Star Fabrics, Inc. v. Target Corporation et al
Filing
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ORDER by Judge Dean D. Pregerson: Plaintiff's Motion for Partial Summary Judgment 30 is GRANTED. (ir)
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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STAR FABRICS, INC., a
California corporation,
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Plaintiff,
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v.
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TARGET CORPORATION, a
Minnesota Corporation; KANDY
KISS OF CALIFORNIA, INC., a
California corporation;
MOREX ENTERPRISES, INC.,
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Defendants.
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___________________________
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Case No. CV 10-07987 DDP (AGRx)
ORDER GRANTING MOTION FOR PARTIAL
SUMMARY JUDGMENT
[Motion filed on 8/11/11]
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Presently before the court is Plaintiff Star Fabrics, Inc.
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(“STAR”)’s Motion for Partial Summary Judgment.
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the submissions of the parties and heard oral argument, the court
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grants the motion and adopts the following order.
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I.
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Having considered
Background
STAR is a “textile converter” that provides fabric printed
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with art designs to garment manufacturers.
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Haroni ¶ 2.)
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a similar service.
(Declaration of Adir
Defendant Morex Enterprises, Inc. (“Morex”) provides
(Haroni Dec. ¶ 10.)
STAR creates or acquires
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designs, offers those designs to customers, and provides fabric
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bearing those designs.
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for fabric by the yard based on quantity ordered and type of
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material requested.
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acquisition and development costs are treated as overhead expenses,
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and the particular design printed on a given fabric does not affect
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the cost of the fabric.
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(Haroni Dec. ¶ 3.)
STAR charges customers
(Haroni Deposition at 40.)
STAR’s design
(Haroni Depo. at 45.)
In 2006, STAR purchased an art design, the “59705” design, for
$550, and began offering the design to customers.
(Haroni Dec. ¶¶
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6-7; Haroni Deposition at 14:20, 27:15.)
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copyright to the 59705 design.
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sold fabric samples bearing the 59705 design to Defendant Kandy
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Kiss of California, Inc. (“Kandy Kiss”), a garment manufacturer.
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(Haroni Dec. at 8.)
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STAR also registered the
(Haroni Dec. ¶ 6).
In 2007, STAR
In 2010, STAR discovered a garment bearing a design virtually
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identical to the 59705 design for sale at a store operated by
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Defendant Target Corporation (“Target”).
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variations in coloring distinguish the 59705 design from the design
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on the Target garment.
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learned that Kandy Kiss had manufactured the dresses for Target
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from fabric obtained from Morex.
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moves for partial summary judgment that Defendants have infringed
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upon the 59705 design.
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II.
(Haroni Dec. ¶ 10.)
(Mot. at 15, Exhibits 4, 7 to Mot.)
(Haroni Dec. ¶ 10.)
Only
STAR
STAR now
Legal Standard
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A motion for summary judgment must be granted when “the
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pleadings, depositions, answers to interrogatories, and admissions
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on file, together with the affidavits, if any, show that there is
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no genuine issue as to any material fact and that the moving party
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is entitled to a judgment as a matter of law.” Fed. R. Civ. P.
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56(c).
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of informing the court of the basis for its motion and of
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identifying those portions of the pleadings and discovery responses
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that demonstrate the absence of a genuine issue of material fact.
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See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
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A party seeking summary judgment bears the initial burden
Where the moving party will have the burden of proof on an
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issue at trial, the movant must affirmatively demonstrate that no
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reasonable trier of fact could find other than for the moving
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party.
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burden of proof, however, the movant can prevail merely by pointing
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out that there is an absence of evidence to support the nonmoving
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party’s case.
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burden, the non-moving party must set forth, by affidavit or as
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otherwise provided in Rule 56, “specific facts showing that
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there is a genuine issue for trial.” Anderson v. Liberty Lobby,
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Inc., 477 U.S. 242, 250 (1986).
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light most favorable to the non-moving party, and all justifiable
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inferences are to be drawn in its favor.
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242.
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On an issue as to which the nonmoving party will have the
See id.
If the moving party meets its initial
The evidence is viewed in the
Anderson, 477 U.S. at
It is not the court’s task “to scour the record in search of a
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genuine issue of triable fact.”
Keenan v. Allan, 91 F.3d 1275,
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1278 (9th Cir. 1996).
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support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026,
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1031 (9th Cir. 2001). The court "need not examine the entire file
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for evidence establishing a genuine issue of fact, where the
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evidence is not set forth in the opposition papers with adequate
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references so that it could conveniently be found."
