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Leonard D. DuBoff (Admitted Pro Hac Vice)

The DuBoff Law Group, PC

6665 SW Hampton Street, Suite 200

Portland, OR 97223-8357

lduboff@dubofflaw.com

Oregon State Bar No. 774378

Telephone: (503) 968-8111

Facsimile: (503) 868-7228

Bert P. Krages II (Admitted Pro Hac Vice)

Attorney at Law

6665 SW Hampton Street, Suite 200

Portland, OR 97223-8357

bert@krages.com

Oregon State Bar No. 872798

Telephone: (503) 597-2525

Gregory P. Sitrick

Quarles & Brady LLP

One Renaissance Square

Two North Central Avenue

Phoenix, Arizona 85004-2391

gregory.sitrick@quarles.com

AZ #028756

Tel: (602) 229-5317

Fax: (602) 420-5198

Attorneys for Defendant

UNITED STATES DISTRICT COURT

DISTRICT OF ARIZONA

Lisa Frank, Inc., an Arizona corporation,

 Plaintiff,

v.

The Orb Factory Limited, a Canadian

corporation,

 Defendant.

Case No. 4:15-cv-00433-DCB 

MEMORANDUM IN SUPPORT OF

DEFENDANT’S MOTION FOR

SUMMARY JUDGMENT

Defendant The Orb Factory (“Orb Factory”) moves for summary judgment against 

Plaintiff Lisa Frank, Inc. (“LFI”) on its claims for trade dress infringement, unfair

competition, and copyright infringement. The material facts underlying this motion are

undisputed, so partial summary judgment on these claims is appropriate. FRCP 56;

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—1

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Celotex Corp. v. Catrett, 477 U.S. 317 (1986).1

I. The Trade Dress and Unfair Competition Claims Should Be Dismissed.

To recover for trade dress infringement under § 43 of the Lanham Act, a plaintiff must

prove by a preponderance of the evidence: (1) that its trade dress is distinctive; (2) that

the appropriated features of the trade dress are nonfunctional; and (3) that the defendant’s

products create a likelihood of consumer confusion. Kendall-Jackson Winery, Ltd. v. E. &

J. Gallo Winery, 150 F.3d 1042, 1045 (9th Cir. 1998). To defeat summary judgment, LFI

must show a genuine issue of material fact as to each of these issues. Because the unfair

competition claim under state common law is based on the trade dress claim, this claim

fails if the trade dress claim fails. Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir.

1994).

LFI asserts that the packaging of seven PlushCraft products and five Sticky Mosaics

products infringe LFI’s trade dress. First Amended Complaint at ¶ 27. The PlushCraft line

consists of decorative pillow kits consisting of a pillow having pre-punched holes on one

side and small, pre-cut pieces of colored fabric. Kay Decl. at ¶ 2. The kit is assembled by

using a stylus to push the centers of the fabric pieces into the holes, in accordance with a

legend that shows which color piece should be inserted in which hole. The Sticky

Mosaics line consists of mosaic kits in which self-adhesive foam tiles are placed on

spaces marked on an illustrated template in accordance with a color legend. Products

from both lines have won numerous industry awards. Kay Decl. at ¶ 2. 

LFI licenses a broad range of goods including school supplies, stationery, backpacks,

crafts, cosmetics, clothing, shoes, jewelry, bedding, toys, fashion accessories, and

electronics. First Amended Complaint at ¶ 10; Lisa Frank Depo. at 35:8–14. SOF ¶

1.However, LFI does not license a pillow craft kit or a mosaic kit similar to the Orb

Factory products. Lisa Frank Depo. at 109:22–110:12; 112:16–22. SOF ¶ 2.

1

 The Court issued an order on October 17, 2016 granting Defendant leave to file a

summary judgment motion, including the supporting memorandum, not to exceed 30

pages.

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—2

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A. LFI’s purported trade dress is not protectable because it is generic.

In its responses to interrogatories, LFI identified Lisa Frank as one of two persons

who are competent to describe the specific characteristics of LFI’s trade dress and explain

how those characteristics have been incorporated into Orb Factory’s products.2 Exhibit 1

(Plaintiff’s Response to Interrogatory No. 1 of First Set of Interrogatories). LFI has been

unable to define the elements of its trade dress with any degree of specificity or

consistency. In fact, in response to Defendant’s concerted and sustained efforts to obtain a

coherent description of LFI’s trade dress, LFI has offered at least four different

descriptions of what constitutes its trade dress. 

In its answers to interrogatories, LFI describes its trade dress as:

[Trade Dress 1]

! LFI’s combination of colors includes colors across the visible spectrum and the use of

bold colors across the spectrum and a graduated color-fade with knock-out graphics

and other artwork.3 The animal characters that constitute in whole or in part LFI’s

trade dress are pandas, unicorns, penguins, bears, frogs, kittens, cats, golden

retrievers, tiger cubs, leopard cubs, snow leopard cubs, rabbits, dolphins, horses,

orcas, polar bears, puffins, butterflies, hummingbirds, fawns, Dalmatians, swans, and

a husky puppy.

Exhibit 1 (Plaintiff's Responses to Interrogatory Nos. 4 & 5 of Defendant’s First Set of

Interrogatories)(paraphrased). SOF ¶ 3.

In her deposition, Lisa Frank offered three more descriptions of LFI’s trade dress.

First, she testified that LFI’s trade dress consists of:

[Trade Dress 2]

! Bright colors, full of rainbows, lots of hot pink, inanimate and animate objects, always

2

 The other person was Laura Crawford, In her deposition, Lisa Frank identified David

Evered as the person most competent to describe LFI’s trade dress. However, he refused

to answer questions regarding LFI’s trade dress during his 30(b)(6) deposition. Lisa Frank

Depo at 29:7–30:4; Evered 30(b)(6) Depo. at 11:16–12:21.

3

 Knock-out printing is the process of removing one color of ink from below another

to create a clearer image. Inks are translucent, so printing different colors of inks over one

another will alter the appearance of the colors. For example, printing yellow ink over blue

ink will create a green tinge because the inks mix. Knock-out printing is generally the

default means of printing artwork and packaging throughout the world. Kay Decl. at ¶ 4. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—3

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rainbow, “doing things that aren't in the real world,” hearts, rainbows, butterflies,

unicorns, flowers, pink cats, purple dogs, owls, stars, music notes, rainbow clouds,

dolphins, penguins, and shooting stars.

Lisa Frank Depo. at 30:17–33:3 (paraphrased).

She later testified to another definition consisting of:

[Trade Dress 3]

! Every LFI product contains a rainbow combination of pink, orange, yellow, green,

blue, and purple (pink is used in the LFI rainbows instead of red); iconic things such

as hearts, stars, flowers, and butterflies and all those things that are used or tattooed on

an animal.

Lisa Frank Depo. at 126:23–129:10; 154:16–155:10 (paraphrased). SOF ¶ 3.

Lisa Frank also testified that LFI’s trade dress consists of the description recited in

paragraphs 17 and 18 of the Complaint, which, when distilled to its essence, consists of:

[Trade Dress 4]

! (1) brightly colored bold graphics of distinctive animal characters, with rainbow

colored features, large eyes, and happy, friendly expressions; (2) use of brilliant

colors, graduated color sequences, and rainbow colors that fade into one another; and

(3) package, cover, and product surface designs featuring, in addition to the distinctive

animal characters, combinations of rainbows, flowers, ice cream cones, butterflies,

birds, rabbits, fish, cupcakes, bubbles, peace symbols, random words, hearts, happy

faces, and stars.

