Unicolors, Inc. v. Urban Outfitters, Inc.
2017 U.S. App. LEXIS 5675
| 9th Cir. | 2017Background
- Unicolors bought an artwork (QQ-692), modified it into a derivative design called PE1130 (the "Subject Design"), and registered the Flower 2008 collection with the Copyright Office, submitting an image labeled "QQ-692 (PE1130)."
- Unicolors sold ~14,000 yards of fabric printed with PE1130 between 2008–2011.
- Urban Outfitters (and buyer Century 21) produced a dress in 2010 whose fabric pattern (the "Accused Dress") closely resembled the Subject Design; Unicolors sent a cease-and-desist and sued for copyright infringement.
- The district court granted Unicolors summary judgment on infringement (finding the works substantially/strikingly similar and that PE1130 was properly registered) and a jury later found Urban willfully infringed; damages and fees were awarded.
- On appeal, Urban challenged (1) the district court’s use of the intrinsic test at summary judgment, (2) whether PE1130 was included in the registration, and (3) the sufficiency of evidence for willfulness; the Ninth Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether copying/substantial similarity can be decided on summary judgment | Works are overwhelmingly identical; independent creation precluded | Intrinsic test (subjective) must go to jury; summary judgment improper | Court may grant summary judgment when works are so strikingly similar that independent creation is precluded; affirmed summary judgment for Unicolors |
| Whether striking similarity alone can support inference of copying absent direct access | Striking similarity permits inference of copying; also showed broad dissemination (sales) | Need some evidence of access; striking similarity insufficient alone | Striking similarity can permit inference of copying absent direct access when similarity precludes other explanations; sales evidence also supported possible access |
| Whether PE1130 was properly registered as part of Flower 2008 | Submitted PE1130 image with application; registration of collection covers component works the registrant owns | PE1130 omitted from certificate and QQ-692 listed as excluded, creating a factual dispute | Registration valid: collective registration covers component works (Alaska Stock); exclusion of QQ-692 was a good-faith mistake and did not invalidate registration |
| Whether evidence supported jury finding of willful infringement | Urban acted with reckless policy—did not investigate origins of fabrics, kept swatches, bought art, and did not attempt to trace this design | It is unreasonable to require exhaustive searches; no evidence Urban knew it infringed | Substantial evidence supported willfulness via reckless disregard/willful blindness; verdict upheld |
Key Cases Cited
- Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983) (summary judgment appropriate where works are overwhelmingly identical)
- Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987) (striking similarity may permit inference of copying absent evidence of access)
- Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) (striking similarity can support inference of copying when it precludes other explanations)
- L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012) (if extrinsic test creates triable issue, intrinsic question goes to jury)
- Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673 (9th Cir. 2014) (collective-work registration can cover component works owned by registrant)
- Wash. Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668 (9th Cir. 2012) (willfulness requires actual knowledge or reckless disregard/willful blindness)
- Barboza v. New Form, Inc. (In re Barboza), 545 F.3d 702 (9th Cir. 2008) (recklessness can support willful infringement)