Aritzia is looking to escape the copyright and trademark infringement lawsuit that is being waged against it over the large pink sculptures that appeared in its store windows and ad campaign imagery earlier this year. In the renewed motion to dismiss that it filed with the U.S. District Court for the Northern District of California this month, Aritzia argues that Plaintiff Tangle, Inc. has failed to provide “any plausible basis” for its infringement causes of action. After first filing a copyright infringement-centric complaint against Aritzia in March, in which it accused the millennial-favored fashion brand of “improperly display[ing] unauthorized and illegal sculptures” in its stores and as part of one of its latest ad campaigns, Tangle added a trade dress infringement claim to the mix by way of an amended complaint in July.
At the heart of Tangle’s amended complaint is its argument that Aritzia has made use of sculptures “are identical to the TANGLE sculptures” in several respects. For example, “the infringing sculptures are made of interlocking, 90-degree curved pieces, each of which can be twisted and bent into a multitude of poses, [and] like the genuine TANGLE Sculptures, most of the infringing sculptures consist of eighteen such interlocking constituent pieces,” per Tangle. Additionally (and this is where the trade dress claim seems to come in), Tangle alleges that “the bright pink color and chrome finish [of Aritzia’s sculptures] is identical to the chrome pink color [it] utilizes.” Targeted Advertising Window Display
In its August 1 motion to dismiss, Aritzia argues that Tangle falls short on both its copyright and trade dress infringement claims. Tackling the copyright claim first, Aritzia asserts that Tangle “has not plausibly pled – and as a matter of law, cannot plausibly plead – substantial similarity” between its window displays and the protectable expression of the Tangle registered works. Setting out the test for determining similarity in the Ninth Circuit (the extrinsic-intrinsic test), which requires courts to filter out unprotectable elements and then compare only the “protectable expression of the plaintiff’s registered works” with the allegedly infringing works, Aritzia asserts that Tangle’s works are only entitled to “thin” protection because they consist of “multiple unprotectable ideas and stock elements,” including “a tubular or pipe-like shape, a closed-loop structure, quarter-circle or elbow-shaped components,” etc.
With that in mind, Aritzia contends that Tangle’s “thin” protections extend exclusively to the “specific looped shapes” and other elements of its registered works, and thus, “even ‘subtle differences’ in the specific shape of the sculpture or the specific combination of size, color, texture, etc., will lie outside [its] copyright.” Because Aritzia’s window displays “are not virtually identical, or even substantially similar, in specific shape, color, or size to [Tangle’s] registered works,” the Vancouver-based brand claims that “they are not substantially similar as a matter of law.”
In particular, Aritzia points to the “unique shapes” of its sculptures, the difference in size (“the [window] displays measure multiple feet in size” versus Tangle’s toys, which are mere inches tall), and distinct colors (“each window display has a reflective finish in metallic fuchsia,” whereas “the registered works appear to be matte”) as evidence of the lack of substantial similarity. At the same time, while Tangle alleges that “all of those window displays are allegedly ‘identical’ to the registered works and the purportedly ‘embody’ [the] TANGLE sculptures, simply because they are ‘made of interlocking, 90-degree curved pieces,’” Tangle asserts that each of its window displays “bears a unique shape because each … was separately assembled from scratch at each store.”
TDLR: “Because the window displays are not virtually identical, or even substantially similar, in specific shape, color, or size to the registered works, they are not substantially similar as a matter of law,” per Aritzia.
Turning to Tangle’s trade dress claim, Aritzia largely takes issue with the plaintiff’s failure to “specifically define the list of elements that comprise the trade dress.” (Sound familiar? BAPE is arguing the same thing in the trademark lawsuit waged against it by Nike.) Aritzia rightly states that Tangle’s claim for trade dress infringement “refers only to ‘the TANGLE trade dress,’” and it is “not clear from the complaint whether [it] is alleging ‘trade dress’ rights in the shapes of its sculptures or in the color ‘pink chrome.’” (My take on the amended complaint was that Tangle is claiming rights in the color, but that is not necessarily clear – and certainly is not immediately clear – based on the language of the complaint.)
In the event that Tangle is claiming trademark rights in the sculpture shapes, Aritzia states that to survive a motion to dismiss, it must plead specific factual allegations that the “Tangle sculptures” are source-identifying, non-functional, and have acquired distinctiveness. Tangle’s complaint “contains no single, clear expression of its trade dress, because there is and can be none,” per Aritzia, which states that “these tubular sculptures come in myriad styles” – and are meant to be twisted into different shapes – “such that the products not only lack a recognizable trade dress but that the design elements enabling such multitude of poses are functional.”
With regard to any claim of ownership in the “pink chrome” color, this claim is also inadequately pled, Aritzia argues, as Tangle’s complaint is “rife with photographs of [its] products and registered works that are not constructed in ‘pink chrome,’” and its allegations of “continuous advertising, promotion, and sales” and “considerable goodwill and reputation” all refer to the “TANGLE brand [and] not the pink chrome trade dress.” (Note: While the inclusion of non-pink Tangle toys in the complaint is an interesting move from a strategy standpoint, Tangle need not exclusively make/market its toys in the pink hue in order to amass/claim trademark rights in the color.)
Finally, Aritzia argues that even where Tangle does include imagery of pink products, “these products are in multiple, other shades of pink, not ‘pink chrome.’” As such, it claims that Tangle’s allegations lack “any details of … efforts to associate the [chrome pink] trade dress with” its brand, and, therefore, “fail to support an inference of consumer identification with the alleged trade dress” in the color.
Against that background and in light of Tangle’s alleged lack of general and specific jurisdiction, Aritzia argues that the lawsuit should be dismissed in its entirety with prejudice.
The case is Tangle, Inc. v. Aritzia, Inc., 3:23-cv-01196 (N.D. Cal.)
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