Lisa Frank Depo. at 133:63–135:22 (paraphrased). SOF ¶ 3.

LFI’s various definitions resort to the kind of “empty generalities” that are too broad,

abstract, and generic to constitute a trade dress. Walker & Zanger, Inc. v. Paragon

Industries, Inc., 549 F.Supp.2d 1168, 1176 (N.D. Cal. 2007). A plaintiff seeking to

protect its unregistered trade dress must do more than simply allude to the overall look of

its trade dress. It must articulate the specific elements that comprise its distinctive trade

dress. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014)(it is the

plaintiff's duty to articulate the specific elements that constitute its trade dress);

Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997). See

also, 1 McCarthy, Trademarks and Unfair Competition § 8:3. Absent a precise expression

of the elements and scope of the claimed trade dress, it is impossible to evaluate the

distinctiveness of the design elements in the relevant market. Furthermore, a plaintiff's

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—4

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inability to explain exactly which aspects of its purported trade dress merit protection

indicates that its claim “is pitched at an improper level of generality,” i.e., the claimed

trade dress is generic. Landscape Forms, Inc., 113 F.3d at 381. 

With respect to LFI’s definitions, Lisa Frank testified that even she is unable to

determine the boundary between a color that is bright and one that is not. Lisa Frank

Depo. at 140:24–141:13. SOF ¶ 4. She likewise testified that the difference between a

brilliant color and a non-brilliant color is subjective. Lisa Frank Depo. at 147:18–148:1.

SOF ¶ 4. In addition, LFI has depicted hundreds of different characters and objects in its

art work.4

In addition, widespread use within an industry is evidence that the elements are

generic. Rudolph Int'l, Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007). Claiming

features such as “colors across the visible spectrum,” “other artwork,” and “inanimate and

animate objects” is extremely overbroad because such terms essentially cover anything

that can be illustrated. Similarly, claiming features such “bold colors,” “bright colors,”

“brilliant colors,” “iconic things,” and “intense extraordinary color combinations”

intrudes on the public domain and fails to provide adequate notice to competitors

regarding the boundaries of what LFI claims to be its exclusive right. Id. Although Lisa

Frank was extremely evasive during her deposition, she personally testified that bright

colors are popular with children and are commonly used in children’s products. Lisa

Frank Depo. at 121:14–24. SOF ¶ 5. She also acknowledged that toy companies such as

4

 Animal characters in LFI artwork have included pandas, unicorns, penguins, bears,

frogs, kittens, cats, golden retrievers, Dalmatians, huskies, mixed breed dogs, tiger cubs,

leopard cubs, snow leopard cubs, rabbits, dolphins, horses, orcas, polar bears, puffins,

brown bears, sea gulls, teddy bears, butterflies, sea horses, star fish, owls, hummingbirds,

other kinds of birds, fawns, fish, and swans. Objects in LFI artwork have included

rainbows, flowers, ice cream cones, ice cream sundaes, scissors, castles, hand bags,

cupcakes, peace symbols, planets, candy, jelly fish, candles, hot dogs, hamburgers,

donuts, tacos, French fries, pizza slices, soft drinks, candy machines, coral, random

words, hearts, happy faces, shooting stars, stars, bubbles, trees, pools, and snow. Human

or humanoid characters have included rock singers, surfer girls, princesses, fairies, and

aliens. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—5

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Disney, Mattel, and Hasbro use bright colors in their products and packaging. Id. at

51:23--52:8, 209:5–6. When asked about the use of animal characters by companies that

market children’s products, she conceded that “tons of companies” use them. Id. at

146:22. SOF ¶ 6.

It is black-letter law that a manufacturer cannot claim all shades of a color, much less

all colors, to constitute its trade dress. International Jensen, Inc. v. Metrosound U.S.A.,

Inc., 4 F.3d 819, 824 (9th Cir. 1993); Al-Site Corp. v. VSI Intern., Inc., 174 F.3d 1308,

1328 (Fed. Cir. 1999)(“Absent a specifically defined, color-definite, and stable visual

appearance, an alleged trade dress cannot receive protection.”). Likewise, trade dress is

not distinctive when it is composed of elements that are widely used in the same product

fields. Kendall-Jackson Winery, Ltd., 150 F.3d at 1049 (longtime use of elements by other

competitors renders them generic); Hansen Beverage Co. v. National Beverage Corp.,

493 F.3d 1074, 1079 (9th Cir. 2007)(widely employed elements are unlikely to lead to

confusion as to source), vacated on other grounds, 499 F.3d 923 (9th Cir. 2007). 

Allowing protection of LFI’s purported trade dress would also run afoul of the

requirement that trade dress be sufficiently defined to provide notice of its boundaries to

competitors. LFI’s purported trade dress, which encompasses the entire spectrum of

colors, at least 25 animal characters, and at least 13 inanimate objects, is not distinctive.

Given the extreme overbreadth and the lack of discernible boundaries of LFI’s purported

trade dress, the trade dress and unfair competition claims should be dismissed. 

B. LFI’s trade dress claim lacks merit because it fails the consistent overall look

standard.

A party claiming trade dress protection for a line of products must first demonstrate

that the line has a recognizable and consistent overall look. Am General Corp. v.

Daimlerchrysler Corporation, 311 F.3d 796, 814–15 (7th Cir. 2002). In such cases, the

plaintiff faces a particularly difficult challenge because it must show that the overall

appearance of the several products is sufficiently distinct and unique to merit protection.

Yankee Candle Co v. Bridgewater Candle Co, 259 F.3d 25, 42 (1st Cir. 2001).

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—6

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LFI has failed to clearly state the products or packaging for which it is seeking trade

dress protection and has likewise failed to show that it has used its purported trade dress

in a consistent manner.5In its response to Defendant’s Request for Production No. 14

(“Sufficient documents to establish the scope of what LFI considers to be its trade

dress”), LFI produced 25 pages of “Trade Dress Exemplar Products.” Exhibit 2. This

exhibit shows that LFI products do not have a uniform consistent look. SOF ¶ 7. Even

LFI products from the same product line do not have a consistent overall look. For

example, the LFI color and activity books share no common elements other than the

prominent placement of LFI’s oval-shaped logo in the upper left-hand corner of their

covers. Exhibit 3. SOF ¶ 8.

 Furthermore, when trade dress protection is sought for a line of products, courts need

to give due attention to protecting competition. Rose Art Industries Inc. v. Swanson, 235

F.3d 165, 172 (3rd Cir. 2000); Landscape Forms, 113 F.3d at 380; Regal Jewelry Co. v.

Kingsbridge Int'l, Inc., 999 F. Supp. 477, 486 (S.D.N.Y. 1998)(“[C]ourts consider . . .

broader product line claims with an ‘acute’ concern for protecting competition given that

any remedy could potentially cover a wide range of products.”). LFI’s products show such

a diversity of appearances that it is impossible for competitors to discern what constitutes

LFI’s purported trade dress. Prohibiting toy companies from using “bright colors,”

“animal characters,” and “inanimate objects” would obviously have a serious adverse

effect on competition. Because LFI has used combinations of colors, animal characters,

and inanimate objects in highly diverse and nonrepetitive ways, there is nothing

sufficiently definite that can be protected. Therefore, the trade dress and unfair

competition claims should be dismissed. 

