Floral Fabric Design Copyright Infringement Case Remanded for Jury Trial by Ninth Circuit

L.A. Printex is a fabric printing company based in Los Angeles.  Ms. Bubbles is an L.A-based apparel wholesaler.  Aeropostale, a mall-based retailer, purchases apparel from Ms. Bubbles and other vendors.  L.A Printex sued Aeropostale and Ms. Bubbles for copyright infringement when it discovered that Aeropostale was selling shirts, under the Aeropostale trademark, displaying a design similar to L.A. Printex’s C30020 floral design.  Aeropostale ordered the shirts from Ms. Bubbles.

The district court granted the defendants’ motion for summary judgment, finding that there was no issue for trial on whether defendants had access to L.A. Printex’s design and whether the two designs were substantially similar.  L.A. Printex appealed and the Ninth Circuit held that L.A. Printex raised a genuine dispute of material fact on both access and substantial similarity.

The standard for the appellate court’s review of a district court’s summary judgment ruling is de novo.  This means that the appellate court disregards both the trial court’s findings of fact and the conclusions of law in deciding the case.  This standard of review is especially important to keep in mind in understanding the Ninth Circuit’s approach to L.A. Printex v. Aeropostale, because the Ninth Circuit independently examined and compared L.A. Printex’s design to the design used in Aeropostale’s clothing.  The Ninth Circuit’s independent examination and comparison of the two designs led it to reject both the factual findings and legal conclusions reached by the district court.

The plaintiff in a copyright infringement case must prove (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original.  L.A Printex received a certificate of registration for Small Flower Group A, which included C30020 and four other textile designs, in 2002.  Small Flower Group A was registered as a single unpublished work under 37 C.F.R. §202.3(b)(4)(i)(B).  After filing suit against Aeropostale and Ms. Bubbles, L.A. Printex discovered that two of the designs in Small Flower Group A were published before the 2002 registration.  L.A. Printex informed the Copyright Office of the mistake, filed a supplementary registration application and received a certificate of supplementary registration from the Copyright Office.

Direct evidence of copying is not available in most cases.  “[A] plaintiff can establish copying by showing (1) that the defendant had access to the plaintiff’s work and (2) that the two works are substantially similar.”  (Opinion pdf page 5). 

Access.  “Proof of access requires an opportunity to view or to copy plaintiff’s work.”  (Opinion pdf page 5).  When there is no direct evidence of access, a plaintiff can prove access through circumstantial evidence by showing “either (1) a chain of events linking the plaintiff’s work and the defendant’s access, or (2) widespread dissemination of the plaintiff’s work.”  (Opinion pdf page 6).  The Ninth Circuit ruled that L.A. Printex proved access by showing that C30020 was widely disseminated. 

To prove that C30020 was widely disseminated, L.A. Printex offered a declaration asserting that L.A. Printex “produced and sold thousands of yards of fabric bearing Design Number C30020 to numerous customers from 2002-2008.”  (Opinion pdf page 6).  The district court thought the declaration was vague, conclusory and insufficient to create a genuine issue on access.  Attached to the declaration as an exhibit was a printout of the sales of C30020 from January 1, 2002 through August 12, 2009.  The printout indicated that L.A. Printex sold more than 50,000 yards of C30020 before Aeropostale began ordering the allegedly infringing shirts.  The Ninth Circuit ruled that the sale of 50,000 yards of fabric with the C30020 design created a genuine dispute of material fact on whether C30020 was widely disseminated.

The Ninth Circuit indicated that the evidence required to show widespread dissemination varies from case to case.  Some of the variables are the length of time over which sales occur, the amount of sales and the geographic region in which the sales occur.  Dissemination can occur without sales, such as when a disc jockey plays a song over the radio.  In L.A Printex’s case, L.A. Printex and Ms. Bubbles both operated a business in the fabric industry in the same area of L.A. and most of the C30020 sales likely occurred in the L.A. area.  The court ruled that

A reasonable jury could find that C30020 was widely disseminated in the Los Angeles-area fabric industry, and hence that there was a reasonable possibility that Defendants had an opportunity to view and copy L.A. Printex’s design.

