For those who work in prints, take note..... 

In the recent case of L.A. Printex Industries, Inc. v. Aeropostale, Inc., & Ms. Bubbles, Inc., the United States Court of Appeals for the Ninth Circuit articulated ground rules to be applied in Federal court that will make it quite difficult for defendants to resolve copyright infringement cases by Motions for Summary Judgment (MSJ). The Ninth Circuit handed the suing party a victory, and overturned a lower court's decision. 

Copyright 'trolls'[1] pepper California and Federal courts with copyright infringement claims, which are costly to defend. These claims sometimes result in settlements, and are otherwise decided through the litigation process. The availability of a modestly inexpensive means of disposing of these cases through litigation has had a direct bearing on the costs of settlement. If Motions for Summary Judgments can succeed, there is a chance that the costs to settle future cases may be reduced.

This case, however, does not help that cause.  L.A. Printex claimed that a copyrighted floral print was copied by the defendant importer Ms. Bubbles, and sold to defendant Aeropostale.   The defendants successfully claimed at trial that there was insufficient proof that they had access to the copyrighted print or that they copied it, and the trial court found that the prints were not substantially similar. As a result, defendants' MSJ was granted by the District Trial Court.

Moon Choi, L.A. Printex's designer, filed an affidavit that he created the design, C30020, by hand, using a computer. The print was copyrighted in 2002. Ms. Bubbles, the importer of the allegedly infringing design, had no information about the Chinese party that created it for a 2006 shipment to Aeropostale.[2]  

To win its case, L.A. Printex had to prove copying. That can be done indirectly, since actual copying is often impossible to prove, by proving access to the copyrighted design and substantial similarity. The trial court was unimpressed by L.A. Printex's showing: Jae Nah, the company's president, claimed his company had sold 50,000 yards to local converters. The District Court wasn't buying, though. This was vague and conclusory, creating "no more than a 'bare possibility' that Defendants may have had access to."

The Appellate Court, however, was impressed. The sale of 50,000 yards, was a material fact that supported L.A. Printex's argument that Ms. Bubbles had access to the copyrighted design before it bought the print and sold it to Aeropostale. The opinion impiies that Ms. Bubbles may have shopped those fabric converters who carried C30020. It reasoned that the print might be found to be "widely disseminated" giving rise to a reasonable possibility that Ms. Bubbles had an opportunity to view and copy the print.   

That left the Appellate Court to determine if the two prints were substantially similar. The lower court detailed its reasons for determining that the designs were not substantially similar. But the Appellate Court looked at the prints and decided that a reasonable juror might conclude they were substantially similar. Application of this test by the Appellate Court had one result, completely contrary to the findings of the lower District Court. That's the nature of a subjective test. This uncertainty greatly increases the costs of settlement.

Appellate Court: "Our comparison of Defendants' allegedly infringing design and C30020 reveal objective similarities in protectable elements. Both patterns feature two types of small bouquets of flowers, one featuring the largest flower in profile view, the other featuring the largest flower in an open-face view, and both, emerging from three buds."

That said, the Appellate Court found enough similarity to overrule the trial court, and the opinion further points out that "a copyright defendant need not copy a plaintiff's work in its entirety to infringe that work. It is enough that the defendant appropriate a substantial portion of the plaintiff's work." This comment, although not new, emphasizes the point that scale is not an issue in these cases. Elements of two designs may be found substantially similar, even though the elements are completely different sizes and of different importance in the overall print.

That should give designers heartburn.

Another troubling aspect of this ruling:  designs of floral arrangements can be similar because floral arrangements are similar; and, a floral arrangement, itself, is not copyrightable.  The expression of the floral arrangement is copyrightable.  Did the defendant have access to the plaintiff's expression, or access to a floral arrangement? 

Competing policies cannot be satisfied by an opinion in one Appellate Court case. We do have copyright laws to encourage innovation and protect innovators, and they were intended to protect the expression of ideas. How unique was Mr. Choi's expression of a floral arrangement? It is left to a jury, and many hundreds of thousands of dollars to decide. Or did the cost of settlement just go up?