Universal Dyeing & Printing, Inc. v. US Textile Printing, Inc. et al

Filing 179

ORDER by Judge Dean D. Pregerson DENYING Plaintiff's Motion for Summary Judgment 146 and GRANTING Defendants Motion for Summary Adjudication as to Issues 153 . (jp)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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UNIVERSAL DYEING & PRINTING,
INC., a California
corporation ,

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Plaintiff,
v.
US TEXTILE PRINTING, INC.;
ROSS STORES, INC.; UNO
CLOTHING, INC.; CNC
CLOTHING/ dba: CANDY RAIN ,

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Defendants.
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Case No. CV 09-09132 DDP (VBKx)
ORDER GRANTING DEFENDANTS’ MOTION
FOR SUMMARY JUDGMENT AND DENYING
PLAINTIFF’S MOTION FOR SUMMARY
JUDGMENT
[Motions filed on August 26, 2011
and August 27, 2011]

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Plaintiff Universal Dyeing & Printing, Inc. (“Universal”)

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alleges that Defendants US Textile Printing, Inc. (“USTP”), Uno

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Clothing, Inc. (“UNO”), and Ross Stores, Inc. (“ROSS”)

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(collectively “Defendants”) infringed two textile designs, for

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which they hold the copyright.

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cross motions for summary judgment as to both designs.

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reviewing the papers submitted by the parties, considering the

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arguments therein, and hearing oral arguments, the court GRANTS

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Defendants’ motion and DENIES Plaintiff’s motion.

Plaintiff and Defendants filed
After

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I.

Legal Standard

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Summary judgment is appropriate where "the pleadings, the

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discovery and disclosure materials on file, and any affidavits show

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that there is no genuine issue as to any material fact and that the

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movant is entitled to a judgment as a matter of law."

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P. 56(c); see also Celotex Corp. v. Catrett , 477 U.S. 317, 324

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(1986).

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non-moving party, and all justifiable inferences are to be drawn in

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its favor.

Fed. R. Civ.

The evidence is viewed in the light most favorable to the

Anderson, 477 U.S. at 255.

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A genuine issue exists if "the evidence is such that a

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reasonable jury could return a verdict for the nonmoving party,"

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and material facts are those "that might affect the outcome of the

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suit under the governing law."

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fact exists "[w]here the record taken as a whole could not lead a

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rational trier of fact to find for the non-moving party."

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Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574,

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587 (1986).

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Id. at 248.

No genuine issue of

It is not enough for a party opposing summary judgment to

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"rest on mere allegations or denials of his pleadings."

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477 U.S. at 259.

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pleadings to designate specific facts showing that there is a

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genuine issue for trial.

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existence of a scintilla of evidence" in support of the nonmoving

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party's claim is insufficient to defeat summary judgment.

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Anderson, 477 U.S. at 252.

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Anderson,

Instead, the non-moving party must go beyond the

Celotex, 477 U.S. at 325.

The "mere

The Ninth Circuit has expressed disfavor for summary judgment

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on questions of substantial similarity, but explained that “it is

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nevertheless appropriate to grant summary judgment if, considering
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the evidence and drawing all inferences from it in the light most

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favorable to the nonmoving party, no reasonable jury could find

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that the works are substantially similar in idea and expression.”

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Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991).

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II.

Discussion

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A.

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Universal is a Los Angeles based printing mill that markets to

Background

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the apparel industry textile designs for use on fabrics.

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Amended Complaint (“FAC”) ¶ 2.)

(First

Universal is the copyright

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registrant of Copyright Certificate No. UA-12291.

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alleges that Defendant “adopted, copied, reproduced, manufactured,

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distributed and/or sold” textiles, i.e. clothes, with Universal’s

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copyrighted design.

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infringement under 17 U.S.C. § 501. (Id. ¶¶ 28-34.)

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(Id.) Universal

Universal seeks relief for copyright

Defendants move for summary adjudication of Universal’s claim

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that Defendants have infringed Design UA-12291 and Design UA-13022.

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Defendants contend that there is no substantial similarity between

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the designs and garments at issue, that their designs were

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independently created and copyrighted, and that they are entitled

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to summary adjudication as to the Design UA-12291 and the Design

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UA-13022 in their favor.

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Plaintiff also moves for summary adjudication of its claims.

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Plaintiff maintains that Defendants have admitted to copying

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Plaintiff’s designs and that, therefore, Plaintiff is entitled to

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summary judgment in its favor.

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8:11-20.)

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B.