C. The elements of LFI’s purported trade dress are functional in the context of

children’s products.

LFI has the burden of proving that its alleged trade dress is not functional. Rachel v.

5

 The First Amended Complaint fails to show an actual LFI product, although it shows

some LFI artwork.

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—7

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Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987). The core inquiry into

whether trade dress is functional requires examination of the effects that granting

protection to a product will have on the ability of others to compete. I.P. Lund Trading

ApS v. Kohler Co., 163 F.3d 27, 37 (1st Cir. 1998). The trade dress of a product is

functional under the aesthetic functionality test, if “protection of the [trade dress] as a

trademark would impose a significant non-reputation-related competitive disadvantage.”

Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006).

Thus, trade dress is aesthetically functional when it serves an aesthetic purpose that is

wholly independent of any source-identifying function. Id. at 1072–74. In other words,

where the consumer is driven to purchase the product based on how it looks, then that

look is aesthetically functional. 

A color cannot be protected as trade dress if there is a competitive need to use that

color in the industry. First Brands Corp., 809 F.2d at 1382–83. LFI’s purported trade

dress is thus unprotectable in view of the fact that toy companies need to use bright colors

and animal characters to market products because these features serve the function of

appealing to children. Kay Decl. at ¶ 4. SOF ¶ 9.As shown in Exhibit 4, the packaging of

LFI’s products is not distinctive from that of a variety of other manufacturers in the use of

bright colors or animal characters. SOF ¶ 10. Thus, if LFI were the only entity allowed to

have exclusive use of bright colors and animal characters, this would have a severe

adverse effect on the ability of competitors to market children's products. Therefore, the

trade dress and unfair competition claims should be dismissed on this basis. 

D. LFI cannot establish that likelihood of confusion is probable.

Likelihood of confusion exists when consumers viewing the product or its packaging

would probably assume that it is associated with the source of a different product having

a similar trade dress. Au-Tomotive Gold, Inc., 457 F.3d at 1075–76. A finding of

likelihood of confusion requires that confusion be probable, not just a possibility. Murray

v. Cable Nat. Broadcasting Co., 86 F.3d 858, 861 (9th Cir.1996). The eight factors to be

considered in determining likelihood of confusion are set forth in AMF Inc. v. Sleekcraft

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—8

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Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)(the “Sleekcraft” factors). When this topic

was covered during the 30(b)(6) deposition, LFI’s designated deponent testified that the

sole basis for the claim that a likelihood of confusion exists is the similarity between

Plaintiff’s products and Defendant's products (i.e., the third Sleekcraft factor). Evered

30(b)(6) Depo. at 15:11–16:5. Nonetheless, all eight factors are discussed below.

(1) Strength of the Mark

LFI’s inability to coherently describe what makes its purported trade dress distinctive

shows that it has put the cart before the horse. In other words, to prove that it has a trade

dress, LFI must show more than the fact that LFI products have bright colors and animal

characters; it must show that the average purchaser of toys would believe that all toys

containing bright colors and animal characters originate from LFI. American General

Corp., 311 F.3d at 815–16. Given that LFI’s descriptions of its trade dress are both

inconsistent and expressed in conclusory terms that are incapable of objective evaluation,

the purported trade dress is at best inherently weak. It should be further noted that LFI has

never filed an application with the U.S. Patent and Trademark Office to register its trade

dress, despite the fact that it has filed over 600 applications to register trademarks.

Exhibit 19 (Plaintiff's Response to Request for Admissions No. 3). Finally, in addition to

LFI’s failure to present a prepared deponent to testify on this issue at the 30(b)(6)

deposition, it has failed to designate an expert witness to testify on this topic. In summary,

LFI has failed to show anything that would suggest strength to any cognizable degree.

(2) Proximity of the Goods

Orb Factory is strictly a toy company. Although some LFI goods have a tangential

degree of proximity, the PlushCraft and Sticky Mosaics product lines encompass a very

narrow range of products. Kay Decl. at ¶ 6. SOF ¶ 11. With respect to whether the two

companies are competitors, the best that LFI can argue is that its very broad range of

products includes some forms of crafts such as coloring books, stickers, and bracelets.

The companies are definitely not direct competitors in the fields of pillow or mosaic kits.

SOF ¶ 12. Thus, this factor favors Orb Factory. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—9

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(3) Similarity of the Marks

LFI’s lack of a consistent and specifically-defined trade dress makes it difficult to

assess similarity, especially in light of the enormous variability in the packaging of LFI’s

products. A review of the “Trade Dress Exemplar Products” produced by LFI in

discovery calls into question whether a substantial number of LFI products even use

colors that are particularly bright or brilliant. Exhibit 2. Furthermore, the LFI products

share no common elements except that each has the LFI logo, generally in the upper lefthand corner. The LFI logo consists of an oval shape with a white outline around the

perimeter and “Lisa Frank” spelled in psychedelic letters that have color fades, white

outlines, and an embossed effect. Exhibit 7. SOF ¶ 13. Lisa Frank testified that each LFI

product prominently bears the LFI logo and that neither consumers nor licensees have

ever complained that the logo was too small to be seen. Lisa Frank 30(b)(6) Depo. at

61:20–62:13. SOF 14. 

The packaging for the Orb Factory products uses designs that are cleaner and

generally less cluttered than the LFI designs. Exhibits 5 & 6. Each package accurately

depicts the product contained within the package and has insets that suggest the manner in

which the craft is assembled. The Lisa Frank packaging does not take this approach. 

The packaging for the PlushCraft products was changed in 2014 from that shown in

paragraph 27 of the First Amended Complaint, but remains reasonably similar to the

packaging shown therein. Exhibit 5; Kay Decl. at ¶ 7. The former and current packaging

are characterized by a photograph of the pillow product placed in a setting such as a floor,

table, or window sill; an inset showing the stylus being used to insert a fabric swatch into

the pillow; and irregular bands of a single color at the top and bottom of the front of the

box. SOF ¶ 15. The PlushCraft logo consists of a solid purple five-lobed irregular shape

with a cyan border and has the word PlushCraft spelled in orange, cyan, and yellow-green

letters. SOF ¶ 16.This logo is prominently placed on the package and is distinct from the

LFI logo. SOF ¶ 17. In fact, Lisa Frank testified that LFI uses nothing similar to the

PlushCraft logo, which she characterized as “very prominent” on the box and “pretty

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ugly.” Lisa Frank 30(b)(6) Depo. at 108:18–25. 

The packaging for each Sticky Mosaics product is characterized by the prominent and

accurate depiction of one of the templates in the kit with smaller accurate depictions of

the remaining templates off to the side. Exhibit 6. SOF ¶ 18. The packaging prominently

displays the Sticky Mosaics logo which consists of “STICKY MOSAICS” spelled out in

white letters on colored squares that are reminiscent of the tiles used in the kits, and

which are arranged together to form an overall rectangular shape. SOF ¶ 19. The

backgrounds of the packages consist of either a single monochromatic scheme or a

combination of two monochromatic schemes in pastel colors. 

 The logos used by the companies are significantly different. Exhibit 7. SOF ¶ 20. In

this regard, it should be noted that the presence and prominence of distinctive logos

negates any possibility of a likelihood of confusion. Nora Beverages Inc. v. Perrier

Group of Am., 269 F.3d 114, 123 (2nd Cir. 2000); Bristol-Myers Squibb Co. v.

