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 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 Small Flower Group A is registered as a single unpublished collection pursuant to 37 C.F.R. § 202.3(b)(4)(i)(B).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 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 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
L.A. Printex and Defendants filed cross-motions for summary judgment. The district court granted Defendants' motion for summary judgment and denied L.A. Printex's motion, holding that there was no genuine issue of material fact as to (1) Defendants' access to C30020 or (2) substantial similarity between the allegedly infringing design on the Aeropostale shirts and C30020. The district court did not address Defendants' alternative argument that L.A. Printex's copyright registration was invalid because of the two previously published designs that were initially included in Small Flower Group A. Defendants then moved for attorneys' fees, and the district court granted their motion. L.A. Printex timely appealed to this court.
We have jurisdiction under 28 U.S.C. § 1291. We review the district court's grant of summary judgment de novo. Ellison v. Robertson, 357 F.3d 1072, 1075 (9th Cir.2004). Summary judgment is appropriate if, viewing the evidence in the light most favorable to the nonmoving party, "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(a); Ellison, 357 F.3d at 1075. A genuine dispute is "one that could reasonably be resolved in favor of either party." See Ellison, 357 F.3d at 1075.
To establish copyright infringement, a plaintiff must prove two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
The district court granted summary judgment for Defendants because it concluded that there was no genuine issue of material fact as to the second element, Defendants' copying of original elements of C30020.
"Because direct evidence of copying is not available in most cases," a plaintiff can establish copying by showing (1) that the defendant had access to the plaintiff's work and (2) that the two works are substantially similar. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir.1996). L.A. Printex offered no direct evidence that Defendants copied C30020. To survive summary judgment, it had to show a genuine issue of material fact as to both access and substantial similarity. L.A. Printex contends that the district court erred in holding that there was no genuine issue as to either access or substantial similarity. We agree.
"Proof of access requires `an opportunity to view or to copy plaintiff's work.'" Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir.2000) (quoting Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977)). "To prove access, a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work." Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1143 (9th Cir.2009). Absent direct evidence of access, a plaintiff can prove access using circumstantial evidence of either (1) a "chain of events" linking the plaintiff's
L.A. Printex seeks to prove access by showing that C30020 was widely disseminated. The district court held that there was no genuine issue of material fact as to Defendants' access because, it found, "the only evidence of widespread dissemination" was Jae Nah's declaration stating that L.A. Printex first sold C30020 in October of 2002 and that L.A. Printex "produced and sold thousands of yards of fabric bearing [Design Number C30020] to numerous customers from 2002-2008." The district court concluded that "such vague and conclusory statements certainly create no more than a `bare possibility' that Defendants may have had access to Plaintiff's Design Number C30020" and that a "bare possibility" is insufficient to create a genuine issue on access.
However, Nah's declaration statements were not the only evidence of widespread dissemination. The record also contained a printout, attached as an exhibit to Nah's declaration, entitled "Sales by Item Detail" for the period from January 1, 2002 through August 12, 2009. The printout is a list of invoices for C30020 and shows, for each invoice, the date, invoice number, brief description, customer name, quantity, and dollar amount. Only fabric sold before Defendants' alleged infringement is relevant. The sales records show that L.A. Printex sold more than 50,000 yards of C30020 through May of 2006, before Aeropostale's June orders for the allegedly infringing shirts.
We must decide whether L.A. Printex's sale of more than 50,000 yards of fabric bearing C30020 creates a genuine dispute of material fact as to whether C30020 was widely disseminated. We conclude that it does.
