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L.A. Printex Indus. v. Aeropostale, Inc.

United States Court of Appeals for the Ninth Circuit

December 5, 2011, Argued and Submitted, Pasadena, California; June 13, 2012, Amended

No. 10-56187



GOULD, Circuit Judge:

L.A. Printex Industries, Inc. ("L.A. Printex") appeals the district court's summary judgment order in favor of Aeropostale, Inc. and Ms. Bubbles, Inc. ("Defandants") in L.A. Printex's copyright infringement action. Because there are genuine disputes of material fact on access and substantial similarity, we reverse and remand.

L.A. Printex Industries, Inc. ("L.A. Printex") is a  [**2] Los Angeles-based fabric printing company. Ms. Bubbles is a Los Angeles-based wholesaler of men and women's apparel. Aeropostale is a mall-based retailer that purchases apparel from Ms. Bubbles and other vendors.

In 2002, Moon Choi, an L.A. Printex designer, created a floral design called C30020. Choi created this design by hand, using a computer. On July 17, 2002, the Copyright Office issued a certificate of registration for Small Flower Group A, a group of five textile designs that includes C30020. Small Flower Group A is registered as a single unpublished collection pursuant to 37 C.F.R. § 202.3(b)(4)(i)(B).

Between October of 2002 and May of 2006, L.A. Printex sold more than 50,000 yards of fabric bearing C30020 to its customers, who are fabric converters. Fabric converters show apparel manufacturers textile designs, obtain orders for selected designs, place orders for the designs with printing mills like L.A. Printex, and send printed fabric to manufacturers that then manufacture apparel for sale to retailers.

In 2008, L.A. Printex discovered shirts bearing the Aeropostale trademark and a design similar to C30020. According to Jae Nah, the President of L.A. Printex, the only difference  [**3] between C30020 and the design on the Aeropostale shirts is that the latter was "printed using cruder, lower-quality techniques and machinery." Aeropostale placed orders with Ms. Bubbles for the shirts in June of 2006, and it offered for sale and sold the shirts between September and December of 2006. The tags on the shirts say "Made in China." Ms. Bubbles, however, stated that it had no understanding or information about the party that created the design resembling C30020.

On April 8, 2009, L.A. Printex sued Defendants for infringement of its copyright in C30020. After bringing this infringement action, L.A. Printex became aware that its copyright registration for Small Flower Group A contained an error. Two of the five designs, but not C30020, had been published before the July 17, 2002 date of registration. On February 22, 2010, L.A. Printex filed an application for supplementary registration to add April 1, 2002 as the date of first publication for Small Flower Group A. L.A. Printex thereafter contacted the Copyright Office to ask about its registration of a single unpublished work that contained both published and unpublished designs. The Copyright Office told L.A. Printex that  [**4] the unpublished designs, including C30020, would retain copyright protection but that the previously published designs would not. On May 10, 2010, L.A. Printex filed a second application for supplementary registration to remove the two previously published  [*846]  designs from Small Flower Group A. On June 29, 2010, the Copyright Office approved L.A. Printex's application and issued a certificate of supplementary registration for Small Flower Group A; it states February 25, 2010 as the effective date of supplementary registration.

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676 F.3d 841 *; 2012 U.S. App. LEXIS 12033 **

L.A. PRINTEX INDUSTRIES, INC., a California Corporation, Plaintiff-counter-defendant-Appellant, v. AEROPOSTALE, INC., a New York Corporation; MS. BUBBLES, INC., a California Corporation, Defendants-Appellees.

Subsequent History: Application denied by L.A. Printex Indus. v. Aeropostale, 2013 U.S. Dist. LEXIS 5372 (C.D. Cal., Jan. 11, 2013)

Prior History:  [**1] Appeal from the United States District Court for the Central District of California. D.C. No. 2:09-cv-02449-JFW-FMO. John F. Walter, District Judge, Presiding.

L.A. Printex Indus. v. William Carter Co., 2010 U.S. Dist. LEXIS 130529 (C.D. Cal., Dec. 1, 2010)L.A. Printex Indus. v. Aeropostale, 2010 U.S. Dist. LEXIS 46951 (C.D. Cal., May 5, 2010)L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 2012 U.S. App. LEXIS 7079 (9th Cir. Cal., 2012)


designs, registration, flowers, infringement, fabric, substantially similar, Defendants', leaves, summary judgment, color, district court, disseminated, similarities, shirts, supplementary, copying, genuine dispute, bouquets, invalid, stems, material fact, registered, extrinsic, patterns, printing, floral, registration certificate, coordination, apparel, genuine issue of material fact

Civil Procedure, Appeals, Summary Judgment Review, Standards of Review, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Genuine Disputes, Copyright Law, Civil Infringement Actions, Elements, Copying by Defendants, Ownership, Copying by Defendants, Access, Evidence, Admissibility, Circumstantial & Direct Evidence, Substantial Similarity, General Overview, Extrinsic Tests, Intrinsic Tests, Need for Trial, Standards for Granting Summary Judgment, Protected Subject Matter, Graphic, Pictorial & Sculptural Works, Deposit & Registration Requirements, Registration, Application Requirements, Ownership Rights, Reproductions, Scope of Copyright Protection, Subject Matter, Intrinsic Tests, Ordinary Observer Test, Error & Misstatement Correction, Copyright Infringement Actions, Registration Certificates, Publication, Acts Constituting Publication