IP Law Daily, COPYRIGHT—C.D. Cal.: Floral patterned garments not ‘strikingly similar’ to copyrighted pattern; infringement claims fail, (Feb 18, 2020)

By Robert B. Barnett Jr., J.D.

Plaintiff textile company was held to higher infringement standard because it could not proove that alleged infringers had access to the copyrighted pattern before the accused pattern was created.

In a suit in which Romex Textiles, Inc., alleged that apparel makers and sellers infringed its copyright in a floral design, the federal district court in Los Angeles has granted summary judgment in favor of the defendants because the arrangement and coordination of the two floral patterns were not "strikingly similar." Although Romex established that its copyright was valid, it was forced to satisfy the stringent "strikingly similar" standard in the absence of any evidence that Apollo or the other defendants had access to the copyrighted pattern (Romex Textiles, Inc. v. HK Worldwide, LLC, February 10, 2020, Lew, R.).

Background. Romex is a California corporation that owns a two-dimensional artwork called "AE_T1697" under the title of "AE Design Studio 3-31-2014." It depicts a floral pattern containing red roses on a black background. Romex sued Apollo Apparel, HK Worldwide d/b/a Hot Kiss, Ross Stores, R&R Goldman Associates d/b/a Discovery Clothing Company, Specialty Retailers, and Beall’s Outlet Stores for manufacturing, marketing, and selling garments containing red roses on a black background that Romex alleged violated its copyright. The defendants filed an early motion for summary judgment, alleging noninfringement, which was denied because questions of fact remained about substantial similarity. Following discovery, the defendants filed a new motion for summary judgment, alleging (1) an invalid copyright, (2) lack of access to the patent pattern, (3) independent creation, (4) lack of damages, and (5) lack of substantial similarity.

Invalid copyright. The court first rejected the defendants’ claim of copyright invalidity. A presumption of validity existed because Romex had evidence of copyright registration within five years of its suit being filed. Evidence that stock images depicted the same floral pattern did not establish that the design was unoriginal because the defendants did not show that Romex had access to the stock images before creating its design.

Lack of access. Given that the copyright was valid, the remaining question was whether the defendants copied the asserted design. Romex could prove it in one of two ways. The first was to establish that the two works were substantially similar and that Apollo had access to the work. The defendants’ witnesses, however, testified that they never had access to the copyrighted design and, in fact, that they had never heard of Romex, had never visited its website, and did not even know that Romex existed before the defendants created their own designs. Romex never presented any evidence to rebut those statements. The mere possibility that the defendants saw a fabric sample that Romex was known to distribute in New York, Los Angeles, and China was "mere speculation," in the court’s view. Without more, no juror could conclude that the defendants had access to the copyrighted pattern before the allegedly offending pattern was developed.

Striking similarity. In the absence of proof of access, Romex could also establish copyright infringement by showing a "striking similarity" between the two patterns. "Strikingly similar," the court said, "is a high bar." It means that "in human experience, it is virtually impossible that the two works could have been independently created." Courts in the Central District of California employ a two-part test to determine striking similarity, consisting of an extrinsic test (objective) and an intrinsic test (subjective, usually by the jury). The extrinsic test looks at protectable elements in the two works to see if they are similar. In a similar case, the Ninth Circuit found striking similarity because floral, leaf, and other elements of the parties’ respective designs were nearly identical. In this case, however, the court concluded that "the works are far from identical." Although a few similarities existed, they were not near enough to satisfy the high standard of "striking similarity." The roses, for example, contained different floral and leaf elements. They were arranged in different patterns and were positioned differently in relation to one another. As a result, Romex’s copyright infringement claim failed the extrinsic test and failed to establish "striking similarity."

The court, therefore, granted the defendants’ motion for summary judgment.

This case is No. 2:18-cv-06543-RSWL-AGR.

Attorneys: Chan Yong Jeong (Jeong & Likens, L.C.) for Romex Textiles, Inc. Marc S. Harris (Scheper Kim & Harris, LLP) and Philip A. Byler (Nesenoff & Miltenberg LLP) for Apollo Apparel NY, LLC, Ross Stores, Inc., R&R Goldman Associates, Inc. d/b/a Discovery Clothing Co., Beall's Outlet Stores, Inc., and Specialty Retailers, Inc.

Companies: Romex Textiles, Inc.; Apollo Apparel NY, LLC; Ross Stores, Inc.; R&R Goldman Associates, Inc. d/b/a Discovery Clothing Co.; Beall's Outlet Stores, Inc.; Specialty Retailers, Inc.

Cases: Copyright CaliforniaNews