McNeil-P.P.C., Inc., 973 F.2d 1033, 1047 (2d Cir. 1992).

Besides the logos, there are obvious differences between the respective products.

First, Orb Factory does not use animal characters on its packaging to indicate the source

of origin of the product but rather to show prospective purchasers what the product looks

like. SOF ¶ 21. Second, Orb Factory does not use “rainbow fades” which is an element

described or implied in three of LFI’s trade dress definitions. SOF ¶ 22. Orb Factory

likewise does not use “Lisa Frank pink,” which is a proprietary printing process. Kay

Decl at ¶ 8; Krages Decl. at ¶ 2. SOF ¶ 23. In general, Lisa Frank packaging is very busy,

meaning it has a multitude of extraneous elements. In contrast, the Orb Factory packaging

tends to be substantially less cluttered. Exhibits 2, 3, 4, and 5. SOF ¶ 24. Furthermore, the

Orb Factory packaging tends to use pastel colors whereas the LFI packaging uses

predominantly saturated colors.

(4) Evidence of Actual Confusion

David Evered, during the 30(b)(6) deposition, testified that LFI has no evidence of

actual confusion. Evered 30(b)(6) Depo. at 36:12–14. SOF ¶ 25. Although Plaintiff took

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the position during the 30(b)(6) deposition of Lisa Frank that she would not answer

questions about consumer confusion, Lisa Frank 30(b)(6) Depo. at 18:22–19:10, she did

state that she could not say that consumers would confuse Orb Factory’s PlushCraft and

Sticky Mosaic products with LFI products. Lisa Frank 30(b)(6) Depo at 109:8–17;

127:9–14.6 It is established Ninth Circuit law that if there is a very large volume of sales,

but only a few isolated instances of actual confusion, the amount of actual confusion is

not substantial and may be discounted. Kendall-Jackson Winery, Ltd., 150 F.3d at 1052.

Considering the fact that LFI has enjoyed significant commercial success over the last 37

years, First Amended Complaint at ¶ 10, and the Sticky Mosaics products have been on

the market since 2004, LFI’s failure to produce evidence that a single consumer has

confused the Orb Factory products with LFI products weighs in favor of Orb Factory. 

(5) Marketing Channels Used

 LFI and Orb Factory products are sold in some of the same stores such as Michael’s

and Toys-R-Us, as well by online retailers such as Amazon. Lisa Frank Depo. at

117:2–12; Laura Binder Depo. at 80:21–83:1. SOF ¶ 26. Lisa Frank testified that the only

time she had seen LFI and Orb Factory products side-by-side was at a Hobby Lobby store

that carried the Orb Factory pillow products and an LFI coloring kit licensed to Kappa

Books. Lisa Frank 30(b)(6) Depo. at 28:4–29:2. Laura Binder testified that she once saw

LFI stickers and coloring books at a Michael’s but that they were in a different

department than the Orb Factory products. Laura Binder Depo. at 81:21–82:9. On the

whole, it can be said that the marketing channels are similar. 

(6) Type of Goods and the Degree of Care Likely to Be Exercised by the

Purchaser

LFI does not license goods that are similar to the PlushCraft pillows or the Sticky

Mosaics kits. Although the goods are relatively inexpensive and arguably the customers

6

 Lisa Frank testified that she received telephone calls from three licensees stating that

Orb Factory had characters that looked like Lisa Frank characters. They apparently did

not say that the trade dress was similar. Lisa Frank Depo. at 106:5–107:2. 

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are not particularly sophisticated, the fact that the products are so different means that

customers are unlikely to buy a PlushCraft pillow or a Sticky Mosaics kit under the

impression that they are buying a (nonexistent) LFI pillow or mosaic kit.

(7) Defendant’s Intent in Selecting the Mark

Orb Factory did not design its products or packaging with the intent to make them

appear similar to LFI products. Kay Decl. at ¶ 9. SOF ¶ 27. The sole reason that Orb

Factory manufactures products that depict animal characters and inanimate objects such

as cats, dolphins, unicorns, hearts, and cupcakes is that such characters and objects are

loved by children and not because LFI or any other company depicts them. It should be

noted that Orb Factory makes other PlushCraft and Sticky Mosaics products that depict

characters and objects that LFI does not depict. Examples include dinosaurs, robots, lions,

elephants, ballerinas, pirates, and mermaids. In fact, LFI does not even make pillow or

mosaic kits that are similar to the Orb Factory products and therefore nothing analogous

exists that could have been copied. 

(8) Likelihood of Expansion of the Product Lines

 Lisa Frank testified that LFI has no plans to license to companies who manufacture

mosaic or pillow kits. Lisa Frank Depo. at 112:22–113:22. SOF ¶ 28. Furthermore, LFI

could not lawfully expand into the market for Orb Factory’s pillow product because Orb

Factory holds a patent on the process of making the pillow. Kay Decl. at ¶ 6.

The Sleekcraft factors are not to be applied rotely, and some factors are more

important than others depending on the nature of the case. One Industries, LLC v. Jim

O'Neal Distributing, 578 F.3d 1154, 1162 (9th Cir. 2009). However, the similarity of the

marks and whether the two companies are direct competitors are always important. Id. In

the present matter, the LFI products incorporate no consistent design elements other than

the LFI logo. Conversely, the PlushCraft and Sticky Mosaics packaging have definable

design elements other than the logos, and the primary purpose of the packaging is to

accurately depict the product contained within the packages. Thus the third factor favors

Orb Factory. 

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Two other factors that strongly favor Orb Factory are the “strength” and “intent”

factors. The inability of LFI to articulate a definite description of its trade dress, despite

numerous opportunities to do so, goes to the issue of strength of its trade dress.

Furthermore, Lisa Frank not only acknowledges that bright colors and animal characters

are commonly used in children’s products, she was likewise unable to describe the

boundary between colors that are bright and colors that are not bright. Similarly, the

evidence shows that Orb Factory had no intent to copy LFI’s “trade dress.” 

With the possible exception of the marketing channels for the products, the remaining

factors either favor Orb Factory or are neutral. However, even the factor concerning

marketing channels is not strong. Lisa Frank could testify to only a single instance in

which she saw a Orb Factory product and an LFI product next to each other in a store.

Taken as a whole, the application of the SleekCraft factors shows that it is not probable

that consumers will confuse the products of the two companies. Therefore the trade dress

and unfair competition claims should be dismissed. 

II. The Copyright Claims Should Be Dismissed Because the Works Are Not

Substantially Similar.

LFI is asserting that four of Orb Factory’s Sticky Mosaics products infringe the

copyrights of five of LFI’s artworks. Each of the Orb Factory products at issue depicts an

animal of some sort. The flaw in the copyright claims is that LFI confuses the concept of

the protection of ideas with the concept of protection of expression. Copyright law does

not protect ideas but only the specific expressions of ideas. E.g., Feist Publ’ns, Inc. v.

