Cub Club Investment, LLC v. Apple, Inc.

Background

Cub Club Investment created an app that allowed users to send racially diverse emoji. The complaint alleged that Apple learned of the app, liked the idea, and copied it. Cub Club asserted copyright, trade-dress, and state-law claims.

Copyright claim

The court applied the rule that copyright does not prohibit all copying; a plaintiff must allege copying of enough protected expression to show unlawful appropriation. The court explained that when an idea has only a narrow range of possible expression, the copyright protection is “thin,” and infringement requires copying that is virtually identical.

The court found that Cub Club’s emoji had only a narrow range of possible expression because they depicted body parts in particular positions and used realistic skin tones. The court therefore held that the emoji received only thin copyright protection. According to the allegations, Apple’s emoji were not virtually identical: Cub Club’s emoji used gradients, while Apple’s coloring was more consistent; Apple’s thumbs-up emoji were more cartoonish and bubbled, while Cub Club’s were flatter; many of Cub Club’s emoji had shadows, while Apple’s did not; and the specific colors differed. The court granted the motion to dismiss the copyright claim.

Trade-dress claim

Trade dress is the overall appearance or design of a product that can identify its source. To state a trade-dress claim, a plaintiff must allege that the claimed trade dress is nonfunctional, has acquired secondary meaning, and creates a substantial likelihood of consumer confusion.

Cub Club described its trade dress as the overall look and feel of its products, including inserting emoji into mobile-device messages and selecting emoji from a palette of five diverse skin tones. The court held that these features were functional because they related to the product’s intended purpose. The court also held that the palette of diverse skin tones served a purpose independent of identifying the product’s source. Cub Club’s general allegation about the product’s overall look and feel did not identify any nonfunctional elements.

The court further stated that the complaint did not allege that the product had acquired secondary meaning or plausibly show likely consumer confusion. Cub Club’s product was a standalone application, while Apple’s product was embedded in the phone keyboard. The court granted the motion to dismiss the trade-dress claim. The court noted that a trade-dress claim based on the individual emoji would fail for the same reasons.

State-law claims and disposition

The court stated that Cub Club’s state-law claims depended on the validity of its trade-dress allegations and dismissed those claims as well. The motion to dismiss was granted, and the complaint was dismissed with leave to amend. Any amended complaint had to be filed within 14 days of the order. If no amended complaint was filed by then, the dismissal would be with prejudice. The court expressed skepticism that Cub Club could successfully allege copyright or trade-dress infringement in an amended complaint but allowed amendment as a precaution.