The evidence required to show widespread dissemination will vary from case to case. In Three Boys Music Corp. v. Bolton, the plaintiffs argued that their song — one that did not "even make the top 100 for a single week" and was not released on an album or CD before the defendants created their allegedly infringing song — had been widely disseminated during the defendants' teenage years. 212 F.3d at 483. They offered the testimony of three disc jockeys regarding the song's airtime on radio and television. Id. We upheld the jury's finding of access "[d]espite the weaknesses of the [plaintiffs'] theory of reasonable access" but indicated that we "might not [have] reach[ed] the same conclusion as the jury regarding access." Id. at 484-85. In Rice v. Fox Broadcasting Co., we stated that because the plaintiff's video "only sold approximately 17,000 copies between 1986 and 1999," it could not be considered "widely disseminated." 330 F.3d 1170, 1178 (9th Cir.2003). In Art Attacks Ink, LLC v. MGA Entertainment, Inc., we held that the plaintiff had not widely disseminated its T-shirt designs, even though the designs were displayed (1) at fair booths and kiosks, (2) on persons wearing the T-shirts, and (3) on the internet. 581 F.3d at 1144. Noting, among other things, that the plaintiff sold only 2,000 T-shirts bearing the designs per year, we held, "A reasonable jury could not have concluded that there
The circumstances here differ from those of our prior cases, and so those cases, though instructive, are not dispositive. In Rice, the dissemination occurred worldwide, over a thirteen-year period. 330 F.3d at 1173. In Art Attacks Ink, the respective parties sold different goods, T-shirts and dolls. 581 F.3d at 1142. In contrast, L.A. Printex and Ms. Bubbles operate in the same industry in the same Los Angeles area. L.A. Printex, a fabric printing company, sold more than 50,000 yards of fabric bearing C30020 to fabric converters. It is a reasonable inference that many or most of these purchasers were in the Los Angeles area. Apparel vendors like Ms. Bubbles purchase fabric from fabric printing companies and fabric converters. In addition, the dissemination of C30020 occurred over a four-year period immediately preceding Defendants' alleged infringement. A reasonable jury could find that C30020 was widely disseminated in the Los Angeles-area fabric industry, and hence that there was a "reasonable possibility" that Defendants had an opportunity to view and copy L.A. Printex's design. See Art Attacks Ink, 581 F.3d at 1143; Three Boys Music, 212 F.3d at 482; see also Peel & Co. v. Rug Mkt., 238 F.3d 391, 397 (5th Cir.2001) (holding that plaintiff rug wholesaler had raised genuine issue as to whether its designer rug "was widely disseminated among those involved in the United States rug trade"). We hold that L.A. Printex raised a genuine dispute of material fact on access.
To determine whether two works are substantially similar, we apply a two-part test. Smith, 84 F.3d at 1218. The "extrinsic test" is an "objective comparison of specific expressive elements"; it focuses on the "articulable similarities" between the two works. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (quoting Krofft, 562 F.2d at 1164). The "intrinsic test" is a subjective comparison that focuses on "`whether the ordinary, reasonable audience' would find the works substantially similar in the `total concept and feel of the works.'" Id. (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir.1994)).
Summary judgment is "not highly favored" on questions of substantial similarity in copyright cases. Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir.1990) (quoting Narell v. Freeman, 872 F.2d 907, 909 (9th Cir.1989)). Summary judgment is appropriate "if the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the non-moving party, that no reasonable juror could find substantial similarity of ideas and expression." Id. (quoting Narell, 872 F.2d at 909-10). "Where reasonable minds could differ on the issue of substantial similarity, however, summary judgment is improper." Id.
The district court compared the copy of C30020 that L.A. Printex deposited with the Copyright Office to Defendants' allegedly infringing shirts and concluded that "no reasonable juror could find that the two works are substantially similar." The district court reasoned that the "observable similarities" between the designs were "of a surface nature only," in that "both designs represent small-scale overall floral patterns of approximately the same size." The district court then stressed "several critical differences" between the designs: (1) the flowers, stems, and leaves on C30020 are "far more detailed" than those on the allegedly infringing shirts,
Notwithstanding these observations by the district court, our comparison of C30020 and Defendants' allegedly infringing design leads us to conclude that a reasonable juror could find that the two designs are substantially similar.
