Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 1 of 23
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`UAB “PLANNER5D” D/B/A PLANNER
`5D,
`
`Plaintiff,
`
`v.
`
`Case No. 19-cv-03132-WHO
`
`ORDER GRANTING IN PART
`DEFENDANTS’ MOTION FOR
`SUMMARY JUDGMENT
`Re: Dkt. No. 217
`
`META PLATFORMS, INC., et al.,
`Defendants.
`
`INTRODUCTION
`UAB Planner 5D (“Planner 5D” or “P5D”) operates a home design website that allows
`users to create virtual interior design scenes. Users gain access to a library of virtual objects (such
`as tables, chairs, and sofas) to populate their scenes. It claims that it owns copyrights in these
`three-dimensional objects and scenes, and in a compilation of certain scenes. It also claims that
`the underlying data files, (including the data files underlying the compilation of objects, for which
`I found insufficient originality to support a copyright) also qualify for trade secret protection.
`UAB “Planner5D” v. Facebook, Inc. (“Planner 5D II”), No. 19-CV-03132-WHO, 2020 WL
`4260733, at *6 (N.D. Cal. Jul. 24, 2020). P5D filed this suit against defendants Facebook, Inc.,
`Facebook Technologies, LLC, now known as Meta Platforms, Inc. (collectively “Meta”), and the
`Trustees of Princeton University (“Princeton”) for copyright infringement and trade secret
`misappropriation.
`Before me is defendants’ motion for summary judgment for both the copyrightability and
`trade secrecy of Planner 5D’s works. Three primary disputes have emerged in relation to the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 2 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`copyright claims: (1) whether P5D satisfied the requirements of Section 411(a) of the Copyright
`Act, 17 U.S.C. § 101 et seq., which is a prerequisite for pursuing these claims in court, Motion for
`Summary Judgment (“MSJ”) [Dkt. No. 217-3] at 31:13-18; (2) whether P5D’s works “lack human
`authorship” and therefore cannot be protected with copyright, MSJ at 32:13-20; and (3) whether
`P5D’s works “lack originality” because they model pre-existing furniture and other real-life
`objects and therefore cannot be protected with copyright. MSJ at 33:4-6. One primary dispute has
`emerged in relation to the trade secret claims: whether the measures P5D took to protect its files
`collectively constituted reasonable measures under the circumstances, as required to establish the
`existence of a trade secret that can be legally protected. MSJ at 28:2-6.
`FACTUAL BACKGROUND
`I detailed Planner 5D’s allegations and much of the relevant background in my previous
`orders. See Planner 5D, 2019 WL 6219223, at *2–4 (N.D. Cal. Nov. 21, 2019); Planner 5D II at
`*6. I incorporate those discussions by reference and summarize the salient facts here.
`I.
`Planner 5D’s Home Design Website
`In 2011, Planner 5D began offering users access to a digital library of thousands of digital
`household objects, including “structural features,” “furniture,” and “exterior features,” on its home
`design website. Compl. ¶ 27. Users can create unique designs by “simply dragging any of these
`objects onto or around a chosen floor plan.” Id. Once added to a design, these objects can be
`“easily moved, rotated, tilted, re-sized, or otherwise manipulated to create the desired
`design.” Id. Users can also “easily toggle between two- and three-dimensional renderings of the
`design” and can rotate and tilt three-dimensional renderings “to any desired perspective.” Id.
`Planner 5D claims that it currently has over 40 million users worldwide and that it owns “a
`collection of over a million hand-crafted, digitized, and realistic three-dimensional objects and
`scenes, depicting a wide variety of household and office designs.” Id. ¶¶ 5, 28.
`A.
`Creation of Planner 5D’s Works
`1.
`Objects (3D Models)
`Planner 5D claims to possess a copyright in 3,719 Objects (the “Asserted Objects”).
`Copyright Complaint (“CR Compl.”) [Dkt. No. 1] in Case No. 20-cv-8261-WHO ¶ 33; see also
`2
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 3 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Declaration of Johanna Schmitt “Schmitt Decl.”) ¶ 15. It asserts that each of its objects was hand-
`created by one of four human modelers using an open-source modeling tool called Blender. Oppo.
