloe,” “Bratz on Ice Doll Yasmin,” etc.). MGA

also generated other doll lines, such as the Bratz Boyz, Bratz

Petz and Bratz Babyz. And it made a variety of Bratz doll

accessories, along with several Bratz video games and a

movie. These efforts significantly raised the profile of the

Bratz brand and increased the value of the Bratz trademarks.

[7] It is not equitable to transfer this billion dollar brand—

the value of which is overwhelmingly the result of MGA’s

legitimate efforts—because it may have started with two misappropriated

names. The district court’s imposition of a constructive

trust forcing MGA to hand over its sweat equity was

an abuse of discretion and must be vacated.

III

[8] Mattel also claimed ownership of Bryant’s preliminary

Bratz drawings and sculpt under Bryant’s employment agreement,

and that MGA’s subsequent Bratz dolls infringed its

copyrights in those works. The drawings and sculpt clearly

were “inventions” as that term is defined in Bryant’s employ-

ment agreement with Mattel. However, MGA argued that the

employment agreement didn’t assign the items because Bryant

created them outside the scope of his employment at Mattel,

on his own time. At summary judgment, the district court

held that the agreement assigned inventions even if they were

not made during working hours, so long as they were created

during the time period Bryant was employed by Mattel. So

instructed, the jury found that Bryant made the drawings and

sculpt while he was employed by Mattel, and the agreement

therefore assigned them to Mattel.4 The jury was not asked to

find whether Bryant made the drawings and sculpt during

Mattel work hours, and it’s unclear whether the record contained

any evidence on this point.

Once Mattel established ownership of Bryant’s preliminary

sketches and sculpt, it pursued a copyright claim against

MGA. The district court instructed the jury that any “substantially

similar” Bratz doll infringed Mattel’s copyrights in the

sketches and sculpt. During deliberations, the jury sent the

judge a note asking if it could find infringement as to the first

generation of Bratz dolls and no others. The judge said it

could. The jury returned a general verdict finding MGA liable

for copyright infringement, but awarded Mattel only $10 million

in damages, a tiny fraction of the more than $1 billion to

which Mattel claimed it was entitled. The district court

thought it unclear which Bratz dolls, or how many dolls, the

jury thought infringing, so it made its own infringement findings

in determining whether Mattel was entitled to equitable

relief. The district court found the vast majority of Bratz dolls

infringing and enjoined MGA from producing them or any

other substantially similar dolls.

4The jury also found that Bryant created the dummy doll, see p.10530

supra, while he was at Mattel. The dummy was thrown away long before

this litigation ensued, and was so crude that no copyright claim is based

on it.

A.

Bryant’s 1999 employment agreement assigns to Mattel

inventions created “at any time during my employment by the

Company.”5 MGA argues that “at any time during my

employment” covers only works created within the scope of

Bryant’s employment, not those created on his own time and

outside of his duties at Mattel. Bryant wasn’t tasked with creating

new doll lines there; he designed fashions and hair styles

for Barbie Collectibles. MGA thus argues that Bryant created

the Bratz designs and came up with the names “Bratz” and

“Jade” outside the scope of his employment, and that he

therefore owns the work.6

The district court disagreed, holding at summary judgment

that the agreement assigned to Mattel “any doll or doll fashions

[Bryant] designed during the period of his employment

with Mattel.” It was therefore irrelevant “whether Bryant

worked on [Bratz] on his own time [or] during his working

hours at Mattel.” We again review the district court’s construction

of the contract de novo. See L.K. Comstock, 880

F.2d at 221.

[9] The phrase “at any time during my employment” is

ambiguous. It could easily refer to the entire calendar period

Bryant worked for Mattel, including nights and weekends.

5The agreement excepts inventions that “qualif[y] under the provision

of Section 2870 of the California Labor Code[, which] provides that the

requirement to assign ‘shall not apply to an invention that the employee

developed entirely on his or her own time without using the employer’s

equipment, supplies, facilities or trade secret information except for those

inventions that either (1) relate at the time of conception or reduction to

practice of the invention to the employer’s business . . . or (2) result from

any work performed by the employee for the employer.’ ”

6It won’t matter whether Bryant came up with the ideas in the course

of employment if the district court or a properly instructed jury determines

that the agreement didn’t assign ideas in the first place. See Part II.A

supra.

