Highlighting the significant burden imposed upon a defendant who seeks to invalidate a plaintiff’s copyright, the U.S. Court of Appeals for the Ninth Circuit reversed a district court’s sua sponte dismissal of a copyright infringement case, despite defendants offering multiple arguments towards the invalidity of the plaintiff’s copyright. United Fabrics Int’l, Inc. v. C&J Wear, Inc., Case No. 09-56499 (9th Cir., Jan. 26, 2011) (Wallace, J.)
The plaintiff owns a copyright registration for a collection of fabric designs. The plaintiff contended that it had purchased a fabric design from an Italian company, then modified it and registered it as part of the collection. The plaintiff sued the defendants for copyright infringement, alleging infringement of that design. At the summary judgment stage, the district court dismissed the case sua sponte, concluding that the plaintiff lacked standing by failing to establish ownership of a valid copyright. The district court determined that the evidence of transfer of the source artwork from the Italian company to the plaintiff was insufficient to establish ownership of the underlying design.
The 9th Circuit reversed, finding that the defendants did not sufficiently set forth facts in the record that rebut the presumption of validity to which the plaintiff’s copyright was entitled. The defendants had alleged several reasons why the plaintiff’s copyright registration was invalid. First, at oral argument, the defendants’ counsel alleged that the copyright transfer was invalid and that formalities of the Copyright Act were not followed during registration. The defendants’ counsel pointed to comments from deposition testimony of the plaintiff’s employee that supported those arguments. In response, the court admonished that, “United did not have to produce any evidence. As the copyright claimant, United is presumed to own a valid copyright, 17 U.S.C. § 410(c), and the facts stated therein, including the chain of title in the source artwork, are entitled to the presumption of truth.” The court similarly dismissed the defendants’ arguments that the plaintiff’s copyright was invalid because the plaintiff failed to deposit a copy of the work with the Copyright Office and because the plaintiff failed to disclose that the work was based upon a preexisting work.
The court acknowledged the defendants’ multiple arguments towards the invalidity of the plaintiff’s copyright, but ultimately determined that dismissal was improper because the defendants “skipped a step,” in not sufficiently supporting their allegations by citations to evidence in the case. “Although such evidence [sufficient to rebut the presumption of validity of the plaintiff’s copyright] may be present in the lengthy and extensive record,” the court stated, “it is not our place to find it, or to provide an argument on behalf of [the defendants] as to how that evidence rebuts the presumption of validity.”
Practice Note: A defendant in a copyright infringement action may successfully rebut the presumption of validity afforded by a copyright registration certificate, but must take care not to “skip a step”—defendants must support its invalidity allegations by citing (in its briefs) to facts supporting its arguments.