`at 11:7-11. The “modelers” start with a blank screen in the Blender program that contains a grid
`and a panel of controls. They use this interface to create the objects in a manner that Planner 5D
`analogizes to sculpting. Id. at 11:12-15. The underlying code is generated automatically based on
`the modeler’s manipulation of the control panel, so the modelers do not write the code directly.
`Oppo. 14:18-19.
`Most of the objects are modeled after existing objects, with only about 10% being designed
`“without reference to an inspirational image.” Mot. at 37:9-10.1 The remaining objects were
`“inspired by real objects or images the modelers encountered in life,” including from reference
`images on the web. Oppo. at 11-12. Finally, 113 of the objects were commissioned by furniture
`retailers and were meant to look like items from the retailers’ catalogs. This category is referred to
`as “Business-to-Business, or B2B, objects.” Id. 12:3-6. Each of these objects is available to
`Planner 5D users for inclusion in the scenes they arrange on Planner 5D’s website.
`2.
`Scenes and Scene Compilation
` In addition to Planner 5D’s claims relating to its individual objects, Planner 5D claims
`copyright in the compilation of the 49,479 scenes on its public gallery as of February 17, 2016 (the
`“Asserted Scene Compilation”). CR Compl. ¶ 46. Of these, 18 individual scenes were created by
`Planner 5D employees (the “Asserted Individual Scenes”). Schmitt Decl. ¶ 31. The remaining
`scenes in P5D’s gallery were created by its users, who arrange unique scenes through the web
`interface and can elect to submit their creations to be considered for inclusion in Planner 5D’s
`“public gallery” for anyone to view. CR Compl. ¶¶ 31, 55.
`Users could “flag” their work for inclusion in P5D’s public gallery. P5D’s co-founders—
`Alexey Sheremetyev and Sergey Nosyrev—reviewed each flagged scene and chose which should
`be added to the public gallery. Oppo. 14:13-16. “In choosing scenes, [Sheremetyev and Nosyrev]
`
`1 Defendants claim that Planner 5D has refused to identify the objects comprising that 10% from
`among the 3,719 objects Planner 5D claims are subject to copyright. Mot. at 37:10-11. At the
`hearing, I directed Planner 5D to provide a master list of original objects and scenes to defendants
`by July 19, 2023.
`
`3
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 4 of 23
`
`aimed to show off their software’s scope, quality, playfulness, and power to potential users.” Id.
`at 14:16-17. They chose scenes based on artistic value, humor, novelty, diversity, creativity,
`completeness, fun, family-friendliness, and realism. Id. 14:16-19. The selected scenes were then
`saved in P5D’s proprietary JSON file format as a “scene data file” and uploaded to the public
`gallery. Schmitt Decl. ¶ 25.
`B.
`User Access to Planner 5D’s Works
`Planner 5D’s web-based product uses “client-side rendering.” Mot. at 16:14-16; Schmitt
`Decl. ¶¶ 172, 183, Ex. 16 at 20–21; Declaration of Ryan McKamie (“McKamie Decl.”) ¶ 38. This
`means that when a user views a Scene using P5D’s web interface, Planner 5D transmits data files
`to the user’s web browser and relies on the user’s computer to perform the operation of rendering
`the Scene onto the screen. Schmitt Decl. ¶ 184, Ex. 16 at 20–21; McKamie Decl. ¶ 38.
`There is some dispute over what exactly is transmitted to a user’s computer during this
`process. Defendants claim that Planner 5D “actively transmits” the following materials to the
`user’s web browser:
`, Ex. 12 (RFA
`No. 54); Schmitt Decl. ¶ 166; McKamie Decl. ¶¶ 49–50;
`
`, Ex. 12 (RFA No. 61); Schmitt Decl. ¶ 167; McKamie
`
`Decl. ¶¶ 70–71; and
`
`
`
`
`, Ex. 12 (RFA Nos. 56 & 63); Song Decl. ¶¶ 7–10, 14–
`
`16; McKamie Decl. ¶¶ 34–46, 60–71.
`
`
`
`
`
`
`
`
`
`
`
`
` Reply at 21:20-24.
`
` Oppo. at 38-39.
`
`4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 5 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Planner 5D disputes this,
`
`
`
`
`
`. Compare Mot 6:18-24 with Supplemental Expert Report of Bruce F.
