Unicolors Inc v. Mangel Stores Corp et al

Filing 25

ORDER by Judge Otis D. Wright, II: granting 19 Application for Default Judgment and awards Unicolors a total amount of $5,905.00. A default judgment will issue. (lc). Modified on 11/25/2013. (lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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UNICOLORS, INC.,

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v.

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Case No. 2:13-cv-06152-ODW(FFMx)

Plaintiff,

ORDER GRANTING MOTION FOR
DEFAULT JUDGMENT [19]

MANGEL STORES CORP.; SUSIE’S
DEALS; RAINBOW SHOPS, INC.; CITI
TRENDS, INC.; DOES 1–10, inclusive,
Defendants.

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I.

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INTRODUCTION

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Plaintiff Unicolors, Inc. alleges that Defendant Susie’s Deals infringed

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Unicolor’s copyrighted GT 1058 fabric pattern. Despite being duly served, Susie’s

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Deals has failed to answer or otherwise respond to the Complaint. The Clerk entered

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default, and Unicolors moved for default judgment. The Court finds that the accused

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pattern and GT 1058 are substantially similar sufficient to constitute copyright

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infringement and thus GRANTS Unicolor’s Motion for Default Judgment.1
II.

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FACTUAL BACKGROUND

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Unicolors is a California corporation and textile converter that has compiled a

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library of copyrighted textile patterns. (Nader Decl. ¶¶ 3–4.) One of the copyrights

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After carefully considering the papers filed with respect to this Motion, the Court deems the matter
appropriate for decision without oral argument. Fed. R. Civ. P. 78; L.R. 7-15.

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Unicolors owns is a textile pattern internally titled GT 1058. (Id. ¶ 7; see also Ex. 2.)

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On October 27, 2009, Unicolors received United States Copyright Office Certificate

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of Registration number VA 1-712-891 for GT 1058. (Id. Ex. 1.)

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Unicolors believes that Susie’s Deals is a garment retailer incorporated in

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California. (Compl. ¶ 6.) At some point, Unicolors discovered that Susie’s Deals was

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selling garments with a design similar to that of GT 1058 (the “accused pattern”).

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(Nader Decl. ¶ 8.)

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manufactured, caused to be manufactured, imported, and distributed fabric infringing

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upon Unicolors’s GT 1058 registered copyright. (Compl. ¶ 15.) Unicolors purchased

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at least one shirt from Susie’s Deals with the accused pattern on April 30, 2012.

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(Nader Decl. Ex. 2.) Unicolors has not licensed GT 1058 to Susie’s Deals. (Id. ¶ 9.)

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Due to Susie’s Deal’s failure to participate in the litigation, Unicolors does not know

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from where the alleged infringing products originated. (Id. ¶ 9.)

Unicolors also alleges that Susie’s Deals created, sold,

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On August 21, 2013, Unicolors filed suit against, among others, Susie’s Deals,

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alleging claims for direct and vicarious or contributory copyright infringement of

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GT 1058. (ECF No. 1.) Unicolors served Susie’s Deals on September 6, 2013. (ECF

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No. 8.) On October 28, 2013, the Clerk of Court entered default against Susie’s

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Deals. (ECF No. 13.) Unicolors then moved for default judgment. As of the date of

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this Order, the Court has received no answer or other response from Susie’s Deals.

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III.

LEGAL STANDARD

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Federal Rule of Civil Procedure 55(b) authorizes a district court to grant default

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judgment after the Clerk enters default under Rule 55(a). Local Rule 55-1 requires

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that the movant submit a declaration establishing (1) when and against which party

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default was entered; (2) identification of the pleading to which default was entered;

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(3) whether the defaulting party is a minor, incompetent person, or active

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servicemember; and (4) that the defaulting party was properly served with notice.

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A district court has discretion whether to enter a default judgment. Aldabe v.

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Aldabe, 616 F.2d 1089, 1092 (9th Cir. 1980). Upon default, the defendant’s liability

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generally is conclusively established, and the well-pleaded factual allegations in the

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complaint are accepted as true. Televideo Sys., Inc. v. Heidenthal, 826 F.2d 915, 917–

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(9th Cir. 1977)).

