Unicolors, Inc. v. Wet Seal, Inc.
| Decision Date | 09 May 2013 |
| Docket Number | Case No.: SACV 12-1065-DOC(JCx) |
| Court | U.S. District Court — Central District of California |
| Parties | UNICOLORS, INC., a California Corporation, Plaintiff, v. THE WET SEAL, INC., ET AL., Defendants. |
Before the Court are two motions: (1) a Motion for Partial Summary Judgment as to Liability for Copyright Infringement and Judgment on the Counterclaim (Dkt. 56) filed by Plaintiff Unicolors, Inc. ("Plaintiff"); and (2) a Motion for Summary Judgment (Dkt. 55) filed by Defendants Hi-Fashion Group, LLC, Boscov's Department Store, LLC, NY Collection, Notations, Inc., and Macy's, Inc. (collectively, "Defendants"). Oralarguments were presented to the Court on May 6, 2013. After considering all moving papers and oral arguments, the Court DENIES Plaintiff's motion and DENIES Defendants' motion.
This is a copyright infringement case. Plaintiff Unicolors produces original printed designs on fabric and sells fabric bearing those prints to its customers, who in turn make and sell garments for retailers. Pl's Statement of Uncontroverted Facts ("PSUF") (Dkt. 56-17) ¶ 1. Defendant Notations, Inc. ("Notations"), has been a customer of Plaintiff's since 2002. Id. ¶ 5. Defendant NY Collection is a branch of Notations, with its "ny collections" label appearing on garments produced by Notations. Declaration of Nader Pazirandeh ("Pazirandeh Decl.") ¶ 12. Defendant Hi-Fashion Group, LLC ("Hi-Fashion"), is a competitor of Plaintiff's, in that it also creates fabric designs and sells them to garment manufacturers. Defs Separate Statement of Uncontroverted Facts ("DSUF") (Dkt. 55-2) ¶¶ 3-4. Defendants Boscov's Department Store, LLC ("Boscov's"), and Macy's, Inc. ("Macy's"), are retailers. PSUF ¶ 12.1
The copyright at issue in this case is Unicolors design number CE169, made up of a distinctive pattern of floral concentric circles with feather-shaped accents. According to Plaintff, CE169 was created in-house at Unicolors by its employee Jin Young Suh and the Unicolors team, basing their design on original artwork bought from an Italian design firm, Blue Studio. Id. ¶6. Blue Studio represented in writing to Plaintiff that the artwork was original and not copied. Id. ¶7. Blue Studio transferred all rights in the design toPlaintiff on November 8, 2007. Id. ¶8. The final version of the CE169 design was registered with the Copyright Office by Plaintiff on December 14, 2007. Id. ¶10, Ex. 1.
Plaintiff first sold fabric bearing the CE169 design to one of its customers in December of 2007, and continued to sell CE169 fabric up to at least 2011. Id. ¶15. In total, Plaintiff has sold tens of thousands of yards of CE169 fabric in a variety of colors to customers across the United States, including a number of customers in New York, where Defendants Notations and Hi-Fashion are located. Id. ¶ 16. Indeed, Plaintiff sold directly to Defendant Notations: on July 1, 2008, Notations bought four yards of CE169 fabric in a blue color scheme and four yards in a fuchsia color scheme. Id. ¶ 11 (receipt of sale).
In 2012, Plaintiff found garments manufactured by Notations available for sale at Boscov's and Macy's, along with other retails stores, that Plaintiff claims feature an unauthorized copy of CE169. Pl's Mot. at 3; see PSUF ¶ 12 Ex. 7. Plaintiff has submitted evidence depicting the CE169 fabric alongside the allegedly infringing design, and Plaintiff argues that the two designs are impermissibly similar when viewed from afar and from up close, pointing out what it alleges to be unique visual elements that appear in both. See Pl's Mot. at 11-15 (comparing photographs).
The garments at issue bear a design that Defendant Hi-Fashion sold to Defendant Notations beginning in November of 2011. PSUF ¶ 17. Defendant Hi-Fashion, however, claims to have independently created this design. Hi-Fashion submits declarations claiming that, during the summer of 2007, one of its employees first came up with the design, known to Hi-Fashion as BRISAS-KY9065, as part of a series of designs based on Native American culture featuring bird feather features. DSUF ¶¶ 6-8, 24. Hi-Fashion executive Bill Carey2 claims that the inspiration for that collection came from anumber of images of bird feathers used in Native American rituals that he found in books in the New York Public Library. Id. ¶¶ 7-8, 15.