Counsel have an obligation to lay out their
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Id.
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III. Discussion
To prove copyright infringement, a plaintiff must demonstrate
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(1) ownership of the allegedly infringed work and (2) copying of
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the protected elements of the work by the defendant. Narell v.
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Freeman, 872 F.2d 907, 910 (9th Cir. 1989); Three Boys Music Corp.
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v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000), cert. denied, 531
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U.S. 1126 (2000).
Here, Defendants do not dispute that STAR owns
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the 59705 design.
(Opp. at 8 n.3.)
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A plaintiff may prove copying or infringement by showing that
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1) the defendant had access to the protected work and 2) the two
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works are substantially similar.
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Even where there is no proof of access, however, a “striking
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similarity” between an allegedly infringing work and a protected
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work gives rise to an inference of copying.
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812 F.2d 421, 423 (9th Cir. 1987).
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favored on questions of substantial similarity in copyright cases.”
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Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir. 1990).
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“grant of summary judgment for plaintiff is proper where works are
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so overwhelmingly identical that the possibility of independent
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creation is precluded.”
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Inc., 715 F.2d 1327, 1330.
Three Boys, 212 F.3d at 481.
Baxter v. MCA, Inc.,
Summary judgment “is not highly
However, a
Twentieth Century-Fox Film Corp. v. MCA,
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A.
Access
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A plaintiff may show that a defendant had access to a work
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through direct evidence, or through circumstantial evidence that 1)
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a chain of events links the protected work and the defendant’s
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access to the work or 2) the work was widely disseminated.
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Attacks Ink, LLC v. MGA Entertainment Inc., 581 F.3d 1138, 1143
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(9th Cir. 2009).
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Art
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Here, there is no genuine issue as to defendants’ access to
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the 59705 design.
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access to the design, a sample of which it purchased in 2007.
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Subsequently, Kandy Kiss obtained fabric from Morex bearing a
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design of Kandy Kiss’s choosing.
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garments bearing that design and provided them to Target.
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chain of events constitutes circumstantial evidence that Morex and
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Target had access to the 59705 design.1
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B.
There is direct evidence that Kandy Kiss had
Kandy Kiss then manufactured
This
Substantial Similarity
To determine whether two works are substantially similar, the
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Ninth Circuit employs a two-part analysis — an extrinsic and an
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intrinsic test.
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specific expressive elements.
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F.3d 815, 822 (9th Cir. 2002).
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subjective comparison that focuses on “whether the ordinary,
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reasonable audience” would find the works substantially similar in
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the “total concept and feel of the works.”
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Pictures & Televison, 16 F.3d 1042, 1045 (9th Cir. 1994).
The “extrinsic test” is an objective comparison of
Cavalier v. Random House, Inc., 297
The “intrinsic test” is a
Kouf v. Walt Disney
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Here, both the extrinsic and intrinsic tests are easily met.2
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The observable elements in the 59705 design and the design printed
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on the offending garment are numerous, complex, and virtually
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identical.
The 59705 design displays intricate plant designs
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In their opposition, Defendants assert that STAR
disseminates its designs to numerous fabric printing companies in
Asia, and that Morex obtained the 59705 design from one of these
companies. (Opp. at 3.) Thus, even absent the chain of events
linking Morex and Target with the 59705 design, Morex and Target
had access to the design via what Defendants themselves acknowledge
to be wide dissemination of the design.
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Nowhere do Defendants assert that the two designs are not
substantially similar.
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featuring multiple leafy stems, flowers, and buds of different
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shapes and sizes.
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prominent fringed teardrop shape, within which are contained
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additional plant shapes, including dozens of different flowers of
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various configurations and sizes and stems bearing heart-shaped
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leaves of varying size.
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design are, in size, shape, proportion, layout, and indeed every
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aspect but coloration, identical to those in the protected work.
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No ordinary observer or reasonable juror could fail to conclude
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The 59705 design also displays a large,
The elements of the allegedly infringing
that the works are substantially similar.3
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C.
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Defendants assert that their affirmative defense of misuse of
Affirmative Defenses
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copyright and unclean hands warrant denial of Plaintiff’s motion
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for summary judgment.
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by virtue of copyright misuse prevents the copyright owner from
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asserting infringement and asking for damages when the infringement
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occurred by his dereliction of duty.”
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v. San Fernando Valley Board of Realtors, 786 F.2d 1400, 1408 (9th
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Cir. 1986).
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of copyright misuse, other circuits have recognized it as a use of
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copyright in a manner contrary to public policy.