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In exercising its discretion, a court must consider several factors, including

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(1) the possibility of prejudice to plaintiff; (2) the merits of plaintiff’s substantive

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claim; (3) the sufficiency of the complaint; (4) the sum of money at stake; (5) the

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possibility of a dispute concerning material facts; (6) whether the defendant’s default

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was due to excusable neglect; and (7) the strong policy underlying the Federal Rules

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of Civil Procedure favoring decisions on the merits. Eitel v. McCool, 782 F.2d 1470,

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1471–72 (9th Cir. 1986).
IV.

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A.

DISCUSSION

Notice

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Unicolors served Susie’s Deals with process on September 6, 2013, in the

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manner prescribed in California Code of Civil Procedure section 415.20. That section

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provides that a summons may be served by leaving the summons at a party’s office

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with someone apparently in charge and then thereafter mailing a copy of the summons

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via first-class mail. Unicolors’s process server left the summons with a woman

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apparently in charge at Susie’s Deals on September 6, 2013, and then mailed a copy of

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the summons on September 10, 2013. The Court therefore finds that Unicolors

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complied with Code of Civil Procedure section 415.20.

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B.

Copyright-infringement liability

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Unicolors first alleges that Susie’s Deals committed direct infringement of

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Unicolor’s GT 1058 registered copyright. To state a copyright-infringement claim,

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the plaintiff must allege “(1) ownership of a valid copyright, and (2) copying of

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constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel.

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Serv. Co. Inc., 499 U.S. 340, 361 (1991).

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Unicolors alleges that “it is apparent that that the elements, composition, color

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variations, arrangement, layout, and appearance” of GT 1058 and the accused pattern

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are substantially similar. (Compl. ¶ 16.) Unicolors also alleges that Susie’s Deals had

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access to GT 1058 via Unicolors’s showroom and design library, illegally distributed

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copies of GT 1058, legitimate copies of GT 1058 in the marketplace, and Unicolors’s

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strike-offs and samples. (Id. ¶ 23.) Further, Unicolors contends that Susie’s Deals

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committed contributory and vicarious infringement by inducing, participating in,

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aiding and abetting, and profiting from the illegal production and distribution of

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products infringing upon GT 1058 and having the right and ability to supervise

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infringing conduct. (Id. ¶¶ 31–32.)

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The Court finds that Unicolors has a valid, registered copyright in GT 1058.

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First, a copyright registration is prima facie evidence of a valid copyright. 17 U.S.C.

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§ 411(b)(1). Unicolors submitted its copyright registration for GT 1058, which the

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United States Copyright Office granted on October 27, 2009. (Nader Decl. Ex. 1.)

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Second, GT 1058 appears to portray copyrightable subject matter.

While

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clothes themselves are functional and thus not subject to copyright, fabric designs are

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considered “writings” and thus copyrightable under 17 U.S.C. § 102(a). Knitwaves,

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Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995). Unicolors has not

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claimed a copyright in any particular garment or other functional item but rather in GT

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1058’s two-dimensional pattern. Further, while Unicolors’s does not and cannot own

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a copyright in GT 1058’s colors or geometric elements themselves, 37 C.F.R.

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§ 202.1(a), it does have a copyright in the way its author has “selected, coordinated,

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and arranged” the colors, shapes, and GT 1058’s other design elements.

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Knitwaves, 71 F.3d at 1004 (holding that a valid fabric copyright covers more than

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just the “specific pattern” of work).

See

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When a plaintiff does not have direct evidence of copying, the plaintiff must

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establish both the defendant’s access to the copyrighted work and substantial

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similarity between the registered and accused works. Funky Films, Inc. v. Time

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Warner Entm’t Co., L.P., 462 F.3d 1072, 1076 (9th Cir. 2006). At this default-

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judgment stage, Unicolors’s allegations that Susie’s Deals had access to GT 1058 via

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several legitimate and illegal avenues suffice to establish the access element. See L.A.

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Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 846–47 (9th Cir. 2012) (noting

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that the plaintiff must allege access either through a chain of events linking the two

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works or widespread dissemination of plaintiff’s work); (Compl. ¶ 23).

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In assessing substantial similarity, the Ninth Circuit employs a two-part test.

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Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990). The plaintiff must show a

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substantial similarity of the work’s “general ideas” under the extrinsic test and

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substantial similarity of the “protectable expression” under the intrinsic test. Id. The

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Court finds that Susie’s Deal’s unlicensed sale or other distribution of the accused

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pattern satisfies both elements.

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The extrinsic test entails “an objective comparison of specific expressive

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elements.” Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002). A

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court must consider various elements in determining whether a fabric pattern infringes

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upon a registered design, including the subject matter, shapes, colors, materials, and

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arrangement of the representations. L.A. Printex Indus., 676 F.3d at 849.

