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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