But it can also be read more narrowly to encompass only

those inventions created during work hours (“during my

employment”), possibly including lunch and coffee breaks

(“at any time”).7 Extrinsic evidence doesn’t resolve the

ambiguity. For example, an employee testified that it was

“common knowledge that a lot of people were moonlighting

and doing other work,” which wasn’t a problem so long as it

was done on “their own time,” and at “their own house.” She

agreed when asked, “Was it your understanding that if you

designed dolls when you were at home at night that you

owned them?” However, another employee testified, “Everything

I did for Mattel belonged to Mattel. Actually, everything

I did while I was working for Mattel belonged to Mattel.”

[10] Because the agreement’s language is ambiguous and

some extrinsic evidence supports each party’s reading, the

district court erred by granting summary judgment to Mattel

on this issue and holding that the agreement clearly assigned

works made outside the scope of Bryant’s employment. See

City of Hope Nat’l Med. Ctr., 181 P.3d at 156. The issue

should have been submitted to the jury, which could then

have been instructed to determine (1) whether Bryant’s agreement

assigned works created outside the scope of his employment

at Mattel, and (2) whether Bryant’s creation of the Bratz

sketches and sculpt was outside the scope of his employment.

B.

The district court’s error in construing the employment

agreement is sufficient to vacate the copyright injunction. On

7Mattel argues that because employers are already considered the

authors of works made for hire under the Copyright Act, 17 U.S.C.

§ 201(b), the agreement must cover works made outside the scope of

employment. Otherwise, employees would be assigning to Mattel works

the company already owns. But the contract provides Mattel additional

rights by covering more than just copyrightable works. The contract can

also be enforced in state court, whereas Copyright Act claims must be

heard in federal court.

remand, Mattel might well convince a properly instructed jury

that the agreement assigns works created outside the scope of

employment, or that Bryant’s preliminary Bratz sketches and

sculpt were created within the scope of his employment at

Mattel. The district court would then once again have to

decide whether to grant a copyright injunction. We therefore

believe it prudent to address MGA’s appeal of the district

court’s copyright rulings.

[11] Mattel argued that MGA’s Bratz dolls infringed its

copyrights in the sketches and sculpt. To win its copyright

claim, Mattel had to establish three things. First, Mattel had

to prove that it owned copyrights in the sketches and sculpt

(it did). Second, it had to show that MGA had access to the

sketches and sculpt (obviously). Third, it had to establish that

MGA’s dolls infringe the sketches and sculpt (the kicker). See

Aliotti v. R. Dakin & Co., 831 F.2d 898, 900 (9th Cir. 1987).

[12] Assuming that Mattel owns Bryant’s preliminary

drawings and sculpt, its copyrights in the works would cover

only its particular expression of the bratty-doll idea, not the

idea itself. See Herbert Rosenthal Jewelry Corp. v. Kalpakian,

446 F.2d 738, 742 (9th Cir. 1971). Otherwise, the first

person to express any idea would have a monopoly over it.

Degas can’t prohibit other artists from painting ballerinas, and

Charlaine Harris can’t stop Stephenie Meyer from publishing

Twilight just because Sookie came first. Similarly, MGA was

free to look at Bryant’s sketches and say, “Good idea! We

want to create bratty dolls too.”

[13] Mattel, of course, argues that MGA went beyond this

by copying Bryant’s unique expression of bratty dolls, not just

the idea. To distinguish between permissible lifting of ideas

and impermissible copying of expression, we have developed

a two-part “extrinsic/intrinsic” test. See Apple Computer, Inc.

v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). At the

initial “extrinsic” stage, we examine the similarities between

the copyrighted and challenged works and then determine

whether the similar elements are protectable or unprotectable.

See id. at 1442-43. For example, ideas, scenes a faire (standard

features) and unoriginal components aren’t protectable.

Id. at 1143-45. When the unprotectable elements are “filtered”

out, what’s left is an author’s particular expression of an idea,

which most definitely is protectable. Id.

[14] Given that others may freely copy a work’s ideas (and

other unprotectable elements), we start by determining the

breadth of the possible expression of those ideas. If there’s a

wide range of expression (for example, there are gazillions of

ways to make an aliens-attack movie), then copyright protection

is “broad” and a work will infringe if it’s “substantially

similar” to the copyrighted work. See id. at 1439, 1146-47. If

there’s only a narrow range of expression (for example, there

are only so many ways to paint a red bouncy ball on blank

canvas), then copyright protection is “thin” and a work must

be “virtually identical” to infringe. See id.; Satava v. Lowry,

323 F.3d 805, 812 (9th Cir. 2003) (glass-in-glass jellyfish

sculpture only entitled to thin protection against virtually

identical copying due to the narrow range of expression).

