The US Court of Appeals for the Ninth Circuit affirmed that it is permissible to infer copying, even absent evidence of access, where the accused design and the copyright are so overwhelmingly identical that the possibility of independent creation is precluded. Unicolors, Inc. v. Urban Outfitters, Inc., Case No. 15-55507 (9th Cir., Apr. 3, 2017) (Orrick, J, sitting by designation).

Unicolors designs and sells fabrics in the apparel markets. In 2008, Unicolors purchased the rights to an artwork (source artwork), made minor alterations to the design so that it could be printed onto bolts of fabric, and renamed the derivative design as PE1130 (subject design). Later, Unicolors registered its "Flower 2008" collection, which included the subject design, with the US Copyright Office. Unicolors went on to sell approximately 14,000 yards of fabric bearing the subject design between 2008 and 2011.

In late 2010, Urban Outfitters developed a women's dress with a fabric design similar to the subject design. Two years later, Unicolors sent Urban Outfitters a cease-and-desist letter, then filed a copyright infringement suit.

The district court granted Unicolors' motion for summary judgment that Urban Outfitters infringed the copyrighted fabric designs, and, after a two-day jury trial, Urban Outfitters' infringement was found to be willful. Urban Outfitters appealed, challenging the district court's application of the subjective "intrinsic test," its finding of a valid registered copyright and the jury's verdict.

The intrinsic test is the second part of a two-part analysis (extrinsic test being the first inquiry) to determine whether particular works are substantially similar or strikingly similar. Unlike the extrinsic test, which requires an overlap of concrete elements in the designs based on objective criteria, the intrinsic test is subjective. It asks "whether the ordinary, reasonable person would find 'the total concept and feel of the works' to be substantially similar." 

At summary judgment, Unicolors conceded that its evidence regarding access was limited and that it could not link its design to Urban Outfitters other than appealing to the wide dissemination of its fabric design prior to Urban Outfitters' release of the accused dress design. Finding this argument insufficient, the district court focused on Unicolors' alternative argument that the designs were so strikingly similar that such similarity could only be attributed to copying. Urban Outfitters appealed. 

On appeal, the Ninth Circuit agreed with the district court's approach, rejecting Urban Outfitters' assertion that even if a court finds striking similarity, it cannot find "copying" without some evidence of access. 

The works were found to be virtually identical and, given their complexity and the striking similarity between them, the Court explained it was "unnecessary to consider the possibility [that the accused dress] was the product of independent creation, coincidence, a prior common source, or any source other than copying." As the Court further explained, summary judgment for plaintiff was appropriate where the "works are so overwhelmingly identical that the possibility of independent creation is precluded." Indeed, "[i]f courts were never permitted to grant summary judgment in favor of plaintiffs on the issue of copying, even for identical works, the effect of Rule 56 would be substantially diluted."

The Ninth Circuit also disagreed with Urban Outfitters' assertion that there were disputed facts as to whether the subject design was included in Unicolors' Flowers 2008 collection registration. Even though Unicolors properly submitted a copy of PE1130 (the subject design), Urban Outfitters questioned whether the subject design was included, because the name PE1130 was not on the certificate and because the source artwork was listed as excluded material. However, under Alaska Stock ( IP Update, Vol. 17, No. 4), the Court noted that omitting the title of a work in a registration collection does not bar copyright protection as long as Unicolors had rights to the component works. Further, the fact that the source artwork was listed as excluded material was of no import because the infringement action was based on the derivative work, not the source artwork. Indeed, "good faith mistakes do not invalidate registration of a derivative work." 

Finally, the Ninth Circuit concluded that there was substantial evidence to support the jury's verdict of willful copyright infringement.

Who Wore It Best? Virtually Identical Fabric Design Supports Inference Of Copying

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