(Opinion pdf page 8).

Substantial similarity.  Substantial similarity is determined using a two-part test, the extrinsic test and the intrinsic test.  The extrinsic test is an objective comparison of specific expressive elements, focusing on the articulable similarities between the two works.  The intrinsic test is a subjective comparison, focusing on whether an ordinary, reasonable audience would think the works were substantially similar in their total concept and feel.

            Extrinsic test.  This test answers the question of whether the protectable elements in the two works are substantially similar.  The district court concluded that no reasonable juror could find that the C30020 design and the design on the defendants’ shirts were substantially similar.  The district court based its decision on these differences between the designs:  C30020’s flowers, stems and leaves were far more detailed; the flowers and leaves in C30020 are multiple shades of one color, whereas these features on the allegedly infringing shirts are one uniform color; C30020 has a lace-like flower pattern background, whereas the allegedly infringing shirts do not; and the flower, stem and leaf groupings on the allegedly infringing shirt are farther apart than they are on C30020.

The Ninth Circuit indicated that

Original selection, coordination, and arrangement of unprotectible elements may be protectable expression.

(Opinion pdf page 10).

The Ninth Circuit found that L.A. Printex’s original selection, coordination and arrangement of nonprotectible bouquet and branch elements is protectible. 

Because there is a wide range of expression for selecting, coordinating, and arranging floral elements in stylized fabric designs, copyright protection is broad and a work will infringe if it’s substantially similar to the copyrighted work.  That is, there are gazillions of ways to combine petals, buds, stems, leaves, and colors in floral designs on fabric, in contrast to the limited number of ways to, for example, paint a red bouncy ball on black canvas or make a lifelike glass-in-glass jellyfish sculpture.

(Opinion pdf page 13).

The Ninth Circuit determined that both designs have two types of small bouquets, arranged at similar angles, spaced similarly on a similar scale.  The color schemes are “markedly similar.”  While color variations by themselves are not copyrightable, “the similarities in color arrangements are probative of copying.”  (Opinion pdf page 13). 

The Ninth Circuit thought that the differences upon which the district court based its decision actually supported the opposite conclusion, that there is a genuine dispute of material fact on the substantial similarity issue.

Moreover, because we conclude that stylized fabric designs like C30020 are properly entitled to “broad” copyright protection, it is not necessary that Defendants’ design be virtually identical to infringe.

(Opinion pdf page 14). 

The Ninth Circuit further indicated that a defendant need not copy the plaintiff’s entire work to infringe, so that the fact that the design on the defendants’ shirts lacks the lace-like flower pattern background of C30020 does not preclude a finding of infringement by the jury.

Intrinsic test.  The Ninth Circuit declared that the intrinsic test for substantial similarity is not one to be decided by the court on summary judgment, but is left to the jury to determine at trial.

Valid copyright registration.  A plaintiff cannot pursue a copyright infringement action without a valid copyright registration. The defendants challenged the validity of L.A. Printex’s copyright registration of the C30020 design, arguing that the inclusion of two published works in the original registration of unpublished works invalidates the entire copyright registration.  The district court’s decision did not address this issue. 

The Ninth Circuit disagreed with the defendants.  A supplementary registration does not supersede an earlier registration, but only augments the earlier registration.  There was no evidence of fraud that could invalidate the original registration.  Once L.A Printex discovered the mistake, it corrected it.  The Copyright Office discussed the situation with L.A. Printex and issued a certificate of supplementary registration.  The Ninth Circuit ruled that the registration error does not prevent L.A. Printex from pursuing this infringement suit.

This case is L.A. Printex Industries, Inc. v. Aeropostale, Inc., No. 10-56187, Ninth Circuit Court of Appeals.

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