The standard for infringement—substantially similar or virtually

identical—determined at the “extrinsic” stage is applied

at the “intrinsic” stage. See Apple Computer, 35 F.3d at 1443.

There we ask, most often of juries, whether an ordinary reasonable

observer would consider the copyrighted and challenged

works substantially similar (or virtually identical). See

id. at 1442. If the answer is yes, then the challenged work is

infringing.

The district court conducted an extrinsic analysis and determined

that the following elements of Bryant’s sketches and

sculpt were non-protectable:

1. The resemblance or similarity to human form

and human physiology.

2. The mere presence of hair, heads, two eyes, eyebrows,

lips, nose, chin, mouth, and other features

that track human anatomy and physiology.

3. Human clothes, shoes, and accessories.

4. Age, race, ethnicity, and “urban” or “rural”

appearances.

5. Common or standard anatomical features relative

to others (doll nose and relatively thin,

small bodies).

6. Scenes a faire, or common or standard treatments

of the subject matter.

It found that the following elements were protectable:

1. Particularized, synergistic compilation and

expression of the human form and anatomy that

expresses a unique style and conveys a distinct

look or attitude.

2. Particularized expression of the doll’s head, lips,

eyes, eyebrows, eye features, nose, chin, hair

style and breasts, including the accentuation or

exaggeration of certain anatomical features relative

to others (doll lips, eyes, eyebrows, and eye

features) and de-emphasis of certain anatomical

features relative to others (doll nose and thin,

small doll bodies).

3. Particularized, non-functional doll clothes, doll

shoes, and doll accessories that express aggressive,

contemporary, youthful style.

Based on this determination, the district court decided that

“substantial similarity” is the appropriate test for infringe-

ment. And, in determining whether Mattel was entitled to

equitable relief, it found that the two Bratz sculpts and the

overwhelming majority of the Bratz female fashion dolls were

substantially similar to Mattel’s copyrighted works. The district

court therefore entered an injunction prohibiting MGA

from producing the infringing dolls or any future substantially

similar dolls. We review de novo the district court’s determination

as to the scope of copyright protection. See Ets-Hokin

v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000).

1. Doll Sculpt. The district court enjoined MGA from marketing

or producing any doll that incorporates the “core Bratz

fashion doll production sculpt” or the “Bratz Movie sculpt”

because it held they were substantially similar to Bryant’s

preliminary sculpt.8 By adopting the “substantially similar”

standard, the district court afforded Bryant’s sculpt broad

copyright protection. See pp.10540-41 supra. MGA argues

that the district court should have given Bryant’s preliminary

sculpt only thin protection against virtually identical works.

[15] In order to determine the scope of protection for the

sculpt, we must first filter out any unprotectable elements.

Producing small plastic dolls that resemble young females is

a staple of the fashion doll market. To this basic concept, the

Bratz dolls add exaggerated features, such as an oversized

head and feet. But many fashion dolls have exaggerated

features—take the oversized heads of the Blythe dolls and My

Scene Barbies as examples. Moreover, women have often

been depicted with exaggerated proportions similar to those of

the Bratz dolls—from Betty Boop to characters in Japanese

anime and Steve Madden ads. The concept of depicting a

young, fashion-forward female with exaggerated features,

8The district court’s analysis was brief, so we must infer this finding.

It’s possible that the district court also thought MGA’s two sculpts were

substantially similar to some of Bryant’s sketches of doll bodies. Even if

this were so, it wouldn’t change our analysis because the sketches of doll

bodies would be entitled to no more protection here than Bryant’s sculpt.

including an oversized head and feet, is therefore unoriginal

as well as an unprotectable idea. Cf. Herbert Rosenthal, 446

F.2d at 742 (“We think the production of jeweled bee pins is

a larger private preserve than Congress intended to be set

aside . . . . A jeweled bee pin is therefore an ‘idea’ that defendants

were free to copy.”).

Mattel argues that the sculpt was entitled to broad protection

because there are many ways one can depict an exaggerated

human figure. It’s true that there’s a broad range of

expression for bodies with exaggerated features: One could

make a fashion doll with a large nose instead of a small one,

or a potbelly instead of a narrow waist. But there’s not a big

market for fashion dolls that look like Patty and Selma Bouvier.

Little girls buy fashion dolls with idealized proportions

—which means slightly larger heads, eyes and lips; slightly

smaller noses and waists; and slightly longer limbs than those

that appear routinely in nature. But these features can be

exaggerated only so much: Make the head too large or the

waist too small and the doll becomes freakish, not idealized.