Rural Tel. Serv. Co., 499 U.S. 340, 34–50, (1991)(copyright law assures authors the right

to their original expression, but encourages others to build freely upon the ideas and

information conveyed by a work). LFI seems to think it has the right to prevent other

artists from creating works that depict unicorns with a rainbow, tiger cubs in jungles,

dolphins swimming and jumping out of water, and dogs wearing tiaras and necklaces. It

does not have such a right. Bikram's Yoga Coll. of India, L.P. v. Evolation Yoga, LLC,

803 F.3d 1032, 1037 (9th Cir. 2015).

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In order to prove copyright infringement, a plaintiff must demonstrate (1) ownership

of a valid copyright and (2) copying of the elements of the work that are original. Funky

Films v. Time Warner Entertainment Co., 462 F.3d 1072. 1076 (9th Cir. 2006). Absent

evidence of direct copying, the plaintiff must show that the defendant had access to the

plaintiff’s work and that the works are substantially similar. Id. The substantial-similarity

test contains an extrinsic and intrinsic component. In the pretrial part of a case, courts

may apply only the extrinsic test, which is objective in nature and focuses on the

articulable similarities between the protectable elements of the two works. Id. at 1077. A

plaintiff who fails to satisfy the extrinsic test cannot survive a motion for summary

judgment. Benay v. Warner Bros. Entm't Inc., 607 F.3d 620, 624 (9th Cir. 2010).

The Ninth Circuit has a long line of cases setting forth the principle that the ideas that

underlie visual works are not protectable by copyright. These cases have held, for

instance, that anyone is free to create a work that utilizes the idea of a doll with

exaggerated human features, jellyfish sculptures in glass shrouds, graphical user

interfaces that have icons, photographs of a vodka bottle, masks that depict the man in the

moon, stuffed dinosaur toys, and reproductions of jungle animals. Mattel, Inc. v. MGA

Entm't, Inc., 616 F.3d 904, 913–17 (9th Cir. 2010); Satava v. Lowry, 323 F.3d 805 (9th

Cir. 2003); Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir.2000) Apple

Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir.1994); Pasillas v.

McDonald's Corp., 927 F.2d 440 (9th Cir. 1991); Aliotti v. R. Dakin & Co., 831 F.2d 898,

901 (9th Cir.1987); Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1508 (9th Cir.

1987).7

 Thus, no copyright protection is afforded to the elements of expression that

7

 This principle is well established in other jurisdictions as well. E.g., Yankee Candle

Co v. Bridgewater Candle Co., 259 F.3d 25, 34–39 (1st Cir. 2001)(labels on candles);

Mattel, Inc. v. Azrak-Hamway Intern., Inc., 724 F.2d 357, 360 (2d Cir. 1983)(muscular

dolls in fighting pose); Nola Spice Designs, LLC v. Haydel Enters. Inc., 969 F.Supp.2d

688, 701–12 (E.D. La. 2013)(bead dogs); Erickson v. Blake, 839 F. Supp.2d 1132, 1138

(D. Or. 2012)(transcription of π to music); Aurora World, Inc. v. TY Inc., 719 F.Supp.2d

1115, 1137–38 (C.D. Cal. 2009)(stuffed toys); Sportsmans Warehouse, Inc. v. Fair, 576

F.Supp.2d 1175 (D. Colo. 2008)(sculptures of elk); Alchemy II, Inc. v. Yes! Entertainment

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naturally follow from the idea of depicting things that exist in nature. Satava, 323 F.3d at

810–11; Aliotti, 831 F.2d at 901; Herbert Rosenthal Jewelry Corp., 446 F.2d at 741

(others are free to utilize the idea of depicting a bee in jewelry so long as they do not

plagiarize its expression). Likewise, there is no copyright protection to the elements of a

work that are either indispensable or customary in the treatment of a given subject matter.

Satava, 323 F.3d at 811.

The Ninth Circuit has defined three steps to follow in applying the extrinsic test:

(1) The plaintiff must identify the source of the alleged similarity between its work

and the defendant's work.

(2) Using analytic dissection, the court must determine whether any of the

allegedly similar features are protected by copyright, ensuring that the

unprotectable ideas are separated from potentially protectable expression; 

(3) Having dissected the alleged similarities and considered the range of possible

expression, the court must define the scope of the plaintiff's copyright—that is,

decide whether the work is entitled to broad or thin protection, and depending

on the degree of protection, the court must set the appropriate standard for a

subjective comparison of the works to determine whether, as a whole, they are

sufficiently similar to support a finding of illicit copying.

Apple Computer, Inc., 35 F.3d at 1443.

 Expressions that are standard, stock, or common to a particular subject matter or

medium are not protectable under copyright law. Satava v. Lowry, 323 F.3d at 810. Thus,

elements that constitute such expressions must be dissected from the work when applying

Corp., 844 F.Supp. 560, 568–69 (C.D. Cal. 1994)(talking teddy bears); Diamond Direct,

LLC v. Star Diamond Group, Inc., 116 F.Supp.2d 525 (S.D.N.Y. 2000)(diamond rings

with ballerina style base); Aaron Basha Corp. v. Felix B. Vollman, Inc., 88 F.Supp.2d 226

(S.D.N.Y., 2000)(baby shoe pendants); Designer's View, Inc. v. Publix Super Markets,

Inc., 764 F. Supp. 1473 (S.D. Fla., 1991)(panels depicting fruits, vegetables, and baked

goods); Van Rijn v. California Raisin Advisory Bd., 697 F.Supp. 1136 (E.D. Cal.

1987)(humanized raisin figures); Streeter v. Rolfe, 491 F.Supp. 416 (W.D. La.

1980)(turkey decoys). 

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the extrinsic test. In the present case, the respective works by the parties encompass the

naturally-occurring features of animals. In addition, no artist may use copyright law to

prevent others from depicting ideas that are expressed by nature. Id. at 813 (such ideas

“are the common heritage of humankind”). Therefore, LFI’s copyrights are very thin. Id.

at 812. When the extrinsic test is applied to the works at issue, it becomes apparent that

they are not substantially similar. 

A. LFI’s unicorn work is not substantially similar to the Sticky Mosaics Rainbow

Magic work. 

Plaintiff asserts that the package for the Sticky Mosaics Rainbow Magic product

infringes its illustration of a unicorn. First Amended Complaint at ¶ 58. The LFI work

depicts a slight-framed unicorn standing on top of a purple rock in front of a pond with

pink-flowered shrubs, a plethora of animals, and a rainbow in the background. Exhibit 8.

SOF ¶ 29. The Rainbow Magic box depicts a stout unicorn standing in front of a rainbow

against an otherwise sparse background.8 Exhibit 6 at page 1. SOF ¶ 31. Both unicorns

are standing with their right forefeet raised, but the LFI unicorn has its weight on its

haunches whereas the Sticky Mosaics unicorn has its weight equally distributed fore and

aft. It is common to depict horses and unicorns with one forefoot in the air, because it

makes the work more visually interesting. Kay Decl. at ¶ 11. Unicorns are commonly

depicted in fantasy settings and depicting unicorns with rainbows is nothing extraordinary

in the art world. Id. SOF ¶ 31.

Examples of depictions based on the idea of a unicorn and rainbow include a work by

K. Chin that has been widely circulated in print form since 1980. Exhibit 9. Although the

unicorn in the K. Chin work shares elements seen in the LFI unicorn, i.e., it has a light

muscular frame, long separated strands in the mane and tail, and a long spiral horn that is

8

 The unicorn in the Rainbow Magic kit is based on a sketch of a horse that was drawn

by Vanessa Wilson, an employee of Orb Factory. The sketch was drawn from scratch and

later modified into a unicorn. Wilson Decl. at ¶ 7. True and accurate copies of the original

sketch and the modified sketch are attached to the Wilson declaration as Exhibits 101 and

102.