`Webster (“Web Rep1”), Dkt. No. 255-1, Ex. 1 at 26-30.
`
`
`
`. Web Rep1 at 26-30, 60.
`
` Id. at 59-60.
`
`
`
`
`
`
`
`. Ex. 12 (RFA Nos. 66 &
`
`67); McKamie Decl. ¶¶ 43–46, 64–68.
`
`
`
`. Schmitt Decl. ¶¶ 185–
`86, 188; McKamie Decl. ¶¶ 47–51, 69–71; Song Decl. ¶¶ 6–8. Defendants chose the latter route.
`The use of developer tools for this purpose was prohibited by Planner 5D’s Terms of Service.
`FAC ¶ 40.
`II.
`Princeton Downloads Planner 5D’s Works to Create the SUNCG Dataset
`Planner 5D claims that, in 2016, Princeton circumvented P5D’s protections in order to
`download a complete set of P5D’s works. P5D contends that prior to executing the download,
`Princeton spent months or years preparing to download the works without being detected. For
`example, though Dr. Song claimed that she first saw the Planner 5D website in 2016, she
`described a version of the website phased out in 2014. See Declaration of Christian Andreu von-
`Euw (“AvE Decl.”) § D. P5D’s internal logs also show a ten-fold increase in traffic from
`Princeton in April 2015, when Song gave a talk about “large on-line 3D model repositories.” Web
`Rep1 at 37.
`Planner 5D alleges that once Dr. Song determined how to evade P5D’s protections, she
`
`
`5
`
`
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 6 of 23
`
`Oppo. 44:4-6.
`
` Web Rep1 § 7.2.
`
`
`
`
`
`
`
`
`
`. After downloading the files, Princeton’s team spent over six months decoding
`Planner 5D’s files in order to make them usable for the SUNCG project. Id. § 7.3.
`PROCEDURAL BACKGROUND
`
`I.
`
`Motions to Dismiss
`On March 14, 2019, Planner 5D wrote Facebook, Princeton, and others, demanding that
`they cease and desist infringement of Planner 5D’s copyrights. Compl. ¶ 55; see also Princeton
`Request for Judicial Notice, Ex. 2 [Dkt. No. 32-2] (copy of cease-and-desist letter sent to
`Princeton). On June 5, 2019, Planner 5D filed this Complaint against Princeton, Facebook, and
`other unknown entities and persons, alleging claims for copyright infringement and trade secret
`misappropriation. See Compl. Both Princeton and Facebook moved to dismiss the Complaint on
`12(b)(6) grounds for failure to state a claim upon which relief can be granted. See Princeton
`Motion to Dismiss (“Princeton Mot.”) [Dkt. No. 31]; Facebook Motion to Dismiss (“Facebook
`Mot.”) [Dkt. No. 33]. After three rounds of motions to dismiss, the only claim that Planner 5D
`could not revive was the copyright infringement claim for the compilation of objects, which I
`dismissed with prejudice. MTD Order [Dkt. No. 90] at 9:20-21.
`II.
`Copyright Registration
`I initially dismissed Planner 5D’s copyright claims because Planner 5D failed to allege that
`it met the threshold registration requirement of section 411(a). I dismissed the copyright claims a
`second time when Planner 5D submitted a registration application but could not verify that the
`works at issue in this case were covered by that registration. Planner 5D then submitted two
`applications to the Copyright Office on September 14, 2020, seeking to register all Planner 5D
`objects created through January 13, 2016, and all public gallery scenes created through February
`17, 2016. See CR Compl. ¶ 96. On November 16, 2020, the Copyright Office refused each of the
`applications. It wrote:
`
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 7 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Although the Registration Program Office has concluded that the
`deposits submitted with these applications do not meet the
`requirements for registering a work as a computer program you have
`delivered to the Office a deposit, application, and fee required for
`registration of the computer programs ‘in proper form,’ as required to
`institute a civil action for infringement under 17 U.S.C. § 411(a).
`Id., Ex. A (November 16, 2020 Copyright Office Letter) at 2. Planner 5D then sought
`reconsideration under 37 C.F.R. § 202.5(b), whereby a Registration Program staff attorney not
`involved in the initial examination conducts a de novo review. See Compendium of U.S.
