United Fabrics International, v. C&J Wear, Inc., et al

Filing

FILED OPINION (J. CLIFFORD WALLACE, SUSAN P. GRABER and RICHARD MILLS) REVERSED AND REMANDED. Judge: JCW Authoring, FILED AND ENTERED JUDGMENT. [7624711]

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FOR PUBLICATION

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
UNITED FABRICS INTERNATIONAL,
INC., a California Corporation,
Plaintiff-Appellant,
v.
C&J WEAR, INC., a California
Corporation individually and doing
business as “Justified”; S-TWELVE,
a Business Entity of Form
Unknown; WEAR WELL KNIT
CORPORATION, a Tennessee
Corporation; GROOVE THEORY, a
Business Entity of Form
Unknown,
Defendants,
and
MACY’S, INC. an Ohio Corporation
Erroneously Sued As Macy’s
Retail Holdings, Inc.; A. R. B.
INC., a New York Corporation;
LUCKY KIM INTERNATIONAL, INC., a
California Corporation,
Defendants-Appellees.





No. 09-56499
D.C. No.
2:08-cv-01085-JVSAJW
OPINION



Appeal from the United States District Court
for the Central District of California
James V. Selna, District Judge, Presiding
Argued and Submitted
November 2, 2010—Pasadena, California
Filed January 26, 2011
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UNITED FABRICS v. C&J WEAR, INC.

Before: J. Clifford Wallace and Susan P. Graber,
Circuit Judges, and Richard Mills, Senior District Judge.*
Opinion by Judge Wallace

*The Honorable Richard Mills, Senior District Judge for the Central
District of Illinois, sitting by designation.

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UNITED FABRICS v. C&J WEAR, INC.

COUNSEL
Scott A. Burroughs (argued) and Stephen M. Doniger, of
Doniger/Burroughs APC, Culver City, California, for
plaintiff-appellant United Fabrics International, Inc.
Mark L. Eisenhut, Melinda Evans, and Scott P. Shaw
(argued), of Call & Jensen, P.C., Newport Beach, California,
for defendants-appellees Macy’s Retail Holdings, Inc. and
A.R.B., Inc.

OPINION
WALLACE, Senior Circuit Judge:
United Fabrics International, Inc. (United) holds a copyright to a collection of fabric designs entitled “Ethnic Collec-

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tion X.” One of the fabric designs within that collection (the
Design), and the collection itself, are the focus of this appeal.
United sued C&J Wear, Inc., Lucky Kim International, Inc.
and Macy’s, Inc. (collectively, Macy’s) for infringing its
copyright in the Design. United alleged that Macy’s sold
copyright-infringing fabric and garments. United’s action
made it as far as the summary judgment phase, at which point
the district court dismissed the case sua sponte, concluding
that United lacked standing to pursue its copyright claims.
The district court ruled that United failed to establish an element that is crucial to all copyright infringement actions:
ownership of a valid copyright. According to United, it purchased a fabric design from an Italian design house, Contromoda, through an agent, Sergio Giacomel. United then
modified the purchased design and registered it as part of Ethnic Collection X. The district court held that the evidence of
the transfer of the source artwork from Contromoda to United
was insufficient to establish ownership of the underlying
design and, for that reason, dismissed the action: “United has
not clearly established the chain of title giving it rights in the
source artwork and, in turn, the subject matter that was
derived from it. United therefore lacks standing.” The district
court also held that United’s copyright registration was
invalid because United failed to publish its fabric designs concurrently, a requirement of a published single-work copyright
that consists of a collection of works.
United appeals the district court’s order dismissing this
case. We have jurisdiction pursuant to 28 U.S.C. § 1331. We
review de novo the district court’s dismissal for lack of standing, Rattlesnake Coalition v. EPA, 509 F.3d 1095, 1100 (9th
Cir. 2007), and we reverse.
I.
[1] A copyright registration is “prima facie evidence of the
validity of the copyright and the facts stated in the certifi-