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making a sweeping motion that leaves a rainbow and stars in its trail, Lisa Frank testified

that the two unicorns were not similar. Lisa Frank Depo. at 164:12–166:9. She also stated

that the K. Chin work did not infringe the LFI work. Id. at 165:11–13 (“Not at all”).

Similarly, Ms. Frank testified that another depiction of a unicorn with a colored tail,

colored mane, colored horn, and raised forefoot, standing in front of a rainbow, was not at

all similar to the LFI unicorn. Exhibit 10. Lisa Frank Depo. at 195:23–196:13 (“Not at

all.”). Later in her deposition, when presented with other works depicting horses or

unicorns in front of rainbows, Lisa Frank ceased to have opinions. Exhibits 11, 12 & 13;

Lisa Frank Depo. at 231:1–15; 241:7–242:23; 246:2–6.

Although the LFI and Orb Factory works share the idea of a unicorn standing in front

of a rainbow with a raised forefoot, the two works are expressed in highly dissimilar

ways. When the various elements common to unicorn works are examined, it is obvious

that they are either indispensable or customary in the treatment of the subject of a unicorn,

and even then, those elements are not substantially similar. SOF ¶ 32.

Element LFI Unicorn Work Orb Factory Unicorn Work

Rainbow Six-color rainbow (pink, orange,

light yellow, green, blue, purple)

with each arc of color having an

embossed effect and a lighter

“highlight” band set within the arc.

Five-color rainbow (red, orange,

dark yellow, green, and blue) with

solid flat bands of color with

squares for placement of tiles

within the bands.

Horn Long spiral horn colored in a

progression of the rainbow

spectrum. The horn is making a

sweeping motion which leaves a

trail of stars in its wake.

Short conical horn colored in

yellow and studded with three

jewels. The horn is stationary.

Mane Consists of long narrow strands

scattered in multiple directions

colored in red, orange, yellow,

green, blue, magenta and purple.

Part of the mane is braided and tied

with a bow

Consists of broad longitudinal

bands of gold, magenta, pink, and

orange and studded with jewels.

Tail Long narrow strands scattered in

multiple directions colored in red,

orange, yellow, green, blue,

magenta, and purple.

Broad bands of gold, magenta,

pink, and orange. Substantially

longer and fuller than the tail of the

LFI unicorn.

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Head Long elegant head with horn set

behind the ears, large proportion

relative to size of torso.

Short squat head with horn set

substantially forward of the ears,

small relative to size of torso.

Torso Muscular light-framed torso with

sloping topline tapering from

shoulders to haunch.

Undefined box-like torso with

horizontal topline.

Legs Muscular, narrow, and tapered,

with well-defined joints and acute

articulation.

Post-like shapes with no muscular

definition and shallow articulation.

Gaze Head is pointed steeply downwards

with eyes directed at viewer.

Head is more horizontal with eyes

looking directly behind the unicorn.

Haunch Sloped diagonally downward and

covered with patches of purple,

magenta, blue, and yellow.

Composed with a curve having a

long horizontal portion and a long

vertical portion, with a magenta

star and jewel.

Shoulder Defined musculature and partially

covered with patches of purple,

orange, green, and yellow.

Undefined and without coloration.

Hooves Horse-like and rainbow-colored in

sequence of blue, yellow, orange,

and red. 

Crude, elephant-like, and colored

with pink band with magenta

circles.

Eyes Smaller dark eyes with black irises. Larger, human-like eyes with white

sclera and blue irises. 

Muzzle Long refined muzzle with nostrils

and mouth.

Short coarse muzzle without

nostrils or mouth.

Ears Single ear visible with vertical

orientation and pointed towards

viewer, inside shaded in purple and

magenta.

Both ears visible and oriented

diagonally and pointed rearwards.

Inside shaded in magenta and pink.

Setting Complex setting with detailed

renditions of flowers, a deer, an

owl, a pond with lilies, and a

mountain, behind which emanate

sunbeams that illuminate a pink

and yellow sky with a rainbow,

clouds, butterflies, and a bird. 

Simple abstract setting.

When the elements common to the works are examined using the extrinsic test, the

differences demonstrate that the works are not substantially similar and that the Orb

Factory work is not a copy of the LFI work. As stated by the Ninth Circuit: “The key

question always is: Are the works substantially similar beyond the fact that they depict the

same idea?” Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 917 (9th Cir. 2010). In this

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case, the answer is no.

B. LFI’s tiger cub work is not substantially similar to the Sticky Mosaics Jungle

Adventure work.

Plaintiff asserts that the package for the Sticky Mosaics Jungle Adventure product is

infringing its illustration of a tiger cub. First Amended Complaint at ¶ 72.9 Both works

depict a tiger cub having black stripes, rounded ears, green eyes, white chest, and erect

tail. Exhibit 14 & Exhibit 6 at page 2. However, tigers in nature have black stripes, white

chests, and rounded ears with black borders that surround white areas. They can also carry

their tails erect. Although tigers in nature generally have yellow irises, they are commonly

depicted in artwork having green irises. SOF ¶ 33. Examples include Kellogg’s Tony the

Tiger mascot and works by K. Chin and Leroy Neiman. Kay Decl. at ¶ 12. SOF ¶ 34. The

K. Chin tiger cub work shares other common elements with the LFI work, including the

magenta and purple shading in the ears. Exhibit 15. Nonetheless, Lisa Frank testified that

the K. Chin work is not substantially similar to the LFI work. Lisa Frank Depo. at

172:6–12 (“Absolutely not.”).10 The Leroy Neiman tiger shares these same qualities.

Exhibit 16. Ms. Frank likewise testified that this work was not similar to the LFI work. Id.

at 174:23–175:5. 

As is the case with the unicorn illustration, the similarities between the LFI work and

the Orb Factory work are limited to features that are common to tigers or commonly used

in the media to depict tigers. In some respects, the similarities are fewer because the LFI

9

 The Sticky Mosaics tiger cub was also created by Vanessa Wilson. Wilson Decl. at ¶

8. The primary reference that she used was an item of clip art, which is attached to her

declaration as Exhibit 103. She consulted this reference to give her a general idea of the

proportions of a tiger cub and then she made an original sketch. Exhibit 104. Among the

original elements are the pose of the tail, the shape of the mouth, nose, eyes, head, ears,

and chest; the placement and shape of the stripes; the highlights in the eyes, and the

proportions of the head, chest, and legs. 

10 During the deposition, Plaintiff’s attorney represented to the deponent that the K.

Chin tiger cub work was created in 2012. In reality, the work was created in 1973. The

artist died in 1995. Kay Decl. at ¶ 13.

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illustration depicts a tiger cub that is standing, whereas the Orb Factory package depicts a

tiger cub that is sitting. When the common elements are examined, it is obvious that they

are of the kind that are indispensable or customary in the treatment of the subject of a

tiger cub, and even then they are not substantially similar. SOF ¶ 35.

Element LFI Tiger Cub Orb Factory Tiger Cub

Posture Tiger cub is standing with its

topline in a horizontal position.

Tiger cub is sitting with its topline

in a steeply sloping position.

Coloration Head is mostly light orange and

light yellow, body is mostly

magenta, and leg is mostly purple.

Head is mostly dark orange and

dark muted yellow, body is dark

muted yellow with dark orange and

brown tiles.

