by Irene Rajagopal, attorney at PAPER Law Office PLLC

The Ninth Circuit Court of Appeal recently confirmed that a summary judgment on the infringement of fabric design, which means the in some rare situations, the district court may have discretion on the inference of copying without a jury trial.

In Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 992 (9th Cir. 2017), the Ninth Circuit affirmed the Central District Court’s decision on the copyright infringement. Unicolors, a Los Angeles based fabric designer, brought a copyright claim again Urban Outfitters, Inc. and Century 21 Department Stores, LLC (“Urban Outfitters”).

Unicolors created the fabric design at issue (“Subject Design”) from an original art design created by an art studio in New York, from whom Unicolors obtained the license to use the original design and create derivative works. Unicolors completed the copyright registration of such derivative works -- the Subject Design.

Urban Outfitters maintains a collection of thousands of fabric swatches in its studio. Its designers use those swatches to design apparels, including the dress alleged to copy Unicolor's Subject Design.

The district court found that the Subject Design and Urban Outfitters’ design are overwhelmingly identical. “Looking at two designs as a whole, the arrangement, shapes and details of all the floral or feather motifs are almost exactly the same. The colors are different, and only the Subject Design has white parts outlined in a different color, but otherwise the arrangement, shape, and details of all the floral or feather motifs appear to be almost exactly the same.”

The Ninth Circuit agreed with the district court that the designs are “overwhelmingly identical that precludes the possibility of independent creation”. Although usually the Ninth Circuit adopts two-part analysis to establish the inference of copying -- the extrinsic test and the intrinsic test, the Ninth Circuit confirmed that a summary judgment is appropriate in some rare situations when competing works are overwhelmingly identical.

By distinguishing L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 852 (9th Cir. 2012), another fashion design's copyright case where the Ninth Circuit Court favored the jury trial, the Ninth Circuit clarified that it is still possible to allow a summary judgment:

Where the extrinsic similarity is so strong that the works are near duplicates save for superficial differences, the court may properly conclude that no reasonable jury could find that the works are not substantially similar in their overall concept and feel. In such a case, the court need not delve into a complex subjective analysis of the works to assess substantial similarity and does not risk supplanting the jury's subjective interpretation with its own. See Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 987 (9th Cir. 2017)

When deciding the issue of Urban Outfitters’ willfulness, the Ninth Circuit rejected Urban Outfitters’ argument that it was impossible for Urban to define and locate the copyright status of the fabric swatch. The Circuit Court held that Urban’s refusing “as a matter of policy to even investigate or attempt to determine” the copyright constituted the reckless or willful blindness to fabric designer’s copyright. The Circuit Court made it clear that,

[A] finding of willful infringement does not require a showing of actual knowledge; a showing of recklessness or willful blindness is sufficient. See e.g., Wash. Shoe Co., 704 F.3d at 674. See Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 992 (9th Cir. 2017)

From this case we can see that, while the courts tend to avoid making any subject determination on the similarity of the works, when such similarity becomes "overwhelmingly identical", the courts will go ahead and give a summary judgment on the copyright infringement without wasting the judicial resources to entertain a jury trial.

About the author: Irene Rajagopal is an international copyright and business attorney. Her office is located in Bellevue, Washington State. She can be reached at irene@irenerajlaw.com. Please feel free to click here to visit the website of PAPER Law Office PLLC (http://www.paperlawoffice.com).

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by Irene Rajagopal, attorney at PAPER Law Office

Can the fashion design of colors, lines, chevrons be protected by copyright laws to prevent copycats? The answer is yes, if the artistic feature of the design can be separated from the useful article and can exist independently as a protectable pictorial, graphic, or sculptural work.

U.S. Supreme Court's 6-2 decision in Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, 2017 WL 1066261, decided on March 22, 2017, may become a landmark case for fashion and industrial design. The Court clarified the test to separately identify artistic elements from useful articles. Therefore, if the artistic elements in a useful articles can pass the test, such artistic elements are eligible for copyright protection.

1. The Court's Holding

Here is the holding from the case:

"[A]n artistic feature of the design of a useful article is eligible for copyright protection if the feature (1)can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imaginedseparately from the useful article".

2. Case Analysis

In Star Athletica, LLC v. Varsity Brands, Inc., Varsity Brands designs and sells cheerleadering uniforms. They have obtained over 200 copyright registration of their designs, which combinations, positionings, andarrangements of elements” that include 'chevrons . . . ,lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes'". Star Athletica also sells cheerleading uniforms. Varsity Brand sued for the copyright infringement of the design.

Section 101 Copyright Act offers the copyright protection on the artistic elements of useful articles, as a pictorial, graphic or sculptural work, only if such features "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article".

There are two requirements to meet: (1) separate identification; and (2) independent-existence. The challenging part is the latter one -- to decide whether the artistic elements can independently exist. The Court ruled that:" ...[T]he feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it isimagined apart from the useful article." The Court concluded that; "a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial,graphic, or sculptural work either on its own or when fixed in some other tangible medium."

In this case, the majority hold that the artistic elements, the design on the cheerleading uniforms, not the design of the cheerleading uniforms itself, can be separated and independently exist on a two dimension medium, like a canvas.

3. Impact on Industrial Design

The distinction between the artistic elements and the industrial design is usually unclear. This landmark case helps to clarify the judicial standard on the copyright protection on the artistic elements in the design, and will impact the fashion design.

Prior to this case, the industrial design usually seek for protection through trade dress or design patent. Fashion industry, at its fast pace, is vulnerable for copycats. The copyright protection in its nature fit for the fashion industry, because copyright protection does not require any lengthy pre-approval from the authorities like patent. However, before this case, the copyright protection did not do much favor for fashion design, because the copyright law protects artistic expression as "pictorial, graphic or sculptural work", but not the useful article. As the Court noted, "The line between art and industrial design, however, is often difficult to draw."

This case will definitely clarify the copyright protection standard for fashion design and other industrial design. High street fashion brands should be more cautious for getting "inspiration" from other brands' design.

There is an important caveat in this case. The copyright protection of such feature is not unlimited. The Court clarified that the copyright protection only afford the Varsity Brands Inc. to "prohibit the reproduction of the surface design", not prohibit "any person from manufacturing a cheerleading uniform of identical shape, cut and dimensions".