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cate.” 17 U.S.C. § 410(c); see also S.O.S., Inc. v. Payday,
Inc., 886 F.2d 1081, 1085 (9th Cir. 1989). Macy’s therefore
has the burden of rebutting the facts set forth in the copyright
certificate. S.O.S., 886 F.2d at 1085-86 (explaining that section 410(c)’s presumption shifts the burden of coming forward with evidence to the defendant); see also Lamps Plus,
Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144 (9th
Cir. 2003). “ ‘To rebut the presumption [of validity], an
infringement defendant must simply offer some evidence or
proof to dispute or deny the plaintiff’s prima facie case of
infringement.’ ” Lamps Plus, Inc., 345 F.3d at 1144, quoting
Entm’t Research Grp., Inc. v. Genesis Creative Grp., Inc.,
122 F.3d 1211, 1217 (9th Cir. 1997).
[2] Macy’s argues that United failed to establish the chain
of title to the underlying artwork and therefore does not have
a valid copyright. But Macy’s skips a step; nowhere does it
set forth facts that rebut the presumption of validity to which
United’s copyright is entitled, and Macy’s does not even
argue that it has rebutted that presumption. The district court’s
ruling suffers from the same defect. Although such evidence
may be present in the lengthy and extensive record, it is not
our place to find it, see Forsberg v. Pac. Nw. Bell Tel. Co.,
840 F.2d 1409, 1418 (9th Cir. 1988), or to provide an argument on behalf of Macy’s as to how that evidence rebuts the
presumption of validity, see Renderos v. Ryan, 469 F.3d 788,
800 (9th Cir. 2006), citing Acosta-Huerta v. Estelle, 7 F.3d
139, 144 (9th Cir. 1992); Fed. R. App. P. 28(b).
It is true that, at oral argument, counsel for Macy’s asserted
that it had rebutted the presumption of copyright validity. But,
when we asked Macy’s attorney to identify evidence in the
record sufficient to rebut the presumption of copyright validity, he merely argued, inter alia, that a United representative
testified at a deposition that its designs “were not published
as a true collection” and that “there is also no evidence that
[these designs] met the requirements of an unpublished collection.” Counsel also asserted that Macy’s introduced evi-

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dence “that the transfer was completely invalid,” but to
support this assertion, he did nothing more than contend that
United failed to provide evidence of the transfer. By repeatedly mentioning that United provided “no evidence,” we are
skeptical that Macy’s understands that it bears the burden of
providing “some evidence” of invalidity. Regardless, Macy’s
cites no authority that such facts rebut the presumption of
copyright validity.
[3] Thus, Macy’s does not get very far with its argument
that United’s copyright is invalid because “[United] did not
produce any evidence that the person who assigned the
[D]esign was a ‘duly authorized agent.’ ” United did not have
to produce any evidence. As the copyright claimant, United is
presumed to own a valid copyright, 17 U.S.C. § 410(c), and
the facts stated therein, including the chain of title in the
source artwork, are entitled to the presumption of truth. 3 M.
NIMMER & D. NIMMER, NIMMER ON COPYRIGHT § 12.1 [C]
(2005). By failing to point to any evidence indicating that the
copyright was invalid, see, e.g., Lamps Plus, 345 F.3d at
1144, Macy’s has failed to rebut the presumption.
[4] The district court similarly ignored the statutory presumption of copyright validity when it reasoned that “[t]he
burden to show standing is not a mere pleading requirement,
but rather an indispensable part of the plaintiff’s case.” No
cases were cited to us, and we are not aware of any authority,
stating that the presumption of validity of a copyright does not
apply when standing is at issue. Indeed, such cases do not
exist because this rule would render 17 U.S.C. § 410(c)’s presumption of copyright validity meaningless.
[5] Of course, our conclusion that United is presumed to
own a valid copyright of the Design is not tantamount to holding that United in fact owns a valid copyright. That issue may
still need to be resolved as this case moves forward. Nevertheless, at this stage of the litigation, United has satisfied its
burden of proof to establish standing by introducing its copy-