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An objective comparison of GT 1058 and the accused pattern reveals a

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substantial similarity between the two patterns. GT 1058 contains blue/violet, purple,

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green, and brown rectangular bars arranged directly adjacent to each other in a

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horizontal fashion. The colors range in saturization from muted hues to stronger

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colors, all set against a near-black background. The bar design almost appears to be

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dripping, as each bar is juxtaposed at different lengths from the adjacent

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bars. See Figure 1.

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Figure 1

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The accused pattern includes the same color, range of saturization, arrangement,

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background hue and contrast, and offset design. The photographs provided to the

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Court reveal that the accused pattern may include more deeply saturized colors, i.e.,

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the colors appear brighter. But “it is not necessary that [the accused] design be

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‘virtually identical’ to infringe.” Id. at 851 (noting that stylized fabric designs are

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entitled to “broad” protection). The objective elements between the two works—

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including their general colors schemes—are in all other respects virtually identical.

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The alleged infringement also satisfies the Ninth Circuit’s intrinsic test. This

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test gauges whether “the total concept and feel of the two works is substantially

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similar” in the eyes of an ordinary, reasonable person. Berkic v. Crichton, 761 F.2d

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1289, 1292 (9th Cir. 1985). A quick view of both patterns reveals that the “concept

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and feel” are essentially the same.
The Court therefore finds that Susie’s Deals has infringed upon Unicolors’s

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valid copyright in GT 1058.

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C.

Statutory damages

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Without the aid of discovery, Susie’s Deals requests statutory damages under

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the Copyright Act. Under 17 U.S.C. § 504(c)(1), the court may award between $750

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and $30,000. In exercising its “wide discretion,” the court must consider the nature of

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the copyright and the circumstances of the infringement. F.W. Woolworth Co. v.

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Contemporary Arts, 344 U.S. 228, 232 (1952); L.A. News Serv. v. Reuters Television

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Int’l, Ltd., 149 F.3d 987, 996 (9th Cir. 1998). An award of statutory damages serves

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both compensatory and punitive purposes. Id.

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Unicolors requests $30,000 in statutory damages in order to compensate it for

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Susie’s Deal’s infringement and deter others like Defendant from committing similar

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infringement in the future.

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The Court is mindful that Unicolors is presented with a situation where it

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cannot adequately assess the extent of Susie’s Deals infringement, including

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Defendant’s total sales dollars and units sold of the accused pattern. Unicolors also

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cannot establish the extent of the distribution network from which the shirt bearing the

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accused pattern originated.

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But the only evidence of infringement Unicolors presented is the sale of one

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shirt at a discrete retail location. Congress has set a spectrum of statutory damages

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from $750 to $30,000 upon which the Court must place Susie’s Deal’s conduct while

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also considering compensatory and punitive goals. It is likely impossible to place an

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exact dollar figure on each act of infringement, but the Court finds that Susie’s Deals

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infringement falls toward the lower end of the spectrum. Bearing in mind the punitive

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goal of § 504, the Court adjusts the damage award slightly upward. The Court

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accordingly awards Unicolors $5,000.00 in statutory damages.

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D.

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Costs and attorneys’ fees
Under 17 U.S.C. § 505, the district court may also award costs and reasonable

attorneys’ fees. Unicolors seeks $205 in costs and $1,700 in attorneys’ fees.

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The Central District Local Rules provide a schedule for an attorneys’-fees

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award in default judgments. L.R. 55-3. The court may award a greater amount if the

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court determines that that amount is reasonable. Id.

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The schedule provides that, for a $5,000 default-judgment award, the plaintiff is

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entitled to $300 plus 10 percent of the amount over $1,000. See L.R. 55-3. Here, that

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calculation yields $700 in attorneys’ fees. Since Unicolors has not presented any

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supporting documentation regarding its attorneys’ fees or otherwise supported its

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request for a greater fee amount, the Court awards $700.00 in reasonable attorneys’

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fees as well as $205.00 in costs.
V.

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CONCLUSION

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For the reasons discussed above, the Court GRANTS Unicolors’s Motion for

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Default Judgment and awards Unicolors a total amount of $5,905.00. (ECF No. 19.)

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A default judgment will issue.

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IT IS SO ORDERED.

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November 25, 2013

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____________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE

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