Malibu Textiles, Inc. v. Label Lane International, Inc.
668 F. App'x 803
9th Cir.2016Background
- Malibu sued H&M for copyright infringement over a floral pattern used on an H&M garment.
- The district court granted H&M’s motion to dismiss Malibu’s complaint with prejudice for failing to state a claim.
- The district court faulted Malibu for not pleading a copyright registration number and for failing to allege copying (no showing of striking/substantial similarity or access).
- Malibu appealed the dismissal and H&M sought attorney’s fees in the district court; the court denied fees.
- The Ninth Circuit reviewed whether dismissal with prejudice was appropriate and whether H&M was entitled to attorney’s fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of pleading ownership (registration) | Malibu: omission of registration number is curable and does not mandate dismissal with prejudice | H&M: missing registration number means failure to plausibly allege ownership | Court: dismissal with prejudice was error; Malibu could amend to add registration number |
| Sufficiency of pleading copying (similarity/access) | Malibu: pattern is protectible; could plead similarity or access with more detail | H&M: complaint lacks allegations of striking/substantial similarity or access | Court: complaint deficient but amendment could cure by alleging protectible elements, side-by-side comparison, or facts showing access/widespread dissemination |
| Futility of amendment | Malibu: amendment would not be futile; facts can be added | H&M: amendment would be futile because claims are legally insufficient | Court: amendment would not be futile; district court abused discretion in denying leave to amend and dismissing with prejudice |
| Entitlement to attorney’s fees under 17 U.S.C. § 505 | Malibu: not applicable | H&M: sought fees after dismissal | Court: denial of fees affirmed because H&M is not a prevailing party on appeal |
Key Cases Cited
- Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522 (9th Cir. 2008) (leave to amend required unless amendment would be futile)
- Sid & Marty Krofft Television Prods. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977) (plaintiff must allege ownership of a valid copyright)
- Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000) (standards for proving copying: striking similarity or substantial similarity plus access)
- L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012) (describing how to plead protectible elements and use side-by-side comparisons)
- Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006) (prevailing-party status required to recover attorney’s fees under § 505)