[16] The expression of an attractive young, female fashion

doll with exaggerated proportions is thus highly constrained.

Cf. Data East USA, Inc. v. EPYX, Inc., 862 F.2d 204, 209 (9th

Cir. 1988) (“Because of these constraints, karate is not susceptible

of a wholly fanciful presentation.”). Because of the

narrow range of expression, the preliminary sculpt is entitled

to only thin copyright protection against virtually identical

copying. Cf. Ets-Hokin v. Skyy Spirits Inc., 323 F.3d 763, 766

(9th Cir. 2003) (photo of vodka bottle merits only thin protection

because of limited range of expression); Satava, 323 F.3d

at 812 (similar). The district court erred in affording broad

protection against substantially similar works to the sculpt.

2. Bratz Sketches. The district court also enjoined MGA

from marketing or producing nearly every Bratz female fashion

doll—not just the first generation of dolls, but also subsequent

dolls like “Bratz Nighty-Nite Yasmin” and “Bratz

Campfire Felicia”—because it held they were substantially

similar to Bryant’s preliminary sketches.9 MGA argues that

the district court erred in failing to filter out the unprotectable

elements of the dolls and by applying the substantial similarity

standard.10

[17] Unlike the limited range of expression for the sculpt,

there’s a wide range of expression for complete young, hip

female fashion dolls with exaggerated features. Designers

may vary the face paint, hair color and style, and the clothing

and accessories, on top of making minor variations to the

sculpt. One doll might have brown eyes with bronze

eyeshadow, wavy auburn hair, leather boots, a blue plaid mini

matched with a black button-down, silver knot earrings and a

barrel bag. Another might have green eyes with pink

eyeshadow, brown hair in a messy bun, gold wedges, dark

skinny jeans matched with a purple halter, a turquoise cuff

and a clutch, along with a slightly different body and facial structure.

11 See JCW Invs. v. Novelty, Inc., 482 F.3d 910, 917 (7th

9Infringement can occur even though the copyrighted work is done in

a different medium than the challenged work. Meshwerks, Inc. v. Toyota

Motor Sales U.S.A., Inc., 528 F.3d 1258, 1267-68 (10th Cir. 2008); see

Blanch v. Koons, 467 F.3d 244, 252 (2d Cir. 2006).

10Contrary to Mattel’s argument, MGA’s opening brief adequately preserved

its objections to the district court’s decision.

11MGA argues that doll clothes aren’t entitled to copyright protection.

Copyright law doesn’t protect “useful articles” that have an “intrinsic utilitarian

function” apart from their expression or appearance. See 17 U.S.C.

§§ 101, 102(a)(5). Human clothing is considered utilitarian and unprotectable.

See Poe v. Missing Persons, 745 F.2d 1238, 1242 (9th Cir. 1984).

However, articles that are intended only to portray the appearance of

clothing are protectable. Id. Dolls don’t feel cold or worry about modesty.

The fashions they wear have no utilitarian function. Cf. Masquerade Novelty

v. Unique Indus., 912 F.2d 663, 670-71 (3d Cir. 1990) (animal nose

masks have no utilitarian function apart from portraying appearance of

animal nose); Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th

Cir. 1983) (toy airplane merely portrays appearance of actual airplane and

has no utilitarian function). Even if we were to defer to the letter from the

Copyright Office saying that doll clothing isn’t protected, as MGA argues

we should, the letter’s interpretation is obviously wrong.

Cir. 2007) (“Novelty could have created another plush doll of

a middle-aged farting man that would seem nothing like Fred.

He could, for example, have a blond mullet and war flannel,

have a nose that is drawn on rather than protruding substantially

from the rest of the head, be standing rather than

ensconced in an armchair, and be wearing shorts rather than

blue pants.”). The district court didn’t err in affording the doll

sketches broad copyright protection against substantially similar

works.

[18] The district court did err, however, in failing to filter

out all the unprotectable elements of Bryant’s sketches. The

only unprotectable elements the district court identified were:

(1) the dolls’ resemblance to humans; (2) the presence of hair,

head, two eyes and other human features; (3) human clothes,

shoes and accessories; (4) age, race, ethnicity and “urban” or

“rural” appearances; (5) standard features relative to others

(like a thin body); and (6) other standard treatments of the

subject matter. And it reasoned that the doll’s

“[p]articularized, synergistic compilation and expression of

the human form and anatomy that expresses a unique style

and conveys a distinct look or attitude” is protectable, along

with the doll fashions that expressed an “aggressive, contemporary,

youthful style.” But Mattel can’t claim a monopoly

over fashion dolls with a bratty look or attitude, or dolls sporting

trendy clothing—these are all unprotectable ideas.

