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California Fashion Infringement Lawyer – Copyrighted prints, florals, designs, animal skins at issue

Posted by Steve Vondran | Aug 18, 2017 | 0 Comments

We can help Garment manufacturers and clothing retailers facing copyright lawsuits by UFI, L.A. Printex Industries, Star Fabrics, and Unicolors brought by Doniger Burroughs APC Law Firm or others.

 

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Introduction

California and New York are leaders of the fashion world.  Our firm is a leader in Copyright Infringement Law.  We can help both Plaintiffs and Defendants in a wide variety of copyright infringement related matters including fashion infringement cases.  If your company is selling garments, clothing or other products that features protected copyright works of textile converters or importers, you could face a costly infringement lawsuit or be forced into a settlement to avoid litigation.  This blog deals with different types of lawsuits filed by the firm of Doniger Burroughs APC who has filed hundreds of infringement lawsuits in Southern California.

We have offices in San Diego, Newport Beach (serving Orange County), Beverly Hills (Serving Los Angeles), San Francisco (Serving the bay area) and Phoenix, Arizona (Serving Phoenix/Scottsdale and surrounding cites in Maricopa County).

Sample Case / Sample Allegations in Fashion Infringement (U.S. Court of Appeals 9th Circuit)

L.A. Printex cases has filed hundreds of lawsuits alleging infringement of their stolen prints (ex. florals, paisleys, geometric designs, animal skin patterns, etc.) which appear on Defendant's clothing.  Here is one case filed against two Defendants:

LA PRINTEX INDUSTRIES INC., Plaintiff

vs. 

AEROPOSTALE, BUBBLES, INC, Defendants

Facts of Case

“L.A.  Printex Industries, Inc. (“ L.A.  Printex”) is a Los Angeles-based fabric printing company.  Ms. Bubbles is a Los Angeles-based wholesaler of men and women's apparel.  Aeropostale is a mall-based retailer that purchases apparel from Ms. Bubbles and other vendors. In 2002, Moon Choi, an  L.A.  Printex designer, created a floral design called C30020. Choi created this design by hand, using a computer. On July 17, 2002, the Copyright Office issued a certificate of registration for Small Flower Group A, a group of five textile designs that includes C30020. Small Flower Group A is registered as a single unpublished collection pursuant to 37 C.F.R. § 202.3(b)(4)(i)(B). Between October of 2002 and May of 2006,  L.A.  Printex sold more than 50,000 yards of fabric bearing C30020 to its customers, who are fabric converters. Fabric converters show apparel manufacturers textile designs, obtain orders for selected designs, place orders for the designs with printing mills like  L.A.  Printex, and send printed fabric to manufacturers that then manufacture apparel for sale to retailers. In 2008,  L.A.  Printex discovered shirts bearing the  Aeropostale trademark and a design similar to C30020. According to Jae Nah, the President of  L.A.  Printex, the only difference between C30020 and the design on the  Aeropostale shirts is that the latter was “printed using cruder, lower-quality techniques and machinery.”  Aeropostale placed orders with Ms. Bubbles for the shirts in June of 2006, and it offered for sale and sold the shirts between September and December of 2006. The tags on the shirts say “Made in China.” Ms. Bubbles, however, stated that it had no understanding or information about the party that created the design resembling C30020.

On April 8, 2009, L.A. Printex sued Defendants for infringement of its copyright in C30020. After bringing this infringement action, L.A. Printex became aware that its copyright registration for Small Flower Group A contained an error. Two of the five designs, but not C30020, had been published before the July 17, 2002 date of registration.

On February 22, 2010, L.A. Printex filed an application for supplementary registration to add April 1, 2002 as the date of first publication for Small Flower Group A. L.A. Printex thereafter contacted the Copyright Office to ask about its registration of a single unpublished work that contained both published and unpublished designs. The Copyright Office told L.A. Printex that the unpublished designs, including C30020, would retain copyright protection but that the previously published designs would not. On May 10, 2010, L.A. Printex filed a second application for supplementary registration to remove the two previously published designs from Small Flower Group A. On June 29, 2010, the Copyright Office approved L.A. Printex's application and issued a certificate of supplementary registration for Small Flower Group A; it states February 25, 2010 as the effective date of supplementary registration.

L.A.  Printex and Defendants filed cross-motions for summary judgment. The district court granted Defendants' motion for summary judgment and denied  L.A.  Printex's motion, holding that there was no genuine issue of material fact as to (1) Defendants' access to C30020 or (2) substantial similarity between the allegedly infringing design on the  Aeropostale shirts and C30020. The district court did not address Defendants' alternative argument that  L.A.  Printex's copyright registration was invalid because of the two previously published designs that were initially included in Small Flower Group A. Defendants then moved for attorneys' fees, and the district court granted their motion.  L.A.  Printex timely appealed to this court.”

