and Submitted January 13, 2017 Pasadena, California
from the United States District Court for the Central
District of California D.C. No. 2:14-cv-01029-SJO-VBK S.
James Otero, District Judge, Presiding
Stephanie P. Alexander (argued), Tara L. Martin, and Miles D.
Scully, Gordon & Rees LLP, Irvine, California, for
Alan Burroughs (argued), Trevor W. Barrett, and Stephen M.
Doniger, Doniger Burroughs, Venice, California, for
Before: Richard C. Tallman and Michelle T. Friedland, Circuit
Judges, and William Horsley Orrick[*], District Judge.
panel affirmed the district court's judgment in favor of
the plaintiff in a copyright infringement case involving
the district court's summary judgment in favor of the
plaintiff on the issue of copyright infringement, the panel
held that the district court did not err in its application
of the subjective "intrinsic test." The panel held
that where the extrinsic similarity of two works is so strong
that the works are near duplicates save for superficial
differences, the district court may properly conclude that no
reasonable jury could find that the works are not
substantially similar in their overall concept and feel. The
panel also held that it was permissible to infer copying in
this case, even absent evidence of access.
panel held that the district court did not err in concluding,
on summary judgment, that the plaintiff had validly
registered a fabric design as part of a collection.
the district court's judgment after a jury trial on the
issues of willful infringement and damages, the panel held
that substantial evidence supported the jury's verdict
because the evidence showed that the defendant acted with
reckless disregard for the possibility that the fabric it
sampled was protected by copyright.
panel addressed additional issues in a concurrently filed
ORRICK, District Judge:
Outfitters, Inc. and Century 21 Department Stores, LLC
(collectively "Urban") appeal the judgment against
them in a copyright infringement case involving fabric
designs. The district court granted plaintiff Unicolors
Inc.'s motion for summary judgment on the issue of
copyright infringement and, following a two-day trial, a jury
found Urban liable for willful infringement. We reject
Urban's arguments that the district court erred in its
application of the subjective "intrinsic test" and
in its conclusion that Unicolors had validly registered the
Subject Design, and further conclude that there was
substantial evidence to support the jury's verdict for
willful infringement. We thus affirm.
is a Los Angeles company in the business of designing and
selling fabrics to customers in the apparel markets.
Unicolors typically registers copyrights in its designs to
protect its investment and maintain a competitive advantage
in its artwork.
September 2008, Unicolors purchased the intellectual property
rights to an original piece of work named
"QQ-692"created by art studio Milk Print, LLC. It
used a computer drafting utility program to reformat and make
minor alterations to the QQ-692 design so that it could be
printed onto bolts of fabric. It renamed this derivative
design "PE1130" ("Subject Design"). On
November 26, 2008, Unicolors registered its "Flower
2008" collection with the Copyright Office. Under
"Contents Titles, " Unicolors listed several
designs, including QQ-692, and it attached an image of the
design with the label "QQ-692 (PE1130)." Under
"Material excluded from this claim, " the
application listed "Milk Print: QQ-692." Between
2008 and 2011, Unicolors sold approximately 14, 000 yards of
fabric bearing the Subject Design to customers in the United
Outfitters is a specialty retail company operating over 500
stores worldwide. Century 21 is a department store that
purchases products from Urban Outfitters. In late 2010, Urban
Outfitters developed a women's dress (the "Accused
Dress") with a fabric design similar to the Subject
Design. Unicolors sent a cease-and-desist letter to
Urban's counsel two years later, asserting that the
Accused Dress infringed Unicolors's PE1130 design.
Unicolors then filed suit against Urban alleging copyright
infringement of the Subject Design.
summary judgment, the district court concluded that both
defendants were liable for copyright infringement. The court
held that Unicolors owns and properly registered a copyright
in the Subject Design and that Urban created and sold
garments bearing a design that was substantially similar to
the Subject Design.
a two-day trial on the issues of willfulness and damages, a
jury found that Urban had willfully infringed Unicolors's
copyright in the Subject Design and awarded $164, 400 in
damages. The court then granted Unicolors $366, 910.17 in
fees and costs. Urban timely appealed the district
court's grant of summary judgment and the jury's
finding of willfulness.
STANDARD OF REVIEW
review the district court's grant of summary judgment de
novo. Benay v. Warner Bros. Entm't, Inc., 607
F.3d 620, 624 (9th Cir. 2010). In reviewing the jury's
verdict, we ask whether the verdict is supported by
substantial evidence. See Harper v. City of Los
Angeles, 533 F.3d 1010, 1021 (9th Cir. 2008). "A
jury's verdict must be upheld if it is supported by
substantial evidence, which is evidence adequate to support
the jury's conclusion, even if it is also possible to
draw a contrary conclusion." Id. (quoting
Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002)).