(Pl.’s Motion for Summary Judgment

Copyright infringement

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3

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To prove copyright infringement, a plaintiff must demonstrate

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(1) ownership of the allegedly infringed work and (2) copying of

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the protected elements of the work by the defendant. Narell v.

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Freeman, 872 F.2d 907, 910 (9th Cir. 1989).

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is difficult to prove, a plaintiff can satisfy the second element

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by demonstrating that (a) the defendant had access to the allegedly

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infringed work and (b) the two works are substantially similar in

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both idea and expression of that idea.

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Corp., 927 F.2d 440, 442 (9th Cir. 1991).

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i.

Because direct copying

Pasillas v. McDonald's

Access

“Proof of access requires an opportunity to view or to copy

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plaintiff's work.”

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482 (9th Cir. 2000) (internal quotation omitted).

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has been defined as a “reasonable” possibility that Defendants

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viewed Plaintiff's Design.

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776-77 (C.D. Cal. 1981). “[A] bare possibility is insufficient to

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create a genuine issue of whether” Defendants copied Universal’s

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design.

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Three Boys Music Corp. v. Bolton, 212 F.3d 477,
“Opportunity”

Jason v. Fonda, 526 F. Supp. 774,

Id. at 777.

Universal argues as a preliminary matter that it need not

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prove access because Defendants have admitted to copying

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Universal’s designs.

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evidence to support this allegation.

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asserts, with no further detail or support, that “Defendant []

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admitted to the copying.”

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9:19.)

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record in its eleven-page motion for summary judgment in its favor.

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Defendant, on the other hand, denies any allegation that Defendant

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admitted to copying Plaintiff’s designs.

Universal, however, cites absolutely no
Rather, Universal baldly

(Pl.’s Motion for Summary Judgment

Indeed, Universal does not make a single citation to the

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(See Decl. Woo ¶ 3.)

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Because Universal has not produced any direct evidence that

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Defendants had access to Design UA-12291 or Design UA-13022 when

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they created the allegedly infringing garments, the court proceeds

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to consider whether circumstantial evidence supports a finding that

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Defendants had access to the designs.

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reasonable access is proven in one of two ways: (1) a particular

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chain of events is established between the plaintiff's work and the

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defendant's access to that work . . . or (2) the plaintiff's work

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has been widely disseminated.”

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“Circumstantial evidence of

Three Boys Music, 212 F.3d at 482.

Universal does not present any evidence that Defendants had

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access to Design UA-12291 or Design UA-13022 through any particular

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chain of events.

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generously, perhaps argue that Design UA-12291 and UA-13022 have

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been in wide enough dissemination that access can be inferred.

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Universal does, construing its motion quite

In Three Boys, the Ninth Circuit found that substantial

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evidence supported a jury's finding of access where the copyrighted

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song enjoyed significant radio airplay over 20 years.

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212 F.3d at 483-85.

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Entertainment, Inc., 581 F.3d 1138, 1144 (9th Cir. 2009), the Ninth

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Circuit found that no widespread dissemination existed, despite the

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fact that the tee-shirt design at issue in that case was available

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at a display booth, on individuals wearing the tee-shirt, and via

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the internet.

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1170, 1178 (9th Cir. 2003), the Ninth Circuit found there was no

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evidence of widespread dissemination of a video even though 19,000

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copies were sold over a 13-year period.

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that Universal has failed to raise any genuine issue of material

Three Boys,

However, in Art Attack Ink, LLC v. MGA

Similarly, in Rice v. Fox Broadcasting Co., 330 F.3d

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5

Here, the court concludes

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fact with respect to whether Defendants had access to Design UA-

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12291 or UA-13022 through wide dissemination.

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The court proceeds to consider whether the two works are

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substantially similar in both idea and expression of that idea.

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The court notes that even if Plaintiff had offered admissible

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evidence in support of its allegations of direct copying and

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access, the court must still proceed to consider substantial

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similarity.

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1175-78 (C.D. Cal. 2001) (proceeding to consider “substantial

See Idema v. Dreamworks, Inc., 162 F. Supp. 2d 1129,

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similarity” in a copyright action where defendants did not refute

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allegations of direct access and copying).

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similarity, there can be no infringement.

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Corp., 66 F. Supp. 2d 1129, 1140-41 (E.D. Cal. 1999) (explaining

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that even if the plaintiff in that case “did have evidence of

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direct copying . . . he still remains unexcused from demonstrating

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the requisite similarity”).

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ii.