[19] This error was significant. Although substantial similarity

was the appropriate standard, a finding of substantial

similarity between two works can’t be based on similarities in

unprotectable elements. See Data East, 862 F.2d at 209 (clear

error for district court to determine substantial similarity

existed based on unprotectable elements). When works of art

share an idea, they’ll often be “similar” in the layman’s sense

of the term. For example, the stuffed, cuddly dinosaurs at

issue in Aliotti v. R. Dakin & Company, 831 F.2d at 901, were

similar in that they were all stuffed, cuddly dinosaurs—but

that’s not the sort of similarity we look for in copyright law.

“Substantial similarity” for copyright infringement requires a

similarity of expression, not ideas. See id. The key question

always is: Are the works substantially similar beyond the fact

that they depict the same idea?

[20] MGA’s Bratz dolls can’t be considered substantially

similar to Bryant’s preliminary sketches simply because the

dolls and sketches depict young, stylish girls with big heads

and an attitude. Yet this appears to be how the district court

reasoned:

Especially important to the Court’s [substantial similarity

finding] is the consistency of the particularized

expression of the dolls’ heads, lips, eyes, eyebrows,

eye features, noses, as well as the particularized

expression of certain anatomical features relative to

others . . . and de-emphasis of certain anatomical

features (most notably the minimalized doll nose and

thin, small doll bodies). Also important to the Court

is the particularized, synergistic compilation and

expression of the human form and anatomy that

quite clearly expresses a unique style and conveys a

distinct look or attitude . . . .

It might have been reasonable to hold that some of the Bratz

dolls were substantially similar to Bryant’s sketches, especially

those in the first generation. But we fail to see how the

district court could have found the vast majority of Bratz

dolls, such as “Bratz Funk ‘N’ Glow Jade” or “Bratz Wild

Wild West Fianna,” substantially similar—even though their

fashions and hair styles are nothing like anything Bryant drew

—unless it was relying on similarities in ideas.

* * *

Bryant’s employment agreement may not have assigned his

ideas for the names “Bratz” and “Jade” to Mattel at all, and

the district court erred by holding that it did so unambigu-

ously. Even if Bryant did assign his ideas, the district court

abused its discretion in transferring the entire Bratz trademark

portfolio to Mattel. We therefore vacate the constructive trust,

UCL injunction and declaratory judgment concerning Mattel’s

rights to the Bratz trademarks. The district court may

impose a narrower constructive trust on remand only if there’s

a proper determination that Mattel owns Bryant’s ideas.

[21] The district court also erred in holding, at summary

judgment, that the employment agreement assigned works

created outside the scope of Bryant’s employment. We therefore

vacate the copyright injunction. On remand, Mattel will

have to convince a jury that the agreement assigned Bryant’s

preliminary sketches and sculpt, either because the agreement

assigns works made outside the scope of employment or

because these works weren’t made outside of Bryant’s

employment. And, in order to justify a copyright injunction,

Mattel will have to show that the Bratz sculpts are virtually

identical to Bryant’s preliminary sculpt, or that the Bratz dolls

are substantially similar to Bryant’s sketches disregarding

similarities in unprotectable ideas.

Nothing we say here precludes the entry of equitable relief

based on appropriate findings.12 Because several of the errors

we have identified appeared in the jury instructions, it’s likely

that a significant portion—if not all—of the jury verdict and

damage award should be vacated, and the entire case will

12We decline to address MGA’s appeal of the mistrial order and Mattel’s

cross-appeal of the attorney-client privilege finding. These issues are

likely moot, and their resolution is unnecessary to dispose of this interlocutory

appeal. Our jurisdiction over them is also doubtful. See Poulos v.

Caesars World, Inc., 379 F.3d 654, 668-70 (9th Cir. 2004). We also

decline to address MGA’s appeal of the district court’s decisions concerning

the three alleged state-law violations, which Mattel argues show that

MGA wrongfully acquired the ideas for the names “Bratz” and “Jade.”

We’ve found that the district court didn’t properly analyze whether Mattel

owns Bryant’s ideas under his contract, so it’s premature to try to determine

whether MGA’s acquisition of them was wrongful.

probably need to be retried. We express no opinion on this

issue here, except to say that any further proceedings must be

consistent with our decision.

America thrives on competition; Barbie, the all-American

girl, will too.

EQUITABLE RELIEF VACATED. Each party shall

bear its own costs.