Recent Ninth Circuit Opinion Demonstrates the Difficulty for Fashion Wholesalers and Retailers Accused of Copyright Infringement to Dismiss Cases Before Trial

March 12, 2014

(c) 2012.  Shanen R. Prout.  All rights reserved.

On April 9, 2012, the United States Court of Appeals for the Ninth Circuit issued a decision in L.A. Printex Industries, Inc. v. Aeropostale, Inc., Case No. 10-56187, holding that the defendants Aeropostale, Inc. and Ms. Bubbles, Inc. were not entitled to summary judgment that they did not infringe plaintiff L.A. Printex’s copyright in a single floral fabric design.  This case highlights the importance of copyright chain of title and record keeping related to the acquisition of rights and apparel sales.

L.A. Printex is a Los Angeles apparel fabric designer and printer.  According to Bloomberg.com, it has filed approximately 200 copyright infringement lawsuits over the last decade.  Ms. Bubbles is a Los Angeles wholesaler of men and women’s apparel.  Aeropostale is a retailer that purchases apparel from Ms. Bubbles and other vendors.  In 2002, an L.A. Printex designer created an original floral design called C30020, and L.A. Printex registered the copyright in C30020 with the U.S. Copyright Office.  Between October of 2002 and May of 2006, L.A. Printex sold a significant amount of fabric bearing C30020 to its customers, who are fabric converters.

In 2008, L.A. Printex discovered Aeropostale shirts bearing a design similar to C30020.  Aeropostale placed orders with Ms. Bubbles for the allegedly infringing shirts in June of 2006 and sold them between September and December of 2006.  The tags on the shirts said, “Made in China.”  Ms. Bubbles, however, had no understanding or information about who actually created the design resembling C30020.

On April 8, 2009, L.A. Printex sued Aeropostale and Ms. Bubbles for infringement of its copyright in C30020.

L.A. Printex and the defendants later filed cross-motions for summary judgment.  The district court granted the defendants’ motion for summary judgment and denied L.A. Printex’s motion, holding that there was no genuine issue of material fact as to (1) defendants’ access to C30020 or (2) substantial similarity between the allegedly infringing design on the Aeropostale shirts and C30020.  L.A. Printex appealed.  The Ninth Circuit reversed and remanded the case back to the Central District of California, finding that court had erred when it ruled there were no genuine issues of material fact.

To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the copyrighted work that are original.  Because plaintiffs are rarely able to prove that a defendant directly copied their work, a plaintiff can establish copying by showing (1) that the defendant had “access” to the plaintiff’s work and (2) that the two works at issue are “substantially similar.”  Proof of access requires that the defendant had an “opportunity” to view, or there was a “reasonable possibility” that the defendant viewed, the plaintiff’s work.  Absent direct evidence of access, a plaintiff can prove access using circumstantial evidence of 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.

In the Aeropostale case, the plaintiff kept a detailed record of each item of its designed fabric sold before Aeropostale even sold a single shirt bearing the allegedly infringing design.  These sales amounted to more than 50,000 yards of C30020 fabric—an amount the Ninth Circuit found to be significant for purposes of finding a legitimate dispute existed whether the defendants had “access” to L.A. Printex’s design.  The Ninth Circuit found that summary judgment was inappropriate because the plaintiff’s sale of such a sizeable amount of fabric established that the fabric was “widely disseminated,” and a reasonable jury could conclude that such extensive sales were circumstantial evidence of a “reasonable possibility” that the defendants had access to L.A. Printex’s copyrighted design, thus affording the defendants the opportunity to unlawfully copy it.

Moreover, the Ninth Circuit again repeated that it largely disfavors using summary judgment to address questions of substantial similarity in copyright cases.  Courts are far more inclined to allow juries to decide whether two competing works are “substantially similar.”  As the court noted, “where reasonable minds could differ on the issue of substantial similarity, summary judgment is improper.”  Because the court found that L.A. Printex used original selection and arrangement of various floral design elements, copyright protection in its stylized fabric design was afforded “broad” protection.  And, where a plaintiff’s work is entitled to broad copyright protection, it does not need to show that the defendant’s work is “virtually identical” to prove copying.

Further, to prove infringement, the plaintiff only needs to show that the defendant appropriated a substantial portion of plaintiff’s work, not that the defendant copied the entirety of plaintiff’s work.  According to the Ninth Circuit, “a subjective evaluation of the expressive similarities in two fabric designs . . . intended for public consumptions as clothing apparel, is best suited for [decision at trial].”

While the court’s opinion in Aeropostale largely reiterates established copyright law showing the difficulty in obtaining dismissal of infringement claims before trial, this case has an important takeaway for the fashion industry.  If a defendant cannot prove that there was no reasonable possibility that it viewed the plaintiff’s copyrighted work, and other issues are resolved in the plaintiff’s favor, courts will almost certainly allow the case to go to trial.

In Aeropostale, denial of summary judgment was highly likely because the defendants did not know from whom or when they acquired their allegedly infringing fabric design, and they could not show that they acquired their design through original in-house creation or a legitimate assignment or license.  When the plaintiff presented evidence that its design was “widely disseminated,” those facts were sufficient to establish a reasonable possibility that the defendants “accessed” plaintiff’s work.  This was enough to ensure that the case would go to trial, or settle on terms likely more favorable to the plaintiff.  And, when copyright infringement cases go to trial, defendants subject themselves to a jury’s decision whether the two works at issue are substantially similar.

We encourage you to contact us if you would like more information about how copyright law applies to fashion designs.

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