Proof of Copyright Infringement Discussed

This case discussed what evidence is needed to prove copyright infringement: “ 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.”  Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). The district court granted summary judgment for Defendants because it concluded that there was no genuine issue of material fact as to the second element, Defendants' copying of original elements of C30020. Because direct evidence of copying is not available in most cases,” a plaintiff can establish copying by showing: (1) that the defendant had access to the plaintiff's work and (2) that the two works are substantially similar.  Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir.1996). L.A.  Printex offered no direct evidence that Defendants copied C30020. To survive summary judgment, it had to show a genuine issue of material fact as to both access and substantial similarity.  L.A.  Printex contends that the district court erred in holding that there was no genuine issue as to either access or substantial similarity. We agree. Proof of access requires ‘an opportunity to view or to copy plaintiff's work.' Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir.2000) (quoting  Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977)). “ To prove access, a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work.”  Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1143 (9th Cir.2009). Absent direct evidence of access, a plaintiff can prove access using circumstantial evidence of either (1) a “ chain of events” linking the plaintiff's work and the defendant's access, or (2) “ widespread dissemination” of the plaintiff's work.” See  Three Boys Music, 212 F.3d at 482.

The Court reversed the summary judgment and remanded the case for a new trial

“C30020 is a repeating pattern of bouquets of flowers and three-leaf branches.  The idea of a floral pattern depicting bouquets and branches is not protectible, and C30020 has elements that are not protectible, for example the combination of open flowers and closed buds in a single bouquet or the green color of stems and leaves.  See  Satava v. Lowry, 323 F.3d 805, 811 (9th Cir.2003). However,  L.A.  Printex's original selection, coordination, and arrangement of such elements is protectible.  See  Feist Publ'ns , 499 U.S. at 362, 111 S.Ct. 1282;  Metcalf, 294 F.3d at 1074. Because there is “a wide range of expression” for selecting, coordinating, and arranging floral elements in stylized fabric designs, “copyright protection is ‘broad' and a work will infringe if it's ‘substantially similar' to the copyrighted work.”  Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 913–14 (9th Cir.2010). That is, “there are gazillions of ways” to combine petals, buds, stems, leaves, and colors in floral designs on fabric, in contrast to the limited number of ways to, for example, “paint a red bouncy ball on black canvas” or make a lifelike glass-in-glass jellyfish sculpture.  See id.;  Satava, 323 F.3d at 812. Our comparison of Defendants' allegedly infringing design and C30020 reveals objective similarities in protectible 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. Both patterns also depict small, three-leaf branches interspersed between the two types of bouquets. The shape and number of the flower petals and leaves are similar in the two designs.  See  Hamil Am., 193 F.3d at 102.The two types of bouquets are arranged at similar angles in both designs, and the bouquets and branches are coordinated in similar spatial combinations on a grid of similar scale and layout.”

Types of companies that may be at risk of infringement actions in fashion copyright cases

U.S. copyright law allows for copyright claims to target all parties involved in the production and sales process, from retailers to labels to textile manufacturers and others.  Among those may be:

-Clothing manufacturers and retailers

-Clothing and accessories chain

-Fashion outlets

-Clothing retailers

-Textile companies

-Others

Fashion Design Settlements in the News!

  • Advanced Visual Image Design (a sublimination printer in LA) 1.75 million jury verdict against Exist, Inc. (Florida Garment wholesaler) sued for copying proprietary fabric designs.
  • LA Printex victory (note: L.A. Printex has sued retailers such as Mervyns, TJ Maxx, Macy's, and Forever 21 as well as clothing manufacturers such as Ms. Bubbles, Stony Apparel Corp., Just for Wraps and Tops on Downs of California)

Fashion Law Resources

  1. Fashion Law Project at Loyola Marymount
  2. Fashion Law Institute
  3. California Fashion Association
  4. Fashionista
  5. Case Clothesed

Conclusion – How to Minimize Risk of Copyright Infringement Lawsuits

Attorney Steve Tip: In order to avoid as much legal risk as possible, clothing and fashion manufacturers and retailers need to consider:

(1) Independently creating their own fabric design,

(2) Licensing copyrighted designs directly from the rights holder,

(3) Using solid color fabrics with no design,

(4) It is also important to get certain warranties and representations in your contracts, and to seek indemnification clauses whenever possible.

Contact a Southern California Fashion Infringement Law Firm

We offer free initial consultations to Plaintiffs or Defendants who seek intellectual property counsel to handle their fashion infringement matters.  Call us at (877) 276-5084.  In addition to our California offices listed above, we also have an office in Phoenix, Arizona serving Maricopa County including Scottsdale.   We have extensive federal court experience and offer tenacious, ethical and professional legal representation. 

About the Author

Steve Vondran

Welcome to the SHORT BIO page for Attorney Steve®  (Yes, I was able to get a trademark for Attorney Steve®) Click here to go to a more COMPLETE BIO. AZ Bar Lic. #025911 CA. Bar Lic. #232337 Introduction I have done a lot of things in my 15 years of law practice and in my life in general.  ...

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