`Copyright Office Practices § 1703.2 (3d ed. 2021), available at
`https://www.copyright.gov/comp3/docs/compendium.pdf. If the refusal is maintained, the
`regulations provide that Planner 5D may request a second reconsideration from the Copyright
`Office Review Board (“Board”), which consists of the Register of Copyrights and the General
`Counsel (or their designees), and a third member designated by the Register. 37 C.F.R. § 202.5(f).
`Planner 5D subsequently submitted a reconsideration request. Id. ¶ 144. The second request for
`reconsideration is also subject to de novo review. See Compendium of U.S. Copyright Office
`Practices § 1704.2. While decisions by the Board are nonprecedential and constitute final agency
`action, they can be persuasive authority. The Board has not granted a copyright registration, and
`Planner 5D has since chosen not to pursue the registration further.
`LEGAL STANDARD
`Summary judgment on a claim or defense is appropriate “if the movant shows that there is
`no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
`law.” Fed. R. Civ. P. 56(a). To prevail, a party moving for summary judgment must show the
`absence of a genuine issue of material fact with respect to an essential element of the non-moving
`party’s claim, or to a defense on which the non-moving party will bear the burden of persuasion at
`trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has made this
`showing, the burden then shifts to the party opposing summary judgment to identify “specific facts
`showing there is a genuine issue for trial.” Id. The party opposing summary judgment must then
`present affirmative evidence from which a jury could return a verdict in that party’s favor.
`Anderson v. Liberty Lobby, 477 U.S. 242, 257 (1986).
`On summary judgment, the Court draws all reasonable factual inferences in favor of the
`7
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 8 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`non-movant. Id. at 255. In deciding a motion for summary judgment, “[c]redibility
`determinations, the weighing of the evidence, and the drawing of legitimate inferences from the
`facts are jury functions, not those of a judge.” Id. However, conclusory and speculative testimony
`does not raise genuine issues of fact and is insufficient to defeat summary judgment. See
`Thornhill Publ’g Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979).
`DISCUSSION
`
`I.
`
`COPYRIGHT CLAIMS
`
`Section 411(a)
`A.
`Though the Copyright Office has denied P5D’s registration request, a party may sue for
`infringement “notwithstanding the refusal of the Register to register the claim to copyright” so
`long as “notice [is] served on the Register[.]” Nova Stylings, Inc. v. Ladd, 695 F.2d 1179, 1181
`(9th Cir. 1983). “Once that has occurred, the district court can determine both the validity of the
`copyright, which in turn determines its registrability, as well as whether an infringement has
`occurred.” Id. To be sure, the Copyright Office’s final determination can have persuasive value.
`However, I must make “an independent judicial determination [] solely for the purposes of
`adjudicating [this] infringement suit.” Proline Concrete Tools, Inc. v. Dennis, No. 07CV2310-
`LAB (AJB), 2013 WL 12116134, at *4 (S.D. Cal. Mar. 28, 2013).
`Defendants argue that Planner 5D submitted its copyright registration application in the wrong
`category by designating the code as a “computer program.” They say that Planner 5D applied
`within the “computer program” category in order to avoid satisfying the deposit requirement,
`which would have provided defendants with better notice of Planner 5D’s claims.2 Planner 5D
`contends that the classification is irrelevant because this administrative classification does not bear
`on the works’ copyrightability, see 17 U.S.C. § 408(c)(1), and that I should only look to the
`registration application insofar as it satisfies the “administrative exhaustion” analog created by
`411(a). It urges that I must construe the registration liberally, even if it contains errors. See Three
`
`2 I ordered that plaintiffs provide defendants with a complete list of claimed objects and scenes,
`excluding the list disclosed through interrogatory responses and deposition answers previously
`provided. Defendants have had that list for more than two months and have not complained that it
`was deficient. Any “notice” issues have been cured.
`8
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 9 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000) (“Absent intent to defraud and
`prejudice, inaccuracies in copyright registrations do not bar actions for infringement.”)
