The U.S. Court of Appeals for the Ninth Circuit recently reversed and remanded a district court’s grant of summary judgment in a copyright infringement action over fabric design, concluding that genuine issues of material fact existed with respect to access and substantial similarity. L.A. Printex Industries, Inc. v. Aeropostale, Inc., Case No. 10-56187 (9th Cir., Apr. 9, 2012) (Gould, J.).

L.A. Printex, a Los Angeles-based fabric printing company, designed a floral pattern and registered it with the U.S. Copyright Office. L.A. Printex discovered that Aeropostale, a mall-based clothing retailer, was selling shirts bearing a floral design allegedly similar to that created and registered by L.A. Printex. Mrs. Bubbles, Inc., a Los Angeles-based apparel wholesaler, supplied the shirts to Aeropostale. L.A. Printex sued Aeropostale and Mrs. Bubbles for infringement of its copyrighted floral design. The district court granted summary judgment in favor of defendants, holding that there was no genuine issue of material fact regarding the defendants’ non-access to the plaintiff’s copyrighted design, as well as that the design between the parties’ fabrics went only to the unprotectable idea of small-scale floral patterns. L.A. Printex appealed.

The 9th Circuit reversed. Absent direct evidence of copying, the court explained that a copyright plaintiff can demonstrate infringement by showing that the defendant had access to the copyrighted material and that there is a substantial similarity between the works. First, the court noted that L.A. Printex raised a genuine dispute of material fact as to access. Proof of access requires “an opportunity to view or to copy plaintiff’s work.” Evidence that a copyrighted work was widely disseminated can prove access. The Court found that L.A. Printex’s sale of more than 50,000 yards of fabric bearing its floral design qualified as “widespread dissemination.” Further, as L.A. Printex and Mrs. Bubbles both operate in the Los Angeles apparel industry, the court found it conceivable that Mrs. Bubbles had an “opportunity to view and copy” the plaintiff’s design.

Second, noting that summary judgment is “not highly favored” on questions of substantial similarity in copyright cases, the 9th Circuit found that a genuine dispute of material fact as to substantial similarity existed under the “extrinsic” (or objective) test for substantial similarity. The court noted that a reasonable juror could find that the parties’ floral designs are substantially similar, due to objective similarities in the pattern, arrangement and color arrangement of the flower bouquets in the design. Turning to the “intrinsic text” of substantial similarity, which is a subjective comparison focusing on whether an “ordinary, reasonable observer” would find the works substantially similar, the Ninth Circuit concluded that that in this instance, the determination was not appropriate for summary judgment and must be decided by a jury.

On this basis, the 9th Circuit reversed the district court’s grant of summary judgment in favor of the defendants and remanded the case for further proceedings.

Practice Note: Once a copyright plaintiff has established a triable issue of fact as to objective similarities between the works at issue, the substantial similarity analysis is no longer suitable for summary judgment and should be submitted to a trier of fact.