USCA Ninth Circuit, April 9, 2012

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  • Ninth Circuit reverses district court’s grant of summary judgment in copyright action alleging that Aeropostale infringed upon registered textile design, finding genuine disputes of material fact on access and substantial similarity.

Plaintiff L.A. Printex Industries, Inc., a fabric printing company, registered a copyright in Small Flower Group A, a group of textile designs that includes a floral designed called C30020. Over a four-year period, plaintiff sold more than 50,000 yards of fabric bearing C30020 to its customers, who were fabric converters. After plaintiff discovered shirts bearing the Aeropostale trademark and a design similar to C30020, plaintiff sued Aeropostale for infringement of its copyright. Plaintiff then became aware that its copyright registration for Small Flower Group A contained an error – two of the five designs, but not C30020, had been published before the date of registration. The Copyright Office subsequently approved plaintiff’s application for supplementary registration to remove the two previously published designs from Small Flower Group A. The district court granted summary judgment to defendants, holding that no genuine issue of material fact existed as to either defendant’s access to C30020 or substantial similarity between the allegedly infringing design on the Aeropostale shirts and C30020. On appeal, the Ninth Circuit reversed, finding that a reasonable jury could conclude that C30020 was widely disseminated in the fabric industry and that the two works were substantially similar.

To establish copying of constituent elements of the work that are original, in support of a copyright claim, plaintiff must show that the defendant had access to plaintiff’s work and that the two works are substantially similar. The Ninth Circuit found that the record was sufficient to create a genuine issue on access, including sales records showing that plaintiff sold more than 50,000 yards of C30020 before Aeropostale’s orders for the allegedly infringing shirts. After reviewing varying levels of distribution deemed to constitute “widespread dissemination” in other industries, the court found that, based on the sale of 50,000 yards of the plaintiff’s fabric design, “a reasonable jury could find that C30020 was widely disseminated in the Los Angeles-area fabric industry, hence that there was a ‘reasonable possibility’ that defendants had an opportunity to view and copy L.A. Printex’s design.” The court emphasized that the parties operate in the same industry, in the same city, and that the dissemination of C30020 occurred over a four-year period immediately preceding defendant’s alleged infringement.

Noting that determining whether the two works were substantially similar requires a two-part test, an extrinsic test, focusing on the articulable similarities between the two works, and an intrinsic test, focusing on whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works, the court found that, under the extrinsic test, objective similarities in the expressive elements of defendant’s design and C30020 presented a genuine dispute of material fact. Although C30030’s repeating pattern of bouquets of flowers and three-leaf branches is not protectible, acknowledged the court, plaintiff’s original selection, coordination, and arrangement of these elements is protectible. In addition, the court’s comparison of defendant’s allegedly infringing design and C30020 revealed objective similarities in protectible elements such as arrangement, color, patterns, shape, and number of flower petals. In light of these similarities, the court found that the differences noted by the district court did not compel a grant of summary judgment, but rather supported the finding of a genuine dispute of material fact on substantial similarity. Since it concluded that the competing designs presented a triable issue of fact under the extrinsic test, the court held that an application of the intrinsic test –a subjective and fact-oriented standard – would be improper at the summary judgment stage.

The court also rejected defendant’s argument the copyright registration for C30020 was invalid because Small Flower Group A was registered as an unpublished collection but included two designs that has been previously published. Although it acknowledged that the registration contained an error, the court concluded that the error neither invalidated the registration nor rendered the certificate of registration incapable of supporting an infringement action because no evidence existed that plaintiff knew that the two designs had been published at the time it submitted its application for copyright registration, or that it intended to defraud the Copyright office.