L.A. Printex Indus., Inc. v. Aeropostale, Inc.

• Decision Date: 13 June 2012
• Docket Number: No. 10–56187.,10–56187.
• Parties: L.A. PRINTEX INDUSTRIES, INC., a California Corporation, Plaintiff–counter–defendant–Appellant, v. AEROPOSTALE, INC., a New York Corporation; Ms. Bubbles, Inc., a California Corporation, Defendants–Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

102 U.S.P.Q.2d 1382

12 Cal. Daily Op. Serv. 3855

2012 Copr.L.Dec. P 30,236

2012 Daily Journal D.A.R. 4435

676 F.3d 841

L.A. PRINTEX INDUSTRIES, INC., a California Corporation, Plaintiff–counter–defendant–Appellant,

v.AEROPOSTALE, INC., a New York Corporation; Ms. Bubbles, Inc., a California Corporation, Defendants–Appellees.

No. 10–56187.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Dec. 5, 2011.Filed April 9, 2012.As Amended on Denial of Rehearing and Rehearing En Banc June 13, 2012.

Scott A. Burroughs (argued), Stephen Doniger, and Regina Y. Yeh, Doniger/Burroughs APC, Culver City, CA, for the plaintiff-appellant.

Deborah F. Sirias (argued) and Robert M. Collins, Lewis Brisbois Bisgaard & Smith LLP, Los Angeles, CA; Jeffrey A. Miller, Lewis Brisbois Bisgaard & Smith LLP, San Diego, CA; Kristin L. Holland, Cory A. Baskin, and Zia F. Moddabber, Katten Muchin Rosenman LLP, Los Angeles, CA; and Jay Shapiro, Katten Muchin Rosenman LLP, New York, NY, for the defendants-appellees.

Appeal from the United States District Court for the Central District of California, John F. Walter, District Judge, Presiding. D.C. No. 2:09–cv–02449–JFW–FMO.Before: DOROTHY W. NELSON, RONALD M. GOULD, and SANDRA S. IKUTA, Circuit Judges.

OPINION

GOULD, Circuit Judge:

L.A. Printex Industries, Inc. (“L.A. Printex”) appeals the district court's summary judgment order in favor of Aeropostale, Inc. and Ms. Bubbles, Inc. (“Defandants”) in L.A. Printex's copyright infringement action. Because there are genuine disputes of material fact on access and substantial similarity, we reverse and remand.

I

L.A. Printex Industries, Inc. (“L.A. Printex”) is a Los Angeles-based fabric printing company. Ms. Bubbles is a Los Angeles-based wholesaler of men and women's apparel. Aeropostale is a mall-based retailer that purchases apparel from Ms. Bubbles and other vendors.

In 2002, Moon Choi, an L.A. Printex designer, created a floral design called C30020. Choi created this design by hand, using a computer. On July 17, 2002, the Copyright Office issued a certificate of registration for Small Flower Group A, a group of five textile designs that includes C30020. Small Flower Group A is registered as a single unpublished collection pursuant to 37 C.F.R. § 202.3(b)(4)(i)(B).

Between October of 2002 and May of 2006, L.A. Printex sold more than 50,000 yards of fabric bearing C30020 to its customers, who are fabric converters. Fabric converters show apparel manufacturers textile designs, obtain orders for selected designs, place orders for the designs with printing mills like L.A. Printex, and send printed fabric to manufacturers that then manufacture apparel for sale to retailers.

In 2008, L.A. Printex discovered shirts bearing the Aeropostale trademark and a design similar to C30020. According to Jae Nah, the President of L.A. Printex, the only difference between C30020 and the design on the Aeropostale shirts is that the latter was “printed using cruder, lower-quality techniques and machinery.” Aeropostale placed orders with Ms. Bubbles for the shirts in June of 2006, and it offered for sale and sold the shirts between September and December of 2006. The tags on the shirts say “Made in China.” Ms. Bubbles, however, stated that it had no understanding or information about the party that created the design resembling C30020.

