Desire, LLC v. Manna Textiles, Inc., No. 17-56641 (9th Cir. 2021)Annotate this Case
After Desire filed suit against various defendants for copyright infringement, the district court held that Desire owned a valid copyright in the fabric design that was the subject of the action (the Subject Design), and that the Subject Design was entitled to broad copyright protection. The jury returned a verdict for Desire, finding that Manna, ABN, and Top Fashion willfully infringed the Subject Design, and that Pride & Joys and 618 Main innocently infringed the Subject Design.
The Ninth Circuit held that the district court did not err in granting summary judgment in favor of Desire on the validity of its copyright and the scope of the Subject Design's copyright protection. The panel explained that the "similarity" of one design to another has no bearing on whether Desire "independently created" the subject design. Furthermore, defendants have also failed to introduce evidence that the Subject Design lacked the necessary "modicum of creativity" to be entitled to a valid copyright. The panel also held that the district court correctly extended broad copyright protection to the Subject Design. However, the panel held that the district court erred in permitting multiple awards of statutory damages. In this case, the district court correctly apportioned joint and several liability among the defendants, but the Copyright Act permits only one award of statutory damages here. Therefore, the panel affirmed in part, reversed in part, vacated the judgment awarding Desire multiple awards of statutory damages, and remanded for further proceedings.
Court Description: Copyright. The panel affirmed in part, reversed in part, and vacated a judgment in favor of the plaintiff and remanded for further proceedings in a copyright infringement action. The district court held, on summary judgment, that plaintiff, a fabric supplier, owned a valid copyright in a floral print textile design and that the design was entitled to broad copyright protection. A jury returned a verdict for plaintiff, finding that three defendants willfully infringed the design and a fourth innocently infringed it. Plaintiff elected to claim statutory damages in lieu of actual damages, and the district court assessed five statutory damages awards. Affirming in part, the panel concluded that plaintiff owned a valid copyright. The panel held that regardless of the design’s similarity to other designs, the design was * The Honorable William K. Sessions III, United States District Judge for the District of Vermont, sitting by designation. DESIRE V. MANNA TEXTILES 3 original because it was independently created. Further, the design possessed the necessary “modicum of creativity” to be entitled to a valid copyright. The panel also held that the district court correctly extended broad copyright protection to the design as a matter of law because the flowers and the arrangement of those flowers was stylized, the design was an original creation, and there is a wide range of expression for selecting, coordinating, and arranging floral elements in stylized fabric designs. Reversing in part, the panel held that the district court erred in permitting multiple awards of statutory damages. The panel held that the district court correctly apportioned joint and several liability among all defendants on the grounds that (1) where an upstream defendant causes a downstream defendant’s infringement, the upstream defendant is a joint tortfeasor in, and therefore jointly and severally liable for, the plaintiff’s harm caused by the downstream defendant’s conduct; and (2) where a downstream infringer’s conduct is not the legal cause of the upstream defendant’s infringement, the downstream infringer will not be responsible, jointly and severally, for the upstream defendant’s wrongdoing. Nonetheless, the Copyright Act permitted only one award of statutory damages under 17 U.S.C. § 504(c)(1) because defendants infringed only one work. The panel held that the Act did not authorize the district court to issue multiple statutory damages awards where one infringer was jointly and severally liable with all other infringers, but the other infringers were not completely jointly and severally liable with one another. The panel vacated the district court’s judgment awarding plaintiff multiple awards of statutory damages and remanded for further proceedings. 4 DESIRE V. MANNA TEXTILES Concurring in part and dissenting in part, Judge Wardlaw dissented from the majority’s conclusion that plaintiff was entitled to only one award of statutory damages against the five defendants whom the jury concluded separately infringed varying exclusive rights in copyright. Judge Wardlaw wrote that it was unnecessary for the majority to reach the question because none of the five separate, independently liable, copyright infringers was actually found jointly and severally liable with one another. Further, the majority’s rule was contrary to controlling Ninth Circuit precedent on statutory damages in copyright, was an atextual reading of the Copyright Act, and created perverse incentives for copyright litigation.