972 F.2d 1031 (9th Cir. 1992), 91-15142, North Coast Industries v. Jason Maxwell, Inc.

Docket Nº:91-15142.
Citation:972 F.2d 1031
Party Name:23 U.S.P.Q.2d 1788 NORTH COAST INDUSTRIES, Plaintiff-Appellant, v. JASON MAXWELL, INC., Defendant-Appellee.
Case Date:August 06, 1992
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 1031

972 F.2d 1031 (9th Cir. 1992)

23 U.S.P.Q.2d 1788

NORTH COAST INDUSTRIES, Plaintiff-Appellant,


JASON MAXWELL, INC., Defendant-Appellee.

No. 91-15142.

United States Court of Appeals, Ninth Circuit

August 6, 1992

Argued and Submitted Feb. 14, 1992.

Page 1032

H. Michael Brucker, Steven M. Kipperman Law Corp., Oakland, Cal., for plaintiff-appellant.

Michael Delikat, Baer, Marks & Upham, New York City, and Peter A. Wald, Heller, Ehrman, White & McAuliffe, San Francisco, Cal., for defendant-appellee.

Appeal from the United States District Court for the Northern District of California.

Before: SCHROEDER, REINHARDT, and KLEINFELD, Circuit Judges.

SCHROEDER, Circuit Judge:

This is an appeal from an entry of summary judgment in favor of the defendant in a copyright infringement action. The dispute is between two competing manufacturers of women's clothing. Plaintiff-appellant North Coast Industries has a copyright on the design in question. The design is a geometric arrangement of color blocks banded in heavy lines, used by the plaintiff on the front of pullover tops. Plaintiff filed this action for copyright infringement, under 17 U.S.C. § 501 (1988), against the defendant-appellee Jason Maxwell, Inc., after the defendant began selling tops with a very similar geometric design. North Coast's design is designated "Style 7114" and was created by a North Coast designer who was undeniably influenced by the work of the great twentieth century painter Piet Mondrian. In the fashion industry, the work of Mondrian is still principally associated with the French fashion designer Yves St. Laurent who was the first to adapt the type of rectangular block designs used by Mondrian to women's clothing. The "Mondrian look," as it appeared in St. Laurent's dress designs, was widely popular in the 1960's.

Page 1033

To establish copyright infringement, the holder of the copyright must prove both valid ownership of the copyright and that there was infringement of that copyright by the alleged infringer, who in this case is the defendant Jason Maxwell. If the plaintiff copyright holder survives the first step, i.e., it establishes that it owns a valid copyright, then the plaintiff must establish infringement by showing both access to its copyrighted material on the part of the alleged infringer and substantial similarity between the copyrighted work and the alleged infringing work. See generally Sid & Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.1977).

In this case, the district court ruled that the plaintiff foundered on the first requirement in that the plaintiff had failed to establish that it had a valid copyright. The district court ruled on summary judgment that design 7114 had been copied from the work of Mondrian and St. Laurent because in its view the design contained no non-trivial differences from the masters' work and, more specifically, from a design of St. Laurent that had been featured prominently in a recent fashion magazine display. For ease of understanding, we have reproduced in the appendix a sketch of the St. Laurent design (Sketch A), the North Coast design 7114 (Sketch B), and the allegedly infringing design of Jason Maxwell, Inc., (Sketch C).

Our review of the district court's decision must therefore focus on whether design 7114 was copyrightable. Under our copyright law, the registration of the copyright certificate itself establishes a prima facie presumption of the validity of the copyright in a judicial proceeding if, as here, the judicial proceeding is commenced within five years of the copyright's first publication. 17 U.S.C. § 410(c); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085-86 (9th Cir.1989). However, that presumption may be rebutted by a showing on the part of the defendant that the plaintiff's work is not original. Originality is the indispensable prerequisite for copyrightability. Kamar Intern., Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1061 (9th Cir.1981). The originality requirement, however, does not mean that for valid copyright protection, the copyright must represent something entirely new under the sun. As we explained in Sid & Marty Krofft Television:

The work offered for registration need not be new, but only original, i.e., the product of the registrant. [citations omitted]. As stated in Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102-03 (2d Cir.1951):

"Original" in reference to a copyright work means that the particular work "owes its origin" to the "author." No large measure of novelty is required.

* * * All that is needed to satisfy both the Constitution and the statute is that the "author" contributed something more than a "merely trivial" variation, something recognizably "his own." Originality in this context "means little more than a prohibition of actual copying." No matter how poor artistically the "author's" addition, it is enough if it be his own (citations omitted).

562 F.2d 1157, 1163 n. 5 (quotations omitted).

The test for substantial similarity is whether the difference between the copyrighted work and the preexisting work is non-trivial. The presumption of validity of copyright registration can be rebutted by a showing on the part of the defendant that the plaintiff's work is not original...

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