Ninth Circuit Refines Access and Substantial Similarity Standards in Fabric Copyright Case
Kelley Drye Client Advisory
May 8, 2012

On April 9, 2012, in L.A. Printex Indus. Inc. v. Aeropostale Inc., the U.S. Court of Appeals for the Ninth Circuit filed its decision reversing the order of the district court granting summary judgment against plaintiff’s copyright infringement claim regarding a floral fabric design, comprised of a repeating pattern of bouquets of flowers and three-leaf branches. L.A. Printex Indus. Inc. v. Aeropostale Inc., 102 U.S.P.Q.2d (BNA) 1382 (9th Cir. 2012). The Ninth Circuit held that there was a triable issue of fact as to (1) defendants’ access to the floral fabric design, and (2) the substantial similarity between the designs. Id. at 1385, 1388. Together, access and substantial similarity can establish unlawful copying in the absence of direct evidence of copying. Although the court found that these issues must go to the jury and thus did not find either issue as a matter of law, the case is noteworthy for its analysis of these essential elements.

First, the court shed light on the nebulous “wide dissemination” theory of access. Under this theory, a plaintiff can prove access using circumstantial evidence of “widespread dissemination” of the plaintiff’s work. Id. at 1384. In L.A. Printex, plaintiff, a fabric printing company, sought to prove that defendants, an apparel wholesaler and a mall-based retailer, had access to plaintiff’s design because it was widely disseminated. The district court held that plaintiff’s declaration that it produced and sold thousands of yards of fabric before defendants’ alleged infringement created no more than a “bare possibility” that defendants may have had access to plaintiff’s design, and that such a “bare possibility” was insufficient to create a triable issue of fact on summary judgment. Id. at 1384-85.

The Ninth Circuit reversed. The court recognized the fact-specific inquiry when considering the wide-dissemination theory of access: “the evidence required to show wide dissemination will vary from case to case.” Id. at 1385. Thus, courts focus on a variety of factors depending on the nature of the case, such as the popularity of a song (in a case involving infringement of a song), the number of sales (in a case involving infringement of a video), marketing efforts (in a case involving infringement of a t-shirt design), the geographic reach of any sales, the length of time over which the work was disseminated, and whether the respective parties are in the same industry and market. Id.

In L.A. Printex, the court focused on plaintiff’s sales report showing invoices for sales of over 50,000 yards of its fabric during a four-year period preceding defendants’ alleged infringement. Id. The court inferred that most of these sales would be in the Los Angeles area, where plaintiff and defendants both operate. Id. Based on these facts, the Ninth Circuit held that plaintiff’s fabric was “widely disseminated” in the Los Angeles-area fabric industry. As such, there was a reasonable possibility that defendants had an opportunity to view and copy plaintiff’s design and thus plaintiff had raised a genuine dispute of material fact on the issue of access. Id.

Second, the L.A. Printex decision is also notable because of the court’s treatment of plaintiff’s floral design. That is, the court began with the premise that plaintiff’s floral design – even if comprised of nonprotectible elements – constituted protectible expression as a whole because of the original selection, coordination, and arrangement of unprotectible elements in that design. Id. at 1386-88 (citing, inter alia, Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002)). The court determined that because there is a “wide range of expression” for selecting, coordinating, and arranging floral elements in stylized fabric designs, such designs may be entitled to broad copyright protection, notwithstanding the fact that the individual components of those designs may be unprotectible. See id. at 1387-88. Because of the broad protection accorded plaintiff’s design, the court determined that defendants’ design need not be “virtually identical” to infringe, as would be the case if the protection were only thin; the law requires only substantial similarity between the designs. Id. at 1388.

The court then explained that in comparing fabric designs, the court examines the “appearance” of the designs, including the “subject matter, shapes, colors, materials, and arrangement of the representations.” Id. at 1386 (citing Cavalier v. Random House, Inc., 297 F.3d 815, 826 (9th Cir. 2002)). In L.A. Printex, the court focused on “objective similarities in protectible elements” between plaintiff’s and defendants’ designs – such as the types of small bouquets of flowers; the size of the branches interspersed between the bouquets; the shape and number of petals and leaves; and the color arrangement. Id. Despite some differences between the designs, the court found a rational jury could find the similarities in the selection, coordination, and arrangement of the bouquets and branches are sufficiently substantial to support an inference of copying. Id.

Thus, L.A Printex shows that under certain circumstances, plaintiff can overcome a summary judgment challenge to a copyright infringement claim where (1) plaintiff proffers evidence of wide dissemination of his or her work, and (2), in the context of a claim regarding fabric designs, a court finds a triable issue of fact exists as to whether defendant’s design is substantially similar in subject matter, shapes, colors, materials, and arrangement.

Click here to read the L.A. Printex decision as published on the Ninth Circuit website.