First, we apply the extrinsic test. Because copyright law protects expression of ideas, not ideas themselves, we distinguish protectible from unprotectible elements and ask only whether the protectible elements in two works are substantially similar. See Cavalier, 297 F.3d at 822. In comparing fabric designs, we examine the similarities in their "objective details in appearance," including, but not limited to, "the subject matter, shapes, colors, materials, and arrangement of the representations." See id. at 826 (comparing "art works").
Original selection, coordination, and arrangement of unprotectible elements may be protectible expression. See Feist Publ'ns, 499 U.S. at 362, 111 S.Ct. 1282; Cavalier, 297 F.3d at 826-27; Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir.2002) ("Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection."). For this reason, the Second Circuit has rejected the argument that, "in comparing [fabric] designs for copyright infringement," a court must "dissect them into their separate components, and compare only those elements which are in themselves copyrightable." Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995) ("[I]f we took this argument to its logical conclusion, we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past." (internal quotation marks omitted)). In Knitwaves, Inc. v. Lollytogs Ltd., the court concluded that the defendant's "Leaf and Squirrel sweaters" were substantially similar to the plaintiff's sweaters, citing, among other things, the defendant's selection of "the same two fall symbols," leaves and squirrels, and its arrangement of the symbols "as felt appliques stitched to the sweaters' surface," "on strikingly similar backgrounds," and "in virtually the same color scheme." Id. at 1004. Similarly, in Hamil America, Inc. v. GFI, the Second Circuit held that the defendant's and plaintiff's floral patterns were substantially similar because "GFI ha[d] duplicated Hamil America's selection of clustered flowers and leaves, its coordination of these elements in particular spatial combinations, and its arrangement of these design elements on a tossed pattern that appears in repeat." 193 F.3d 92, 103 (2d Cir.1999). More specifically:
Id. at 102.
Though the Second Circuit's "ordinary observer" and "more discerning ordinary observer" tests differ somewhat from our two-part extrinsic/intrinsic test for substantial similarity,
C30020 is a repeating pattern of bouquets of flowers and three-leaf branches.
Our comparison of Defendants' allegedly infringing design and C30020 reveals objective similarities in protectible elements. Both patterns feature two types of small bouquets of flowers, one featuring the largest flower in profile view, the other featuring the largest flower in an open-face view, and both emerging from three buds. Both patterns also depict small, three-leaf branches interspersed between the two types of bouquets. The shape and number of the flower petals and leaves are similar in the two designs. See Hamil Am., 193 F.3d at 102. The two types of bouquets are arranged at similar angles in both designs, and the bouquets and branches are coordinated in similar spatial combinations on a grid of similar scale and layout. See id. at 103.
Moreover, the color arrangement of C30020 in white/berry is markedly similar to the color arrangement of Defendants' design. Though mere variations of color are not copyrightable, and L.A. Printex's copyright in C30020 is for the design rather than a specific color arrangement, the similarities in color arrangements are probative of copying. See 37 C.F.R. § 202.1(a); Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1094 (2d Cir.1974) ("The appearance in one of defendant's fabrics of colors identical to plaintiff's is additional evidence of actual copying, as well as another factor leading to the conclusion that the aesthetic appeal of the fabrics is the same." (internal quotation marks, citation, and alteration omitted)); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.14 (Matthew Bender rev. ed. 2011) ("[S]imilarity of color arrangements may create an inference of copying of other protectible subject matter.").
The differences noted by the district court do not compel the conclusion that no reasonable juror could find that Defendants' design is substantially similar to C30020. Rather, in light of the similarities described above, the differences support the opposite conclusion, that there is a genuine dispute of material fact on substantial similarity. See 4 Nimmer on Copyright § 13.03[B][1][a] ("It is entirely immaterial that, in many respects, plaintiff's and defendant's works are dissimilar, if in other respects, similarity as to a substantial element of plaintiff's work can be shown.").
