United Fabrics International, Inc. v. C&J Wear, Inc.
630 F.3d 1255
9th Cir.2011Background
- United holds a copyright to Ethnic Collection X, including the Design at issue.
- United sued Macy's and others for infringing the Design and related fabric/garment sales.
- The district court sua sponte dismissed for lack of standing, citing invalid ownership
- District court said the transfer from Contromoda to United did not prove ownership of the underlying design
- United argued presumption of validity and standing based on the copyright certificate and chain of title
- On appeal, the Ninth Circuit reversed, holding United had satisfied standing at this stage
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the copyright presumption govern standing? | United argues presumption proves ownership and standing | Macy's argues no standing without rebutting presumption | Presumption of validity applies; United may establish standing |
| Did Macy's rebut the presumption of validity to defeat standing? | United contends no need to rebut; presumption remains | Macy's failed to present evidence rebutting validity | Macy's failed to rebut; presumption stands |
| Is Ethnic Collection X a valid unpublished collection registration? | Collection meets § 202.3(b)(4) criteria for unpublished collection | Disputed registration status and sale/contemporaneous-distribution issues | At this stage, still valid as an unpublished collection |
| Does an inadvertent registration error invalidate the copyright? | Errors can be tolerated absent fraud | Registration error invalidates the claim | Registration error alone does not invalidate the copyright; not fraud |
Key Cases Cited
- S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) (presumption shifts burden to defendant to rebut validity)
- Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003) (defendant must offer some evidence to dispute the prima facie case)
- Szabo v. Errisson, 68 F.3d 940 (5th Cir. 1995) (unpublished collection criteria support registration of cohesive collection)
- Oregon v. Legal Servs. Corp., 552 F.3d 965 (9th Cir. 2009) (burden of proof to establish standing at successive stages)
- Forsberg v. Pac. Nw. Bell Tel. Co., 840 F.2d 1409 (9th Cir. 1988) (court will not supply missing evidence; presumption controls at stage)