`Planner 5D points out that the proper regulatory classification is often unclear. See Skyline
`Design, Inc. v. McGrory Glass, Inc., No. 12-cv-10198, 2014 WL 258564, at *4 (N.D. Ill. Jan. 23,
`2014) (observing that double-sided etched-glass works didn’t obviously fit into “2–dimensional
`artwork,” “3–dimensional sculpture,” or “architectural work,” and “none of the other categories
`even come close”). It sought to register its works as “computer programs” because the works
`consist of code that instructs computers to render specific 3D images. This meets the Copyright
`Act’s definition of “computer program.” 17 U.S.C. § 101 (“computer program” is a set of
`statements or instructions to be used directly or indirectly in a computer in order to bring about a
`certain result.). Indeed, the Copyright Office had granted registration of the very same type of
`files as computer programs when P5D previously applied to register its 2019 Objects and Scenes.
`See [Dkt. No. 1-1] in Case No. 20-cv-2198-WHO. Defendants counter that P5D should have
`submitted thousands of separate applications to register each of its works as individual visual
`works. Mot 17:16-19. While this was an alternative, defendants do not provide any compelling
`reason that this inefficient route was more logical than the route plaintiff 5D chose to take.
`In sum, I find no intent to defraud or prejudice in Planner 5D’s decision to submit its works for
`registration as computer programs. Because the alleged lack of notice has been cured, the alleged
`deficiency of the deposit to the Copyright Office is not material. While the Copyright Office’s
`determination can be helpful, I must independently determine whether a copyright exists in these
`works for purposes of adjudicating the dispute before me regardless of that determination.
`However, because the Copyright Office did not grant a registration for the relevant works, P5D
`cannot rely on a presumption of validity. Cf. United Fabrics Int’l, Inc. v. C & J Wear, Inc., 630
`F.3d 1255, 1257 (9th Cir. 2011) (“A copyright registration . . . creates a rebuttable presumption of
`validity.”) (quoting 17 U.S.C. § 410(c)).
`
`Human authorship
`B.
`Planner 5D’s objects and scenes are created on a non-coding interface, and the underlying
`code is automatically generated by a third-party application (Blender in the case of objects, and
`9
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 10 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Planner 5D’s scene editor in the case of scenes). Defendants argue that because Planner 5D
`attempts to register the code, which is not written by a human, it is barred by the copyright
`requirement that works be produced by a human author. Urantia Found. v. Kristin Maaherra, 114
`F.3d 955, 957-59 (9th Cir. 1997) (authorship requires “some element of human creativity”).
`Planner 5D counters with two arguments. First, works written with software are “only
`uncopyrightable if are created without any human creative control.” Oppo. at 34:1-4 (citing 88
`Fed. Rg. 51, 16192; AvE Decl Ex 20). Here, the code is generated only when a human
`manipulates the software for creative use. Second, Planner 5D claims that its copyright
`applications cover both the visual models and the literal text of P5D’s works, not only the
`automatically generated code. Cf. Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d
`542, 546-47 (S.D.N.Y. 2011) (finding that registration of a catalog also covers the three-
`dimensional works depicted in it, even where the work is described as “two-dimensional artwork”
`or “photographs and text.”).
`There is no dispute that the visual models are human-created, but the parties dispute
`whether the copyright registration applications cover the visual models, the auto-generated code,
`or both. That distinction is immaterial because both the visual models and the code are generated
`through human authorship. Whether that authorship involves typing code directly or manipulating
`a graphical tool that generates code, a human takes action to generate the works. This
`interpretation is supported by the fact that the Copyright Office had previously granted copyright
`registrations for code generated using graphical tools like the ones used here, including Blender.
`AvE Decl ¶¶ 22-24, Exs. 17-19. Accordingly, human authorship is not a bar to copyrightability
`here.
`
`Originality
`C.
`In an infringement action, the court must address the threshold question of the ownership
`of a valid copyright, which starts with consideration of originality. Topolos v. Caldewey, 698 F.2d
`991, 994 (9th Cir.1983) (holding that the district court erred in not resolving a threshold question
`of copyright ownership); Jonathan Browning, Inc. v. Venetian Casino Resort LLC, 2009 WL
`1764652, at *1 (N.D.Cal. June 18, 2009) (“Determinations of copyrightability are indeed
`10
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 11 of 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`questions of law reserved for the judge, not the jury.”); 2 Nimmer on Copyright § 12.10[B]
`(“[C]ertain . . . matters are reserved to the judge. Included are determinations of copyrightability
`in all instances.”). “The sine qua non of copyright is originality.” Feist Publ’n, Inc. v. Rural Tel.
`Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
`Originality means that: (1) the author independently created the work, and (2) the work
`“possesses at least some minimal degree of creativity.” Id. at 345, 111 S.Ct. 1282. The required
`amount of creativity is “extremely low; even a slight amount will suffice.” Id. Because of this
`low standard, “[t]he vast majority of works make the grade quite easily, as they possess some
`creative spark, ‘no matter how crude, humble or obvious’ it might be.” Ets–Hokin v. Skyy Spirits,
`Inc., 225 F.3d 1068, 1076 (9th Cir.2000) (quoting Feist Publ’n, 499 U.S. at 345, 111 S.Ct. 1282).
`Nevertheless, the degree of creativity “is not negligible.” Satava v. Lowry, 323 F.3d 805, 810 (9th
`Cir.2003). “There must be something more than a ‘merely trivial’ variation, something
`recognizably the artist’s own.” Id. (quoting Three Boys Music Corp. v. Bolton, 212 F.3d 477, 489
`(9th Cir. 2000)).
`
`Defendants’ “lack of originality” argument
`1.
`Defendants claim that when the modelers used a reference image, even when not explicitly
`commissioned as a B2B object, the objects were nearly identical to the reference image. Mot. at
`35:14-15. As a result, they claim that the objects lack the original expression needed to support a
`copyright. Mot. at 34:2-5. Specifically, they argue that the model must contain elements that are
`not present in the pre-existing reference item to sustain copyright protection. See Compendium of
`U.S. Copyright Practices § 923.1 (determining whether model is protectable depends on whether it
`“contains some original differences from the object depicted”); see also Bespaq Corp. v. Haoshen
`Trading Co., No. 04 Civ. 3698, 2004 WL 2043522, at *2 (N.D. Cal. Sept. 13, 2004) (denying
`injunction because plaintiff failed to explain what “elements it has added to its miniature furniture
`that were not otherwise present in preexisting full-size furniture pieces”). “[I]n assessing the
`originality of a work for which copyright protection is sought, [courts] look only at the final
`product, not the process” by which it was created. ABS Entm’t Inc. v. CBS Corp., 908 F.3d 405,
`416 (9th Cir. 2018) (quoting Meshwerks, Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258, 1268
`11
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 12 of 23
`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 12 of 23
`
`(10th Cir. 2008)). Indeed, I noted in my motion to dismiss orderthat, although creation of these
`
`models might require time andeffort, “the ‘sweat of the brow’ approach doesnotestablish
`
`originality or creativity.” Dkt. No. 52 at 13.
`
`Defendants submit a summary chart of side-by-side comparisons for 981 non-B2B images
`
`alongside their reference images. Below is a sample of three non-B2B objects from that chart.
`
`Defendants point out the striking similarity between these objects and the reference image,
`
`including identical or near-identical dimensions. They contend that the models lack any elements
`
`that were not present in the existing third-party product, and that this forecloses copyright
`
`protection as a matter of law.
`
`
` Length: 44
`
`PSD Object No.
`
`Image of P5D Object
`
`oar 101
`Width: 101
`Height: 187
`-
`
`f
`j
`ay
`
`With 35
`as
`f
`Length: 102
`Width: 64
`Height: 122
`
`imageof of Third-Party Product
`SSThank
`EI
`Lit
`rr
`
`GH
`
`Name ofProduct
`IKEA PS 2014 Wardrobe
`(SKU# 002.603.09)
`Leagth © cm
`cag
`Width: 10cm
`Beizht:
`cm
`IKEA BOLMEN Step Stool
`(SKU# 902.913.30)
`
`wine)ee
`Height: 25 cm
`LaLane CollectionRustic
`Rocking Chair
`Length: 102cm
`aessecok
`
`Schmitt Decl. §¥ 72, 80, 82, Ex. 50.
`
`2.