It is true that the flowers, stems, and leaves in Defendants' design are less detailed than those in C30020, and that Defendants' design does not use multiple shades of color to give the flowers and leaves definition as does C30020. But a rational jury could find that these differences result from the fabric-printing process generally and are "inconsequential," see F.W. Woolworth Co. v. Contemporary Arts, Inc., 193 F.2d 162, 165 (1st Cir.1951), or could credit Jae Nah's assertion that these differences result in part from "print[ing] using cruder, lower-quality techniques and machinery," cf. Peel & Co., 238 F.3d at 397-98 (finding genuine issue of material fact on substantial similarity where plaintiff claimed that differences between two rugs were "relatively small" and "consistent with shortcuts taken to make a cheap copy"). Moreover, because we conclude that stylized fabric designs like C30020 are properly entitled to "broad" copyright protection, it is not necessary that Defendants' design be "virtually identical" to infringe. See Mattel, 616 F.3d at 914.
At the intrinsic stage, "we ask, most often of juries, whether an ordinary reasonable observer would consider the copyrighted and challenged works substantially similar." Mattel, 616 F.3d at 914. But on a summary judgment motion, a court's attempt to apply this subjective and fact-oriented standard, bypassing decision by the trier of fact, is not correct. See, e.g., Shaw, 919 F.2d at 1359 (holding that in copyright action involving literary works, satisfaction of extrinsic test is sufficient to survive summary judgment on issue of substantial similarity).
Defendants contend that even if the district court erred in concluding that there was no genuine dispute of material fact on access or substantial similarity, summary judgement was proper on the alternative ground that L.A. Printex's copyright registration in C30020 is invalid. We may affirm a grant of summary judgment "on any grounds supported by the record." Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1143 (9th Cir.2003). But the record does not show that L.A. Printex's copyright registration is invalid. Defendants are not entitled to summary judgment on this alternative ground.
Copyright registration is a precondition to filing a copyright infringement action. 17 U.S.C. § 411(a); Reed Elsevier, Inc. v. Muchnick, ___ U.S. ___, 130 S.Ct. 1237, 1241, 176 L.Ed.2d 18 (2010). "A certificate of registration satisfies the [registration requirement], regardless of whether the
A copyright owner may file an application for supplementary registration "to correct an error in a copyright registration or to amplify the information given in a registration." 17 U.S.C. § 408(d); 37 C.F.R. § 201.5. "The information contained in a supplementary registration augments but does not supersede that contained in the earlier registration," 17 U.S.C. § 408(d), and the earlier registration is not "expunged or cancelled," 37 C.F.R. § 201.5(d)(2).
The Copyright Act permits the registration of multiple works as a single work. 17 U.S.C. § 408(c)(1). For purposes of registration as a single work, copyright regulations distinguish between published works and unpublished works. See 37 C.F.R. § 202.3(b)(4)(i). A published collection of works must be "sold, distributed or offered for sale concurrently." United Fabrics Int'l, Inc. v. C & J Wear, Inc., 630 F.3d 1255, 1259 (9th Cir.2011). For unpublished works, "there is no such requirement." Id. A group of unpublished works may be registered as a single work if it consists of "all copyrightable elements that are otherwise recognizable as self-contained works, and are combined in a single unpublished `collection.'" 37 C.F.R. § 202.3(b)(4)(i)(B).
Defendants argue that L.A. Printex's copyright registration is invalid because Small Flower Group A was registered as an unpublished collection but included two designs that were published before the work was registered. L.A. Printex argues that its erroneous inclusion of the two previously published designs in Small Flower Group A does not invalidate its registration because it did not intend to defraud the Copyright Office and because the Copyright Office allowed L.A. Printex to correct the error in its earlier registration through a supplementary registration. We agree with L.A. Printex.
We
37 C.F.R. § 202.3(b)(4)(i).