IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks - May 9, 2012


Table of Contents

L.A. Printex Industries, Inc. v. Aeropostale, Inc., USCA Ninth Circuit, April 9, 2012
 Click here for a copy of the full decision.

  • Ninth Circuit reverses district court’s grant of summary judgment in copyright action alleging that Aeropostale infringed upon registered textile design, finding genuine disputes of material fact on access and substantial similarity.

Plaintiff L.A. Printex Industries, Inc., a fabric printing company, registered a copyright in Small Flower Group A, a group of textile designs that includes a floral designed called C30020. Over a four-year period, plaintiff sold more than 50,000 yards of fabric bearing C30020 to its customers, who were fabric converters. After plaintiff discovered shirts bearing the Aeropostale trademark and a design similar to C30020, plaintiff sued Aeropostale for infringement of its copyright. Plaintiff then 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 date of registration. The Copyright Office subsequently approved plaintiff’s application for supplementary registration to remove the two previously published designs from Small Flower Group A. The district court granted summary judgment to defendants, holding that no genuine issue of material fact existed as to either defendant’s access to C30020 or substantial similarity between the allegedly infringing design on the Aeropostale shirts and C30020. On appeal, the Ninth Circuit reversed, finding that a reasonable jury could conclude that C30020 was widely disseminated in the fabric industry and that the two works were substantially similar.

To establish copying of constituent elements of the work that are original, in support of a copyright claim, plaintiff must show that the defendant had access to plaintiff’s work and that the two works are substantially similar. The Ninth Circuit found that the record was sufficient to create a genuine issue on access, including sales records showing that plaintiff sold more than 50,000 yards of C30020 before Aeropostale’s orders for the allegedly infringing shirts. After reviewing varying levels of distribution deemed to constitute “widespread dissemination” in other industries, the court found that, based on the sale of 50,000 yards of the plaintiff’s fabric design, “a reasonable jury could find that C30020 was widely disseminated in the Los Angeles-area fabric industry, hence that there was a ‘reasonable possibility’ that defendants had an opportunity to view and copy L.A. Printex’s design.” The court emphasized that the parties operate in the same industry, in the same city, and that the dissemination of C30020 occurred over a four-year period immediately preceding defendant’s alleged infringement.

Noting that determining whether the two works were substantially similar requires a two-part test, an extrinsic test, focusing on the articulable similarities between the two works, and an intrinsic test, focusing on whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works, the court found that, under the extrinsic test, objective similarities in the expressive elements of defendant’s design and C30020 presented a genuine dispute of material fact. Although C30030’s repeating pattern of bouquets of flowers and three-leaf branches is not protectible, acknowledged the court, plaintiff’s original selection, coordination, and arrangement of these elements is protectible. In addition, the court’s comparison of defendant’s allegedly infringing design and C30020 revealed objective similarities in protectible elements such as arrangement, color, patterns, shape, and number of flower petals. In light of these similarities, the court found that the differences noted by the district court did not compel a grant of summary judgment, but rather supported the finding of a genuine dispute of material fact on substantial similarity. Since it concluded that the competing designs presented a triable issue of fact under the extrinsic test, the court held that an application of the intrinsic test –a subjective and fact-oriented standard – would be improper at the summary judgment stage.

The court also rejected defendant’s argument the copyright registration for C30020 was invalid because Small Flower Group A was registered as an unpublished collection but included two designs that has been previously published. Although it acknowledged that the registration contained an error, the court concluded that the error neither invalidated the registration nor rendered the certificate of registration incapable of supporting an infringement action because no evidence existed that plaintiff knew that the two designs had been published at the time it submitted its application for copyright registration, or that it intended to defraud the Copyright office.


Harley v. Nesby, USDC S.D. New York, April 30, 2012
 Click here for a copy of the full decision.

  • District court grants summary judgment to plaintiff, song composer, finding substantial similarity between her song and the infringing work, based on court’s own auditory comparison of the recordings, and unrebutted assertions that defendants had access to the song.

Pro se plaintiff Peggy Harley brought suit against defendants Ann Nesby and Shanachie Entertainment Corporation, alleging that the Grammy-nominated song I Apologize, recorded in 2007 by Nesby and produced by Shanachie, infringed on plaintiff’s song It Will Never Happen Again. Plaintiff composed the song in 2002 and secured a copyright registration for it in January 2008.

On cross-motions for summary judgment, the court granted summary judgment to plaintiff on her copyright claim, finding no triable issue that defendants copied some portions of plaintiff’s song, including the key refrain. Basing its conclusion on its own “auditory comparison” of the songs, the court identified certain lyrics that infringed on plaintiff’s work, as well as substantial similarity in some, but not all, of the music, noting that it need not find substantial similarity in all of the lyrics or music in order to find copying occurred. The court found “unmistakable and substantial similarities between portions of It Will Never Happen Again and I Apologize,” and concluded that “[i]t defies credulity that It Will Never Happen Again (plaintiff's work) and I Apologize (Nesby's work) could bear the similarity they do without unlawful copying of some portion.”

The court rejected defendants’ argument that Nesby based I Apologize on a different musical composition, Never Meant to Hurt You, composed in 1990 by Roosevelt George and which George sang for Nesby in 1998. Once again, the court compared the Nesby recording with George’s song and found little or no similarity between the two works. The court also found no similarity between George’s song and plaintiff’s work, rejecting any argument defendants attempted to make that plaintiff had copied George’s song.

The court also held that defendants had failed to put forth any evidence rebutting plaintiff’s evidence that Nesby and Shanachie had access to her song in 2006. Plaintiff alleged that she provided copies of a 10-song CD, including It Will Never Happen Again, to Vaughn Harper, a radio personality and also a defendant in the suit, in 2006, and that Harper gave a copy of the CD to Nesby. Nesby recorded I Apologize in 2007, and Shanachie produced and distributed Nesby's CD entitled This Is Love, containing I Apologize the same year. Nesby’s CD included a special thanks to Vaughn Harper. Harper did not submit a declaration denying that he provided Harley’s song to Nesby and the court held that the chain of access was unrebutted.

The court concluded: “The timing as to the creation of plaintiff's work, the copies provided to Vaughn, the unrebutted statements that Vaughn provided the CDs to Nesby, and the recording of “I Apologize" are sufficient to show access. Defendants have failed to raise a triable issue of fact rebutting that evidence. Plaintiff composed her work in 2002, provided copies to Vaughn in 2006, and Nesby recorded “I Apologize" in 2007. Thus, there is no question of material fact that the allegedly infringing work was created after plaintiff's work.” 

For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Loeb & Loeb LLP | Attorney Advertising

Written by:


Loeb & Loeb LLP on:

JD Supra Readers' Choice 2016 Awards
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.