(CN) — Two brothers and two sisters will continue their hand-balancing act copyright infringement battle in trial court after a Ninth Circuit panel remanded the case for further proceedings.
Marco Paulo Rodrigues Lorador and Paulo Renato Rodrigues Lorador performed for Cirque du Soleil for 23 years under the stage name the Alexis Brothers. Their routine, "Peace and Discord,” was registered as choreography with the U.S. Copyright Office in 2003.
Cirque obtained a license for the work from the Alexis Brothers and the routine was performed as part of the Cirque show until the onset of Covid-19, which brought the curtain down on performances in early 2020.
When performances resumed in 2021, Cirque hired Michelle and Nicole Kolev, performing under the stage name Kolev Sisters, in their own hand-balancing act. The Alexis brothers had lost their jobs.
In the original complaint filed in federal court, the Alexis Brothers claim that on July 27, 2021, the Kolev Sisters “debuted in the show, occupying the portion of the show that the Alexis Brothers previously occupied, and performing what was substantially a copy of the work.”
The Alexis Brothers sued the Kolev Sisters, Cirque du Soleil and Las Vegas resort Treasure Island claiming copyright infringement and moved for a preliminary injunction, which a federal judge granted in part. Both parties appealed to the Ninth Circuit.
In an unpublished per curiam memorandum issued Tuesday, a three-judge Ninth Circuit panel said the trial court should have determined whether the similarities in the works of choreography are protected by copyright.
“Absent direct evidence of copying, proof of infringement involves fact-based showings that the defendant had access to the plaintiff’s work and that the two works are substantially similar.”
The panel noted the lower court had correctly determined the Alexis Brothers had a valid copyright and the Kolev Sisters had access to the brothers' work. But the court had to go to the second step of the extrinsic test and did not.
"Because the district court must disregard any similarities that contain unprotectable material, 'it is essential to distinguish between the protected and unprotected material in a plaintiff’s work,'" the panel wrote. "The district court simply claimed that 'Peace and Discord' was 'a sequence of uncopyrightable elements that are already in the public domain.' It did not address what the 'uncopyrightable elements' were, which similar elements were protectable, or why the elements were protectable and others were not.
"Simply put, the district court did not perform an analysis based on sufficient 'external, objective criteria' to determine which aspects of the routine were protectable by copyright. And given the highly technical nature of the case, the district court could not have done so without the benefit of expert testimony," the panel wrote.
U.S. Circuit judges Lawrence VanDyke, a Donald Trump appointee, and Gabriel Sanchez, a President Joe Biden appointee, and U.S. District Judge Stephen Murphy III, a George W. Bush appointee sitting by designation from the Eastern District of Michigan, vacated the order on preliminary injunction and remanded for further proceedings.
“We recognize the challenges inherent in determining whether hand-balancing routines are protectable by copyright. And we recognize the court’s thorough analysis of the evidence," the panel wrote. "But that analysis fell short of the 'analytical dissection' required for the extrinsic test."
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