Tail The tail has a black tip and is held

in vertical position. The rear

portion is heavily shaded in

magenta and purple.

The tail has a white tip and is held

in diagonal position. The rear

portion has no shading.

Ears The ears are rimmed in black with

a narrow white border surrounding

a purple interior. 

The ears are rimmed in black with a

broad pink border surrounding a

magenta interior.

Eyes A single white highlight located

completely within the pupils

There are two white highlights

located at the extreme edges of

pupils.

Gaze The head is oriented away from

viewer but eyes are looking at

viewer.

The head is facing viewer but eyes

are looking away from viewer.

Head The head is longer than wide and

has a peaked skull.

The head is wider than long and has

a rounded skull.

Chest The chest is white with black

stripes, and is shaded with purple at

top and pink at bottom.

The chest is white without stripes,

and is shaded in blue tiles at top

with silver and white jewels

covering the balance.

Stripes The stripes are mostly horizontal

on the head, and are more abundant

and complex on the torso, legs, and

head.

The stripes are mostly vertical on

head, and are sparser and less

complex in other areas.

Negative

Space

The space between the tail and

body is wide at the bottom and

narrows upwardly to an open space

between ear and tail.

The space between the tail and

body is narrow at bottom and

widens upwardly to point where ear

touches tail.

Nose The nose has wineglass shape with

dark purple top and black rim at

bottom and matches the color of

the lips.

The nose is almost heart-shaped

with the top half rendered in

magenta and bottom half in purple.

It does not match the yellow lips.

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Muzzle The muzzle is orange and covered

with black freckles and has

whiskers.

The muzzle is yellow has spaces for

white tiles and no freckles or

whiskers.

Setting The tiger cub is set in a very

complex and cluttered setting that

has detailed renditions of flowers,

multicolored ferns, various species

of birds, a butterfly, a frog, and a

pond with lilies. The sky has a

graduated rainbow fade from

yellow to orange to pink to purple

to blue. 

Simple abstract depiction of foliage

in shades of purple against a blue

background.

The two works differ substantially in all the elements, which demonstrates that the

tiger cub work was not copied. When the unprotected elements are filtered out, there is no

substantial similarity between the works.

C. LFI’s dolphin works are not substantially similar to the Sticky Mosaics Dolphins

work.

For their third and fourth copyright claims, LFI asserts that the Sticky Mosaics

Dolphins product is infringing the Dancing Dolphins and Surfing Dolphins illustrations.

First Amended Complaint at ¶¶ 86 & 100. The Dancing Dolphins illustration shows a pair

of dolphins that are underwater and in stylized poses that form the shape of a heart.

Exhibit 17. SOF ¶ 36. The Orb Factory work does not depict a similar combination of

poses. The Surfing Dolphins illustration depicts four dolphins jumping out of a wave that

is depicted with a graduated fade from blue to green that blends into the sky which in turn

fades from yellow to orange. Exhibit 18. SOF ¶ 37. Three of the dolphins are playing with

a beach ball. 

The Orb Factory package prominently depicts a single dolphin jumping out of a

bubbly sea that is colored in shades of blue. Exhibit 6 at page 3. SOF ¶ 38. The package

also shows three other templates that show two dolphins swimming upwards, two

dolphins jumping out of the water, and a dolphin swimming with a sea turtle. None of the

templates depict dolphins with beach balls or fish.

It should be noted that there are about forty species of dolphins, and thus a fair amount

of variation exists in nature. Nonetheless, the dolphins in the Sticky Mosaics work bear a

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strong resemblance in proportions to the Common Bottlenose Dolphin, specifically with

regard to the proportion of the beak to the head. Kay Decl. at ¶ 14. SOF ¶ 39. The stripes

are reminiscent of the stripes of the Atlantic White-sided Dolphin, which are common

around Halifax, Nova Scotia where Orb factory is based. Kay Decl. at ¶ 14. SOF ¶ 39.

The Sticky Mosaics dolphins have pectoral fins that are set forward of the dorsal fin, as is

the case for all species of dolphins. In contrast, the dorsal fins of the LFI dolphins are

located immediately above the pectoral fins, which does not exist in nature. SOF ¶ 40 The

LFI dolphins also have more elongated beaks than the Orb Factory dolphins. SOF ¶ 41.

LFI acknowledges that dolphins can swim under water and jump out of water. Exhibit

19 (Plaintiff's Response to Request for Admissions No. 33). The external anatomy of

dolphins is simpler than that of unicorns and tigers, and thus there is less variation in how

to render them. Kay Decl. at ¶ 14. The practice of depicting dolphins in water

environments dates back more than 3000 years, and LFI’s dolphin works have no novel

elements other than the specific coloration of the dolphins, the specific settings, and the

implied shape of a heart in the Dancing Dolphins illustration. However, the Sticky

Mosaics package does not share these elements. When asked to compare LFI’s dolphin

works to another dolphin work that shows interacting dolphins, a sky with colors

graduating from pink to orange to yellow above an ocean with colors graduating from

light to dark blue, as well as coral and fish, Lisa Frank testified that this work did not

infringe either of LFI’s works. Exhibit 20; Lisa Frank Depo at 178:15–179:8. Likewise,

when asked to review another dolphin work showing dolphins leaping from a wave with a

graduated sky and rainbow in the background, she testified that this work did not infringe

the LFI dolphin works. Exhibit 21; Lisa Frank Depo. at 236:4–5. She had no opinion

regarding whether another work infringed the LFI works. Exhibit 22; Lisa Frank Depo. at

250:23–251:11. 

With regard to those aspects where artistic judgment is required, Plaintiff’s and

Defendant’s illustrations are not substantially similar. The relevant elements include the

following. SOF ¶ 41. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—23

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Element LFI Dolphins Orb Factory Dolphins

Coloration The dolphins have wavy bands in

various graduated colors, without

pearls. The Surfing Dolphins have a

color progression from dark blue to

light blue to green to pink to yellow.

The Dancing Dolphins shows a pair

of facing dolphins having a color

progression of blue to purple to green

to yellow in one dolphin which

continues to the other dolphin in the

form of yellow to pink to magenta,

the overall effect of which is to create

a rainbow progression of color.

The dolphins have parallel bands

of abrupt generally-contrasting

colors with rows of pearls. The

stripes are reminiscent of the

Atlantic White-sided Dolphin

although rendered in various

colors. One template shows two

dolphins generally facing each

other but without a rainbow

progression of color.

Beaks Longer than in Orb Factory’s work. Shorter than in LFI’s works and

similar to that of the Common

Bottlenose Dolphin.

Mouths Upper and low parts constructed with

shallow c-shaped curves.

Upper and lower parts

constructed with shallow sshaped curves.

Dorsal and

Pectoral

Fins

(Flippers)

The dorsal fins are set above the

pectoral fins. The pectoral fins are set

further back and narrower than in the

Orb Factory work; the pectoral fins

are either the same or a

complementary color as the adjacent

body color.

The dorsal fins are set behind the

pectoral fins as is the case for

real dolphins. The pectoral fins

are further forward and wider

than is the case for the LFI

dolphins and their color contrasts

with the adjacent body color.

Eyes The eyes have black pupils

surrounded by a blue or green iris.

Black pupils surrounded by white

sclera.