On April 8, 2009, L.A. Printex sued Defendants for infringement of its copyright in C30020. After bringing this infringement action, L.A. Printex became aware that its copyright registration for Small Flower Group A contained an error. Two of the five designs, but not C30020, had been published before the July 17, 2002 date of registration. On February 22, 2010, L.A. Printex filed an application for supplementary registration to add April 1, 2002 as the date of first publication for Small Flower Group A. L.A. Printex thereafter contacted the Copyright Office to ask about its registration of a single unpublished work that contained both published and unpublished designs. The Copyright Office told L.A. Printex that the unpublished designs, including C30020, would retain copyright protection but that the previously published designs would not. On May 10, 2010, L.A. Printex filed a second application for supplementary registration to remove the two previously published designs from Small Flower Group A. On June 29, 2010, the Copyright Office approved L.A. Printex's application and issued a certificate of supplementary registration for Small Flower Group A; it states February 25, 2010 as the effective date of supplementary registration.

L.A. Printex and Defendants filed cross-motions for summary judgment. The district court granted Defendants' motion for summary judgment and denied L.A. Printex's motion, holding that there was no genuine issue of material fact as to (1) Defendants' access to C30020 or (2) substantial similarity between the allegedly infringing design on the Aeropostale shirts and C30020. The district court did not address Defendants' alternative argument that L.A. Printex's copyright registration was invalid because of the two previously published designs that were initially included in Small Flower Group A. Defendants then moved for attorneys' fees, and the district court granted their motion. L.A. Printex timely appealed to this court.

II

We have jurisdiction under 28 U.S.C. § 1291. We review the district court's grant of summary judgment de novo. Ellison v. Robertson, 357 F.3d 1072, 1075 (9th Cir.2004). Summary judgment is appropriate if, viewing the evidence in the light most favorable to the nonmoving party, “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Ellison, 357 F.3d at 1075. A genuine dispute is “one that could reasonably be resolved in favor of either party.” See Ellison, 357 F.3d at 1075.

III

To establish copyright infringement, a plaintiff must prove two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

The district court granted summary judgment for Defendants because it concluded that there was no genuine issue of material fact as to the second element, Defendants' copying of original elements of C30020.

“Because direct evidence of copying is not available in most cases,” a plaintiff can establish copying by showing (1) that the defendant had access to the plaintiff's work and (2) that the two works are substantially similar. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir.1996). L.A. Printex offered no direct evidence that Defendants copied C30020. To survive summary judgment, it had to show a genuine issue of material fact as to both access and substantial similarity. L.A. Printex contends that the district court erred in holding that there was no genuine issue as to either access or substantial similarity. We agree.

A

“Proof of access requires ‘an opportunity to view or to copy plaintiff's work.’ ” Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir.2000) (quoting Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977)). “To prove access, a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work.” Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1143 (9th Cir.2009). Absent direct evidence of access, a plaintiff can prove access using circumstantial evidence of either (1) a “chain of events” linking the plaintiff's work and the defendant's access, or (2) “widespread dissemination” of the plaintiff's work. Three Boys Music, 212 F.3d at 482.

L.A. Printex seeks to prove access by showing that C30020 was widely disseminated. The district court held that there was no genuine issue of material fact as to Defendants' access because, it found, “the only evidence of widespread dissemination” was Jae Nah's declaration stating that L.A. Printex first sold C30020 in October of 2002 and that L.A. Printex “produced and sold thousands of yards of fabric bearing [Design Number C30020] to numerous customers from 2002–2008.” The district court concluded that “such vague and conclusory statements certainly create no more than a ‘bare possibility’ that Defendants may have had access to Plaintiff's Design Number C30020” and that a “bare possibility” is insufficient to create a genuine issue on access.

However, Nah's declaration statements were not the only evidence of widespread dissemination. The record also contained a printout, attached as an exhibit to Nah's declaration, entitled “Sales by Item Detail” for the period from January 1, 2002 through August 12, 2009. The printout is a list of invoices for C30020 and shows, for each invoice, the date, invoice number, brief description, customer name, quantity, and dollar amount. Only fabric sold before Defendants' alleged infringement is relevant. The sales records show that L.A. Printex sold more than 50,000 yards of C30020 through May of 2006, before Aeropostale's June orders for the allegedly infringing shirts.¹

We must decide whether L.A. Printex's sale of more than 50,000 yards of fabric bearing C30020 creates a genuine dispute of material fact as to whether C30020 was widely disseminated. We conclude that it does.

The evidence required to show widespread dissemination will vary from case to case. In Three Boys Music Corp. v. Bolton, the plaintiffs argued that their song—one that did not “even make the top 100 for a single week” and was not released on an album or CD before the defendants created their allegedly infringing song—had been widely disseminated during the defendants' teenage years. 212 F.3d at 483. They offered the testimony of three disc jockeys regarding the song's airtime on radio and television. Id. We upheld the jury's finding...