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rights. See Oregon v. Legal Servs. Corp., 552 F.3d 965, 969
(9th Cir. 2009) (“The plaintiff bears the burden of proof to
establish standing with the manner and degree of evidence
required at the successive stages of the litigation” (internal
quotation marks omitted)). Because of our holding, we need
not discuss United’s argument that the district court’s sua
sponte dismissal of its claim violated its due process rights, or
its argument that Macy’s did not have standing to challenge
the transfer of rights in the Design.
II.
[6] The presumption-of-validity analysis likewise applies
to the argument, pressed by Macy’s, that the Design was not
deposited with the United States Copyright Office. Macy’s
contends that “[United] bore the burden of proving that it
complied with the Copyright Act in order to have standing to
sue or seek damages or attorney fees.” Again, Macy’s skips
a step. It needs first to rebut the presumption of copyright
validity with “some evidence or proof to dispute or deny the
plaintiff’s prima facie case of infringement,” see Lamps Plus,
345 F.3d at 1145 (internal quotation marks omitted), before it
can shift the burden. Because Macy’s did not offer such proof,
its insufficient-deposit argument must fail, at least at this
juncture of the litigation. See, e.g., Fonar Corp. v. Domenick,
105 F.3d 99, 104 (2d Cir. 1997) (challenge to deposit with
Copyright Office did not defeat presumption of validity).
III.
[7] The district court also dismissed United’s action
because United failed to register its collection of fabric
designs in a single copyright. When one registers a collection
of works in a single copyright, it can be registered either as
a “published” or an “unpublished” collection. 37 C.F.R.
§ 202.3(b)(4). A necessary element of a published-collection
copyright is that the collection is sold, distributed or offered
for sale concurrently. Id.; 17 U.S.C. § 101. For an unpub-

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lished collection, there is no such requirement. See 37 C.F.R.
§ 202.3(b)(4)(i)(B).
United contends that it registered its collection of fabric
designs as an unpublished collection of works. The definition
of this type of copyright registration is:
[T]he following shall be considered a single work:
...
(B) In the case of unpublished works: all copyrightable elements that are otherwise recognizable as selfcontained works, and are combined in a single
unpublished “collection.” For these purposes, a combination of such elements shall be considered a “collection” if:
(1) The elements are assembled in an orderly form;
(2) The combined elements bear a single title identifying the collection as a whole;
(3) The copyright claimant in all of the elements, and
in the collection as a whole, is the same; and
(4) All of the elements are by the same author, or, if
they are by different authors, at least one of the
authors has contributed copyrightable authorship to
each element.
Registration of an unpublished “collection” extends
to each copyrightable element in the collection and
to the authorship, if any, involved in selecting and
assembling the collection.
37 C.F.R. § 202.3(b)(4).
[8] Very few cases have considered the unpublishedcollection-of-works category of copyright registrations. One

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case that did is Szabo v. Errisson, 68 F.3d 940 (5th Cir. 1995),
abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010). There, the copyright claimant
registered a single unpublished collection of works entitled
“Scott Szabo’s Songs of 1991.” Id. at 941. In a footnote, the
Fifth Circuit explained that “ ‘Scott Szabo’s Songs of 1991’
satisfies [the unpublished single-work] requirements because
it was assembled in an orderly form with a single title identifying the collection as a whole, and Szabo is the sole author
and copyright claimant of the individual songs in the collection.” Id. at 941 n.1. We agree with the Fifth Circuit’s
approach, which is consistent with the text of section
202.3(b)(4). Because it appears Ethnic Collection X meets the
criteria set forth in section 202.3(b)(4), we conclude, at this
stage of the litigation, that United has registered a valid copyright in an unpublished collection of works.
IV.
[9] Finally, Macy’s argues that United’s copyright is
invalid because it submitted a copyright application that did
not list the Design as a derivative work. This argument cannot
be accepted because, in the absence of fraud on the Copyright
Office, such errors are not cause for invalidation. See, e.g.,
Lamps Plus, 345 F.3d at 1145 (“inadvertent mistakes on registration certificates do not invalidate a copyright and thus do
not bar infringement actions, unless . . . the claimant intended
to defraud the Copyright Office by making the misstatement”
(internal quotation marks omitted)). Because Macy’s has not
shown fraud on the Copyright Office, its argument on this
issue fails.
REVERSED AND REMANDED.