IP Law Daily Dress Barn, B&Y infringed designer’s copyrighted Aztec-style ‘tribal’ fabric design
Friday, January 20, 2017

Dress Barn, B&Y infringed designer’s copyrighted Aztec-style ‘tribal’ fabric design

Fabric designer Standard Fabrics International was awarded partial summary judgment on its copyright infringement claims against Dress Barn Inc. and B&Y Fashion Inc., and on all of the defendants’ defenses except two: failure to mitigate and innocent infringement, which were not addressed in the pending motion, the federal district court in Los Angeles has ruled (The Standard Fabrics International, Inc. v. Dress Barn, Inc., January 19, 2017, Wright II, O.).

The plaintiff, a textile company that prides itself on original, "trendy, fashion forward" fabric designs, either creates or acquires by contract the rights to each of the fabric designs that it offers. In this case, after it acquired an "Aztec-style, tribal" fabric design via contract from a designer for hire, the company formatted and finalized the art for textile applications and registered the design with the U.S. copyright office, then included it in its summer 2013 collection and sold over 89,000 yards of fabric bearing the copyright design to a variety of worldwide customers.

The plaintiff discovered that defendant Dress Barn was selling blouses on its website featuring a substantially similar fabric design, and it purchased two blouses as evidence of the sales. Dress Barn acquired these finished garments from defendant B&Y Fashion, a wholesale garment company, which acquired them from a Vietnamese producer. After determining that it had not supplied the garments’ fabric, the plaintiff sent a cease and desist letter to B&Y Fashion and later filed a lawsuit for copyright infringement.

Copyright infringement. To establish copyright infringement, a plaintiff had to prove: (1) ownership of a valid copyright and (2) infringement. Infringement involved a two-part test, namely whether: (a) the alleged infringer had access to the work and (b) the infringing work was substantially similar to the copyrighted work. The plaintiff submitted an uncontested registration certificate from the copyright office for the work in question and, based on this evidence, the defendants conceded ownership and the court ruled that the plaintiff was entitled to summary judgment on the issue of ownership.

As for infringement, proof of access required an opportunity to view or copy the work, which was established in this case by a striking similarity, the court explained, because the fabric that was incorporated into the defendants’ garments was so similar to the plaintiff’s copyrighted work that it could not possibly have been the product of independent creation. The design at issue was highly original because it was a random collection of shapes and patterns without any attempt to imitate real-life images such as flowers or animals. Because the work was not based on recognizable objects, but instead was based on arbitrary, abstract designs, the court called the level of similarity "both surprising and telling."

The fabric design incorporated into the defendants’ garments had all the structural elements of the plaintiff’s protected designs, the court observed. The only discernable differences between the allegedly infringing design and the protected design were insignificant in light of the complexity of the design and were perceptible only with significant scrutiny, according to the court, which noted that a copyright defendant need not copy a plaintiff’s work in its entirety to infringe that work. Instead, it was enough that a defendant appropriated a substantial portion of the plaintiff’s work. According to the court, the protected design and the allegedly infringing design were so similar that copying could be the only logical explanation. The court thus ruled that the plaintiff was entitled to summary judgment on the issue of access.

As for substantial similarity, the court applied both the extrinsic and intrinsic tests. Regarding the extrinsic test, which involved analyzing the individual elements of a design for substantial similarity, the court found that the structural elements of the fabric that was incorporated in the defendants’ garments and the structural elements of the protected design were effectively the same. Further, the defendants failed to identify or present any evidence of specific elements that meaningfully differentiated the fabric design that was incorporated into their garments from the plaintiff’s protected design.

As to the intrinsic test, which examined the designs in their totality through the eyes of a reasonable person, the total concept and feel of the designs was the same. The positioning and layout of the individual elements of the design, the spacing between those elements, the distressed nature of the print, and the Aztec-centric theme were overwhelmingly identical. The court thus found that the plaintiff was entitled to summary judgment on the issue of substantial similarity.

Defenses. The defendants claimed that the Vietnamese producer likely obtained the fabric legally from the plaintiff; therefore, as downstream buyers of finished garments that incorporated that fabric, they were protected by the first sale defense. The plaintiff clearly and definitively met its initial burden of showing an absence of evidence in support the nonmoving party’s case. The plaintiff asserted in its motion that the evidence indicated that it never abandoned its rights; nor did it provide the defendants consent, implied license, or authorization to use the subject design in any way. In fact, the plaintiff indicated that there was no evidence in the record to support the affirmative defense of the first-sale doctrine. The burden to provide extrinsic evidence of a lawful first sale thus shifted to the defendants.

According to the court, the defendants did not meet their burden to show a genuine dispute of fact as to the fabric’s lawful acquisition. The plaintiff’s records did not show any fabric sales to the Vietnamese producer, and the company president testified that it had never sold any relevant fabric to that producer—and the defendants did not produce any evidence to suggest otherwise.

As for the issue of whether a legitimate purchaser of the relevant fabric could have sold the fabric to the Vietnamese producer, the court concluded that, after thoroughly reviewing the record, the only apparent link between any legitimate purchaser and the producer was that one purchaser’s manufacturer and the producer both happened to be located in Ho Chi Minh City, Vietnam. The court rejected the defendants’ contention that the plaintiff should have investigated the connection between that purchaser and the producer.

Thus, the defendants did not meet their burden to show lawful acquisition and the plaintiff was entitled to summary judgment on the first-sale defense.

The defendants failed to produce any evidence to support their defenses of failure to state a claim, latches, waiver, unclean hands, estoppel, lack of originality, invalidity of copyright registration, limitations on relief, fair use, statute of limitations, copyright misuse, and litigation and settlement privileged, the court concluded. Because those defenses were completely unsupported by the evidence of record, the court decided that the plaintiff was entitled to summary judgment on those defenses.

Because the defenses of failure to mitigate and innocent infringement, which related to damages, were not addressed in the pending motion, the court denied the plaintiff’s motion for summary judgment as to those defenses.

The case is No. 2:15-cv-08437-ODW (PJW).

Attorneys: Scott A. Burroughs (Doniger Burroughs APC) for The Standard Fabrics International, Inc. Orlando F. Cabanday (Cabanday Law Group) for The Dress Barn, Inc., and B and Y Fashion, Inc.

Companies: The Standard Fabrics International, Inc.; The Dress Barn, Inc.; B and Y Fashion, Inc.

MainStory: TopStory Copyright CaliforniaNews

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