Settings The Dancing Dolphins work is set

underwater with detailed renderings

of fish, some of which are in a school

forming the shape of a heart, a

seahorse, various kinds of coral,

bubbles (some of which are heartshaped), and jellyfish. The surface of

the water is backlighted by a sky

radiating in concentric circles of

yellow, orange, and pink. The water

then has a graduated transition from

magenta to purple to blue.

The Surfing Dolphins work shows a

sky that has a graduated progression

from dark orange to orange to yellow

which in turn meets with the ocean

that progresses from green to medium

blue to dark blue. Other elements

include a multicolored beach ball and

an island with palm trees.

The dominant template is set

above water against a pastel sky

with crudely rendered birds and

faint sunbeams. The three

secondary templates have very

simple backgrounds.

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When the unprotected elements are filtered out, there is no substantial similarity

between the works.

D. LFI’s dog work is not substantially similar to the Sticky Mosaics Playful Puppies

work.

LFI’s recently-added fifth claim of copyright infringement is perhaps the strongest

demonstration of its lack of understanding of what is protected by copyright. Although

LFI’s pleading is not a model of clarity, LFI appears to be contending that an LFI work

that includes a black-and-white Boxer-like dog wearing a tiara and necklace is infringed

by the Orb Factory template showing a Papillon wearing a tiara and jeweled collar.

Exhibit 23 & Exhibit 6 at page 4; First Amended Complaint at ¶¶ 29 & 114. 

The LFI work depicts a heavy-set dog with black-and-white coloring, wide skull,

broad muzzle, droopy pointed ears, and a pink tutu. SOF ¶ 43. The breed is not obvious

but it could possibly be a Boxer with uncropped ears. The Orb Factory Papillon template

is part of the Sticky Mosaics Playful Puppies product and depicts a Papillon with a black

head and white blaze. SOF ¶ 44. The dog has the standard features of a Papillon, which

include fine boned structure, a small head that is slightly rounded between the ears with a

well-defined stop, a refined muzzle that tapers to a small nose, erect ears with fringes,

brown eyes, and a long coat.11 Kay Decl. at ¶ 15.

The dog in the LFI work is wearing a silver tiara covered in pink, orange, yellow,

green, blue, and purple stones and a silver necklace connected to the sides of a heart

covered with pink, orange, and blue stones. SOF ¶ 45. The Papillon is wearing a gold

tiara with pink stones and is also wearing a gold collar with gold-colored stones to which

11 The Sticky Mosaics template was designed by Vanessa Wilson and depicts a breed

of dogs known as the Papillon. Wilson Decl. at ¶ 9. The template is based on the two

reference images which are attached to her declaration as Exhibits 105 and 106. The

sketch she made is attached as Exhibit 107. In addition to the foam tiles, the Playful

Puppies kit uses sparkling jewel tiles and each of the templates contains a visual element

to which sparkling jewel tiles are intended to be affixed. Ms. Wilson decided to include a

tiara and a pendant as the visual elements to which jewels would be affixed in the

Papillon template. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—25

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a pink heart is suspended. SOF ¶ 46. However, the concept of a dog wearing a tiara and

necklace is not novel. SOF ¶ 47. In fact, tiaras and necklaces made for dogs may be

purchased at specialty pet shops. Wilson Decl. at ¶ 9; Exhibits 24 & 25. Likewise, heartshaped identification tags similar to the heart-shaped pendant on the collar worn by the

Papillon are commonplace. Kay Decl. at ¶ 15; Exhibit 26. 

When the elements common to dogs are examined, it is obvious that the two works are

not substantially similar. SOF 48.

Element LFI’s Dog Orb Factory’s Dog

Posture The LFI dog is perched on top of a

large heart with forelegs dangling

over the front of the heart. The dog

is wearing a pink tutu.

The Papillon is sitting on the

ground with a forefoot slightly

raised.

Coloration The head is mostly black with a

white muzzle and blaze that stops

just short of the forehead. The

center part of the chest is white and

part of one leg is white.

The head is black with a white

blaze that extends from the white

muzzle to the crest of the head. The

entire chest and both legs are white.

Ears The LFI dog has pointed ears that

hang down to eye level.

The Papillon has erect rounded ears

with fringes of long hair that give

the breed its characteristic

“butterfly” appearance.

Eyes The eyes are large and almond

shaped, with large pupils and

prominent blue irises. 

The eyes are more circular and

smaller than those of the LFI dog,

and have brown irises.

Gaze The head is tilted slightly away

from the viewer and the eyes are

looking to the right and slightly

downward.

The head is facing viewer and the

eyes are directed at the viewer.

Head The LFI dog has a very coarse head

with a broad deep muzzle and

jowls.

The Papillon has a narrow refined

head and a small dainty muzzle.

Chest The chest is broad with a short coat. The chest is heavily fringed with

long hair.

Nose The nose is prominently set on the

muzzle and has an almost

rectangular shape.

The nose is very small and has an

almost triangular shape. 

Mouth The mouth is constructed with two

upward-facing curves and extends

the entire width of the muzzle. The

tongue is not visible.

The mouth is small and constructed

of two downward-facing curves. it

extends only halfway across the

muzzle and the pink tongue is

clearly visible.

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—26

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Tiara The tiara is silver and covered in

pink, orange, yellow, green, blue

and purple stones. The top

ornament rises from the band in a

generally triangular shape and is

toped by a large green stone. 

The tiara is gold and with a band

covered in small pink stones. The

top ornament consists of a row of

filigree with seven pink stones that

is topped by another row of filigree

that incorporates a heart shape with

four pink stones. 

Necklace/

Collar 

The LFI dog is wearing a necklace

consisting of a silver chain covered

in pink, orange, yellow, and blue

stones that is attached to the sides

of a silver heart-shaped pendant

covered in pink stones.

The Papillon is wearing a gold

collar with gold-colored pearls.

Hanging from the collar is a pink

heart-shaped pendant with a pink

pearl in the center and a white

border covered in white pearls.

Setting The LFI dog is perched with two

other dogs on top of a large

rainbow-colored heart that sits over

a checker pattern having a color

fade from blue to purple to pink.

The sky in the background has a

fade from blue to purple to pink

and numerous clouds.

The Papillon is set against a solid

blue background.

LFI seems to think it has the right to prevent others from creating their own works that

depict a black-and-white dog wearing a tiara. It apparently does not matter if that dog is a

Boxer, Akita, Dalmatian, Boston Terrier, Great Dane, Border Collie, Cocker Spaniel,

Greyhound, Bull Terrier, Chihuahua, or even a mixed breed. However, copyright law

vests the public with the right to create their own works, which is what Orb Factory has

done. The LFI and Orb Factory works are not substantially similar. Therefore, the

copyright claims should be dismissed. 

Conclusion

The trade dress and unfair competition claims should be dismissed because LFI has

failed to articulate its trade dress with any degree of specificity, its purported trade dress

does not have a consistent look, the use of bright colors and animal characters is

functional in the context of toys, and it is not probable that consumers would be confused

about the origins of the respective products. 

Similarly, the copyright claims should be dismissed because the works at issue are not

substantially similar but instead constitute different expressions of superficially-similar

ideas. 

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—27

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Dated: February 13, 2017

Respectfully Submitted, 

s/Bert P. Krages II 

Attorney at Law

6665 SW Hampton Street, Suite 200

Portland, OR 97223-8357

bert@krages.com

Oregon State Bar No. 872798

Telephone: (503) 597-2525

Of Attorneys for Defendant

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT—28

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