Family Dollar Stores, Inc. v. United Fabrics International, Inc.
896 F. Supp. 2d 223
S.D.N.Y.2012Background
- Family Dollar filed a declaratory judgment action challenging UFI's Mod Squad copyright as invalid and/or not infringed.
- UFI counterclaimed for direct and vicarious copyright infringement against Family Dollar and Prestige Global.
- UFI had registered an unpublished collection (VAu 978-345) containing the Mod Squad design and other designs, some published prior to registration.
- FD Defendants argued the registration was invalid because Mod Squad was published before the collection's registration, making the registration inappropriate for an unpublished collection.
- The court granted FD Defendants' summary judgment motions and granted their motion to withdraw admissions; it denied UFI's partial summary judgment and addressed potential supplementary registrations and amendments.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of UFI's unpublished collection registration | UFI argues registration covers Mod Squad as unpublished. | Registration wrongly included a published design; invalid as to Mod Squad. | Registration invalid; cannot support infringement claims for Mod Squad. |
| Proper service and withdrawal of admissions | FD Defendants admitted conduct by failure to respond to requests. | Admission requests were not properly served; consent to electronic service lacking. | Admissions withdrawn; service of requests void; withdrawal granted. |
| Effect of supplementary registration on viability | A Form CA supplementary registration could validate infringement claims. | Supplementary registration cannot cure a fundamentally invalid original registration. | Supplementary registration inadequate to salvage the Mod Squad claim; the case requires further briefing. |
| Ability to amend to include the Source Registration | Source Registration covers the underlying Mod Squad design; amendment should be allowed. | Late amendment to raise new theory is improper; not permitted. | UFI not permitted to amend to include the Source Registration; new theory rejected. |
Key Cases Cited
- L.A. Printex Indus. v. Aeropostale, 676 F.3d 841 (9th Cir. 2012) (unpublished-design inclusion in a collection registration can be addressed via supplementary registration)
- United Fabrics Int’l, Inc. v. C & J Wear, Inc., 630 F.3d 1255 (9th Cir. 2011) (unpublished collection registration concepts and publication requirements)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (S. Ct. 2010) (precondition to suit: registration requirement under 17 U.S.C. § 411(a))