Malibu Textiles, Inc. v. Label Lane International, Inc.
922 F.3d 946
9th Cir.2019Background
- Malibu Textiles sued Label Lane, Entry, and H&M for copying two registered lace designs (Designs 1967 and 1717), collectively the "Subject Work."
- The district court originally dismissed Malibu’s complaints with prejudice; this Court reversed, directing Malibu to plead additional similarity and access allegations.
- On remand Malibu filed amended complaints adding detailed similarity allegations and side‑by‑side images but initially omitted access allegations; parties sought leave to file corrected complaints with access allegations via stipulation and redlines, which the district court denied in a one‑sentence order.
- The district court again dismissed with prejudice, concluding most similarities were unprotectable or inconsequential and that Malibu failed to plausibly allege access; it denied H&M’s fee request.
- The Ninth Circuit reviewed de novo and reversed: it held Malibu plausibly alleged ownership and that the post‑remand complaints sufficiently pled striking similarity; the court also held the district court abused its discretion by denying leave to amend access allegations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of registered copyright | Malibu alleged valid registered copyrights for Designs 1967 and 1717 and that the suit is based on the underlying artistic expression | Defendants argued plaintiff relied on an undefined "Subject Work" not the registered deposits | Malibu plausibly alleged ownership of valid registrations; shorthand labeling did not defeat the claim |
| Striking similarity (inference of copying) | Patterns are nearly identical in floral elements and arrangement; side‑by‑side images show similarities beyond common floral motifs | Similarities are unprotectable natural or functional elements of lace; apparent differences show independent creation | Allegations and images sufficiently plead striking similarity at pleading stage; dismissal on this ground was error |
| Substantial similarity + access; denial of leave to amend | Proposed amended complaints (with access allegations) alleged distribution, showroom exposure, extensive production and mills, and sales in same markets—giving defendants reasonable opportunity to copy | Defendants contended Malibu failed to plead plausible access | Denial of leave to amend was an abuse of discretion; proposed amendments plausibly alleged access |
| Attorney fees for H&M | N/A (cross‑appeal) | H&M sought fees under 17 U.S.C. § 505 after district court denied them | Cross‑appeal for fees is moot because reversal means H&M is not prevailing party |
Key Cases Cited
- Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522 (9th Cir. 2008) (dismissal with prejudice appropriate only if amendment cannot cure complaint)
- Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (elements required to plead copyright infringement; extrinsic/intrinsic test guidance)
- Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir. 2017) (registration requirement to maintain infringement suit)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012) (extrinsic test for design similarity; selection/arrangement of elements protectable)
- Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003) (distinguishing protection of original selection/arrangement from unprotectable natural elements)
- Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904 (9th Cir. 2010) (scope of copyright protection — broad vs. thin based on range of expression)
- Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000) (striking similarity doctrine and access requirement)
- DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015) (protection for original and derivative elements)
- Fourth Estate Pub. Benefit Corp. v. Wall‑Street.com, LLC, 139 S. Ct. 881 (2019) (registration as prerequisite to suit)
- Gompper v. VISX, Inc., 298 F.3d 893 (9th Cir. 2002) (standard for reviewing denial of leave to amend)
- Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025 (9th Cir. 2008) (refusal to grant leave to amend without reason is abuse of discretion)