(Opp. at 5.)
“The defense of unclean hands
Supermarket of Homes, Inc.
Though the 9th Circuit has yet to define the contours
MDY Industries,
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Having shown that Defendants had access to the 59705 design,
Plaintiff need not demonstrate a “striking similarity” between the
works. Smith v. Jackson, 84 F.3d 1213, 1220 (9th Cir. 1996).
“Striking similarity exists when two designs are so much alike that
the only reasonable explanation for such a great degree of
similarity is that the later work was copied from the first.”
Stewart v. Wachowski, 574 F.Supp.2d 1074, 1103 (C.D. Cal. 2005)
(internal quotations and alteration omitted). As suggested in the
court’s discussion of substantial similarity, the two works are
virtually identical. Reasonable minds could not differ on the
striking similarity, let alone the substantial similarity, of the
two designs at issue here.
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LLC v. Blizzard Entm’t, Inc., 629 F.3d 928, 941 (9th Cir. 2010);
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Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1090, (9th Cir.
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2005), citing Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d
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772, 792 (5th Cir. 1999); Practice Mgmt. Info. Corp. v. American
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Med. Ass’n, 121 F.3d 516, 520 (9th Cir. 1997), citing Lasercomb
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Am., Inc. v. Reynolds, 911 F.2d 970, 977-79 (4th Cir. 1990).
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Defendants assert that STAR has misused its copyright in the
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97905 design by having certain printing mills in China and Korea
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print the fabric that STAR supplies to customers.
(Opp. at 2.)
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STAR contracted with seven fabric suppliers or trading companies in
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Korean and China to provide fabric bearing STAR designs.
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Depo. at 62-65; Opp. At 3, Reply at 6.)
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then contract with factories in their own countries that actually
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produce fabric.
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names of the factories with which its trading company partners
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contract.
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(Haroni
Those fabric suppliers
(Haroni Depo. at 56:5-11.)
STAR does not know the
(Haroni Depo. at 60:15-18.)
When contracting with foreign trading companies, STAR informed
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those companies that STAR designs were not to be reproduced for
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anyone other than STAR.
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STAR sends to trading houses for reproduction bear stamps
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indicating that the designs belong to STAR.
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Dec. ¶ 12., Exhibit 8.)
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lists and invoices, indicate that STAR’s designs are copyrighted.
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(Supplemental Dec. ¶ 13.)
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copyright notifications, which are engraved by the trading
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companies and/or factories that manufacture the fabric for STAR.
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(Supplemental Dec. ¶ 14.)
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factories commonly do not have strict pattern controls, and that
(Haroni Depo. at 61:13-20.)
The designs
(Supplemental Haroni
All STAR documentation, such as packing
STAR’s physical fabrics bear physical
Nevertheless, STAR is aware that foreign
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these factories disseminate proprietary designs, including STAR
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designs, as their own.
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(Haroni Depo. at 65:15 - 67:23.)
Defendants argue that STAR has created a “cottage industry” of
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filing infringement lawsuits in violation of the public policy
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embedded in copyright.
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such, Defendants’ theory appears to be that STAR intentionally
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distributes its designs to foreign factories with the knowledge
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that those factories will disseminate STAR designs without
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authorization.
(Opp. at 3,6-7.)
Though not articulated as
Those unauthorized producers will then mislead
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customers, such as Defendant Morex, as to the provenance of a
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design.
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not copyrighted, proceed to innocently infringe, resulting in
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litigation by STAR.
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Factory customers will then, believing that a design is
Though such a theory is plausible to some degree, the evidence
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in the record does not establish that STAR intentionally subverts
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its own copyright in an attempt to ensnare innocent infringers.
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The only evidence Defendants put forth to support their claim is
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STAR’s ignorance of the names of the fabric manufacturers in Korea
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and China and knowledge that factories sometimes reproduce designs
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without authorization.
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has no contact with those manufacturers because STAR contracts with
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foreign trading companies, who then in turn source the work to the
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factories.
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seeks to protect its copyright through verbal admonitions against
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unauthorized reproduction, notification of design ownership on sale
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documentation, and physical indicia of design ownership on the
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fabric itself.
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find that STAR misused its copyright.
However, the evidence is clear that STAR
In its interactions with those trading companies, STAR
On such a record, no reasonable trier of fact could
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IV.
Conclusion
For the reasons stated above, Plaintiff’s Motion for Partial
Summary Judgment is GRANTED.
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IT IS SO ORDERED.
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Dated: September 22, 2011
DEAN D. PREGERSON
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United States District Judge
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