`
`Plaintiffs “creative choices”
`
`Planner 5D counters with a litany of “design choices”that its modelers make each time
`
`they create an object replicating a real-life item. It contends that originality need not be proven
`
`with reference imagesalone, and that I should instead look to the design choices the modelers
`
`made even when creating objects from reference images, which are only properly represented in
`
`three dimensions, as when viewedin the PSD interface. Oppo. at 12:7-11. “[E]very PSD object
`
`features a host of independentcreative choices. Modelers fashion the objects in three-dimensional
`
`detail, incorporating choices that cannot be seen in small, 2D thumbnails such as those Defendants
`
`compare with reference images.” Jd.
`
`12
`
`—"CoOoYNDneeWYNY
`thetnHur&_WwVYKFCO
`NyNYNYNYKYNYNYVYNHNKY&aoANYDnnu&WwNYOKFCDOOWw
`
`q
`
`
`
`NorthernDistrictofCalifornia
`
`
`
`
`
`
`
`UnitedStatesDistrictCourt
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 13 of 23
`
`Among these creative choices are in the modeler’s selection of (1) the number and
`placement of polygons or triangles that make up the entire image, referred to as the “mesh
`choices,” and (2) the material, which combines a number of decisions about what how the object
`should be rendered. The “mesh” selection is similar to a decision about the resolution of an
`image, with more polygons (as with pixels) creating a clearer rendering. This figure illustrates the
`concept:
`
`Oppo. at 12:21-25. The decisions relating to the “material” include: (a) specularity (how dull or
`shiny the surface is), (b) specular color (the colors appearing to reflect from the object’s surface),
`(c) transparency, (d) texture,3 (e) UV mapping,4 and (f) diffuse color (the color of its surfaces
`without texture). Oppo. at 13:10-19.
`Planner 5D asserts that the “placement and arrangements of polygons” by itself satisfies
`the threshold originality to support copyrightability. It cites Glass Egg Digital Media v. Gameloft,
`Inc., No. 17-CV-04165-MMC, 2018 WL 3659259, at *4-5 (N.D. Cal. Aug. 2, 2018). In Glass
`Egg, the plaintiffs created 3D models based on real cars, but the Court found the “requisite level of
`originality to be afforded copyright protection” because the modelers could control the placement
`and arrangement of triangles for each attribute of the car, and different artists could create models
`that looked different but still represented the car being modeled. Id. By contrast, Planner 5D has
`
`3 Texture “refers an image to be mapped to the object’s surface. For example, the modeler can
`pick a .jpg image of wood grain and map it to a portion of an object intended to be made of
`wood.” Opp. at 14:3-4.
`4 “UV mapping” is how a 2D texture image is mapped onto a 3D object’s surface. Kon Dep
`210:25-214:8, 259:19-260:22; Sher Dep 96:10-23. An image can be stretched to fit the surface or
`it can be tiled in a repeating pattern. Id. Mapping can also be adjusted manually, such as fixing
`textures at seams. Kon Dep 175:2-6.
`
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 281 Filed 09/26/23 Page 14 of 23
`
`not demonstrated that its modelers’ choices yielded an original product, or that more than one way
`of representing the objects would have been acceptable. Instead, Planner 5D’s Objects are near
`exact replicas of real-world objects. See Dkts. 223-3 & 224-1.
`Having found that the “mesh” choices are insufficient to establish creativity, I evaluate the
`choices related to the “material.” Planner 5D concedes that none of the creative choices are
`apparent from the thumbnails provided as exhibits. Instead, the side-by-side thumbnails of
`Planner 5D’s Objects and the original products show a perfect match. The color, transparency,
`and texture of the Objects does not appear to be a creative choice, but rather the closest replica of
`the original object that can be produced in the program.
`As an example of the misleading nature of the two-dimensional thumbnails, plaintiff
`submits the above representation of a table, which was represented in two dimensions in the
`
`catalog, but in three dimensions by Planner 5D’s modeler. The modeler had to decide what the
`bottom of the table should look like, without assistance from the version in the third-party catalog.
`This certainly represents a creative choice. The creativity required by the threshold
`copyrightability requirement is low, and this extrapolation easily satisfies that requirement. It
`need only possess “some creative spark, ‘no matter how crude, humble or obvious’ it might be.”
`Ets–Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1076 (9th Cir.2000) (quoting Feist Publ’n, 499
`U.S. at 345, 111 S.Ct. 1282). Even if this partic