                                                                           FILED
                            NOT FOR PUBLICATION                             JAN 26 2012

                                                                        MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



CENTURY TILE, INC., a California                 No. 10-56084
corporation, DBA Malaga Cove Tile, DBA
Stone & Pewter Accents; CARL                     D.C. No. 2:08-cv-01993-GW-PLA
STEADLY, an individual,

              Plaintiffs - Appellants,           MEMORANDUM *

  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.



CENTURY TILE, INC., a California                 No. 10-56389
corporation, DBA Malaga Cove Tile, DBA
Stone & Pewter Accents; CARL
STEADLY, an individual,                          D.C. No. 2:08-cv-01993-GW-PLA

              Plaintiffs - Appellees,

  v.



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
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.

          **
            The Honorable Jack Zouhary, District Judge for the U.S. District
Court for Northern Ohio, sitting by designation.

                                          2
      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




                                           3
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.


                                             4
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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