April 19, 2012
Intellectual Property Alerts

Fabric Design Copyrights Tested in Ninth Circuit
by Cyrus Wadia

Earlier this month, the Ninth Circuit Court of Appeals issued a rare non-tech related copyright infringement decision regarding fabric designs. With a detailed analysis of the basic copyright infringement elements of access and substantial similarity as applied to textiles, the Ninth Circuit sent a dispute back to district court for further proceedings.  L.A. Printex Industries, Inc. v. Aeropostale, Inc., __ F.3d __ (9th Cir. April 9, 2012).

Fabric wholesaler L.A. Printex owns the registered copyright to a textile design depicting a "tossed" pattern of flower and leaf clusters (the "C30020").  In 2009, L.A. Printex filed a copyright infringement action against apparel retailer Aeropostale and its L.A.-based vendor for the unauthorized sale of shirts bearing a design similar to C30020.  The district court dismissed the case finding (1) bare possibility of defendants viewing and copying C30020 and only (2) a "surface nature" design similarity with critical differences.

Proving copyright infringement requires showing (1) infringer's access to the owner's work and (2) substantial similarity between the works.  Contrary to the district court’s decision, the Ninth Circuit found a reasonable possibility that the vendor defendant had access to the design because C30020 was widely disseminated in the L.A. fabric industry (50,000 yards of fabric bearing the design were sold during a four-year period before the alleged infringement).  Likewise, the Ninth Circuit found a genuine dispute of material fact on substantial similarity, noting enough likenesses such as "similar spatial combinations on a grid of similar scale and layout" and "similarities in color arrangements… probative of copying." 

The Ninth Circuit also addressed the procedural of whether a copyright registration error invalidates exclusive rights.  During the proceedings, L.A. Printex discovered its certificate of registration was erroneous because it included published and unpublished designs, so promptly filed a supplemental registration.  The Ninth Circuit concluded a registration error does not bar copyright enforcement action if there is no intent to defraud the Copyright Office.

**Mr. Wadia recognizes Jong Cho's assistance in the preparation of this alert.

Back to Alerts