CENTURY TILE, INC., a California corporation, DBA Malaga Cove Tile, DBA Stone &… v. Hirsch Glass Company, a New Jersey corporation

This disposition is not appropriate for publication and is not precedent*
except as provided by 9th Cir. R. 36-3.
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
CENTURY TILE, INC., a California
corporation, DBA Malaga Cove Tile, DBA
Stone & Pewter Accents; CARL
STEADLY, an individual,
Plaintiffs - Appellants,
v.
HIRSCH GLASS COMPANY, a New
Jersey corporation; PARAGON
INDUSTRIES, INC., a California
corporation, DBA Bedrosian Tile &
Marble; ALYSEDWARDS TILE &
STONE, an unknown California entity,
Defendants - Appellees.
No. 10-56084
D.C. No. 2:08-cv-01993-GW-PLA
MEMORANDUM*
CENTURY TILE, INC., a California
corporation, DBA Malaga Cove Tile, DBA
Stone & Pewter Accents; CARL
STEADLY, an individual,
Plaintiffs - Appellees,
v.
No. 10-56389
D.C. No. 2:08-cv-01993-GW-PLA
FILED
JAN 26 2012
MOLLY C. DWYER, CLERK
U .S. C OU R T OF APPE ALS

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The Honorable Jack Zouhary, District Judge for the U.S. District**
Court for Northern Ohio, sitting by designation.
2
HIRSCH GLASS COMPANY, a New
Jersey corporation; PARAGON
INDUSTRIES, INC., a California
corporation, DBA Bedrosian Tile &
Marble; ALYSEDWARDS TILE &
STONE, an unknown California entity,
Defendants - Appellants.
Appeal from the United States District Court
for the Central District of California
George H. Wu, District Judge, Presiding
Argued and Submitted January 13, 2012
Pasadena, California
Before: W. FLETCHER and FISHER, Circuit Judges, and ZOUHARY,
District Judge.**
Plaintiffs-Appellants are Carl Steadly, who owns the copyrights at issue, and
his exclusive licensee Century Tile (collectively “Steadly”). Defendants-Appellees
are Hirsch Glass Co. and Paragon Industries (collectively “Hirsch”). Steadly and
Hirsch compete in the design, manufacture, and sale of glass tile mosaics. Steadly
sued Hirsch to enforce several copyrights to glass tile mosaics that he registered
with the Copyright Office. He also alleged a trademark claim under the Lanham
Act.

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The district court entered judgment in favor of Hirsch on the trademark and
copyright claims, but it denied Hirsch’s motion for attorney’s fees. Steadly
appeals the judgment on the copyright claim. Hirsch cross-appeals the denial of
attorney’s fees.
Steadly claims that the mosaic designs possess copyrightable “color
expressions” consisting of color blends, color streaking, and the appearance of
random arrangements to evoke a “natural effect.” Hirsch contends that any
copyright protection of Steadly’s designs is thin and so requires “virtual identity”
to raise a claim of infringement.
We agree with the district court’s analysis of the copyright claim. First,
Steadly enjoys a presumption of validity because he filed suit within five years of
registering his copyright. Second, Steadly’s designs substantially comprise
uncopyrightable elements (including coloring, color blends, streaking, and the
appearance of randomness). Thus, protection over his designs is thin. See Satava
v. Lowry, 323 F.3d 805, 811-13 (9th Cir. 2003) (holding copyright protection to a
work is thin if originality expressed in combination of uncopyrightable elements is
not sufficiently substantial). Third, Hirsch’s designs are not “virtually identical” to
Steadly’s because the streaking effect, color blends, and appearance of randomness

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in Hirsch’s designs are different for the persuasive reasons given by the district
court.
We reject Hirsch’s cross-appeal of the attorney’s fees orders. We review a
district court’s order on attorney’s fees under the Copyright and Lanham Acts for
abuse of discretion. See Ets-Hokin v. Skyy Spirits Inc., 323 F.3d 763, 766 (9th Cir.
2003) (Copyright Act); Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210,
1216 (9th Cir. 2003) (Lanham Act).
As to the attorney’s fees order under the Copyright Act, the district court
correctly identified the multifactor test that we have endorsed and reasonably
applied it. See, e.g., Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1120 (9th Cir.
2007); Ets-Hokin, 323 F.3d at 766. Contrary to Hirsch’s contention, the district
court considered the fact that Steadly enjoyed a presumption of validity under the
Copyright Act as one among many reasons to deny attorney’s fees.
As to the attorney’s fees order under the Lanham Act, we note the “uphill
battle” that Hirsch faces on appeal. Gracie v. Gracie, 217 F.3d 1060, 1071 (9th
Cir. 2000). “First, the remedy is available only in ‘exceptional cases.’ Second, the
statute provides that the court ‘may’ award fees; it does not require them. Finally,
the Senate Report expressly commends this decision to the discretion of the [trial]
court.” Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1134 (9th Cir.

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1986). The district court acted within its discretion in denying attorney’s fees.
Steadly’s claim, though meritless, was not vexatious, unjustifiable, or based on
false evidence. Compare Love v. Associated Newspapers, Ltd., 611 F.3d 601, 615-
16 (9th Cir. 2010); Lahoti v. Vericheck, Inc., 636 F.3d 501, 510-11 (9th Cir. 2011).
AFFIRMED.

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