Without substantial
See Berkla v. Corel

Substantial similarity

To determine whether two works are substantially similar, the

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Ninth Circuit employs a two-part analysis — an extrinsic and an

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intrinsic test.

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specific expressive elements.

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F.3d 815, 822 (9th Cir. 2002).

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subjective comparison that focuses on “whether the ordinary,

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reasonable audience” would find the works substantially similar in

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the “total concept and feel of the works.”

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Pictures & Televison, 16 F.3d 1042, 1045 (9th Cir. 1994).

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applying the two-part test, this court “inquire[s] only whether

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‘the protectable elements, standing alone, are substantially

The “extrinsic test” is an objective comparison of
Cavalier v. Random House, Inc., 297
The “intrinsic test” is a

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Kouf v. Walt Disney
In

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similar’ and “filter[s] out and disregard[s] the non-protectable

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elements.”

Cavalier, 297 F.3d at 822.

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The court turns, therefore, to consider first whether Design

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UA-12291 is substantially similar to Ross Product SKU 7879, which

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contains Defendants’ design W-20039.

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that no reasonable jurist could find substantial similarity between

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the two textile patterns, Defendants are entitled to summary

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judgment in their favor as to Design UA-12291.

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Because the court concludes

The garment and Plaintiff’s Design UA-12291 are indeed

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similar; however, the two are not substantially similar.

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observable elements of Universal’s design are: incomplete circle

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motifs; circle motifs that interlock and overlap each other,

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generally with a small circle and larger circle; brush stroke

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effect background, which is not consistent in color and width;

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areas of white background with no brush stroke effect; and

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overlapping circles that are split roughly in half by distinct

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coloration.

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Defendant’s garment are: circle motifs; circle motifs that

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interlock and overlap; enclosed diamond motifs; interlocking

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diamond motifs; concentric diamond motifs; brush stroke effect

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background, which is consistently vertical but varies in width; and

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a range of colors that includes dark greens, olive, and blues.

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(Id., Ex. D.)

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(See Keller Decl., Ex. B.)

The

The observable elements of

The two patterns do share some common elements – in

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particular, they share a brush stroke background – however, they

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are readily identifiable as distinct in their particulars.

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Defendants’ design does not contain incomplete circle motifs.

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Universal’s circles are colored in such a way as to split the color
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within the circles.

Defendants’ design has no such variation in

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coloration within its circles.

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none of Defendants’ circles or diamonds appear “filled in.”

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Defendants’ design has diamond shapes and Universal’s does not.

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The background brush strokes, while similar in technique, are not

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themselves similar.

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down the pattern within a particular stroke; Defendants’ individual

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strokes are significantly more uniform on the vertical axis.

That is, unlike Universal’s design,

Universal’s strokes vary in width as one moves

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The court proceeds to consider whether Design UA-13022 is

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substantially similar to Ross Products SKU 8548 and SKU 3903, which

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contains Defendants’ design W-20057 (i.e. the “water color

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design”).

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could find substantial similarity between the two textile patterns,

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Defendants are entitled to summary judgment in their favor as to

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Design UA-13022.

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Because the court concludes that no reasonable jurist

Plaintiff’s Design UA-13022 and Defendants’ garment SKU 8548

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do share an initial appearance of similarity.

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involve swaths of color or brush strokes.

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Summary Judgment, Ex. 5.)

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strokes that end in a blunt flat top.

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in contrast, end in jagged ends.

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two-toned.

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strokes are also patchy and thin in places, causing the background

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color to come through the brush stroke in places.

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brush strokes are more solid and contain fewer places of perceived

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transparency.

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similar.

(See Defs.’ Motion for

Plaintiff’s design, however, has brush
Defendants’ brush strokes,

Defendants’ brush strokes are

Plaintiffs are monotone.

(Id.)

Both patterns

(Id.)

Plaintiff’s brush

Defendants’

The two patterns are not substantially

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In sum, because no reasonable person could find that the two

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designs share substantial similarities with the garments at issue

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and because there is no evidence of Defendants’ access to

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Universal’s Design UA-12291 or UA-13022, Defendants are entitled to

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summary judgment as to Universal’s claims related to infringement

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of Design UA-12291's and UA-13022's copyright.

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III.

Conclusion

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For the reasons stated above, the court GRANTS Defendants’

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Motion for Summary Adjudication as to Issues and DENIES Plaintiff’s

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Motion for Summary Judgment as to Plaintiff’s Claims.

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IT IS SO ORDERED.

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Dated: September 13, 2011
DEAN D. PREGERSON
United States District Judge

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