Hi-Fashion submits declarations claiming that, on June 7, 2007, months before Plaintiff bought its original design from Blue Studio, a Hi-Fashion employee created the original BRISAS-KY9065 design using paints on paper. Id. ¶ 10. It also submits a "Pattern History" form allegedly created on June 7, 2007, labeled "Native American Feather Bustle Design" and featuring an image that it claims to be a portion of BRISAS-KY9065. Id. ¶ 11; Decl. of William Carey Ex. 1. Hi-Fashion submits declarations claiming that, pursuant to Hi-Fashion procedure, the design was then distributed to Hi-Fashion showrooms in New York, Los Angeles, San Francisco, and Dallas for the purposes of marketing it and offering it for sale to Hi-Fashion customers. Id. ¶ 13. At that point, in 2007, there was no copyright on BRISAS-KY9065.
According to Defendants, the design remained unused for three years, and it wasn't until 2010 that Hi-Fashion decided to include BRISAS-KY9065 in one of its lines. Id. ¶ 24. Finally, in March of 2010, it submitted a copyright application to the United States Copyright office, and it was issued Copyright Registration No. V Au 1-016-814. Id. ¶¶ 25-26. Hi-Fashion's copyright registration lists "2007" as the "Year of Completion," since Hi-Fashion referenced the "Pattern History" form dated June 7, 2007, in its application. See id.
On June 29, 2012, Plaintiff filed a complaint in this Court for copyright infringement and vicarious and/or contributor copyright infringement pursuant to the Copyright Act of 1976, 17 U.S.C. § 101 et seq. See Compl. (Dkt. 1). Hi-Fashion Groupfiled an Intervenor Complaint and Counterclaims (Dkt. 44) on October 15, 2012, seeking a declaratory judgment that it did not infringe Plaintiff's copyright, and further seeking an infringement judgment against Plaintiff and a declaration of the invalidity of Plaintiff's copyright. See Intervenor Compl.
On April 8, 2013, each party filed motions for summary judgment. Oral arguments were presented to the Court on May 6, 2013.
Summary judgment is proper if "the movant shows that 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(c). The court must view the facts and draw inferences in the manner most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655 (1992); Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1161 (9th Cir. 1992). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial, but it need not disprove the other party's case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986). When the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out that the non-moving party has failed to present any genuine issue of material fact. Musick v. Burke, 913 F.2d 1390, 1394 (9th Cir. 1990).
Once the moving party meets its burden, the opposing party must set out specific facts showing a genuine issue for trial; merely relying on allegations or denials in its own pleading is insufficient. See Anderson, 477 U.S. at 248-49. A party cannot create a genuine issue of material fact simply by making assertions in its legal papers. S.A. Empresa de Viacao Aerea Rio Grandense v. Walter Kidde & Co., Inc., 690 F.2d 1235, 1238 (9th Cir. 1982). Rather, there must be specific, admissible evidence identifying the basis for the dispute. Id. The Supreme Court has held that "[t]he mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for [the opposing party]." Anderson, 477 U.S. at 252. A court is"not required to comb the record to find some reason to deny a motion for summary judgment." Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001).
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." L.A. PrintexIndus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012), as amended on denial of reh'g and reh'g en banc (June 13, 2012) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
The ownership element of a copyright "breaks down into the following constituent parts:" (1) authorship, and (2) copyrightability of the subject matter. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.01[A] (2005). The parties do not dispute copyrightability. Regarding the other required element, a certificate of registration constitutes prima facie evidence of ownership, i.e., authorship. 17 U.S.C. § 410(c); see also Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144 (9th Cir. 2003).
Here, Unicolors holds a copyright registration for the CE169 design. However, Defendant Hi-Fashion also holds a copyright registration for its BRISAS-KY9065 design. Because the parties appear to agree that the products at issue are substantially similar, there is an ongoing dispute about which party's registration is valid and who truly authored the design. While Plaintiff has submitted evidence detailing the process of authorship in-house at Unicolors during 2007, following the purchase of...
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