Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 1 of 8 Page ID #:371
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`No. CV 07-05395-VBK
`FINDINGS OF FACT AND CONCLUSIONS
`OF LAW
`
`))))))))))
`
`ROYAL PRINTEX, INC.,
`Plaintiff,
`
`v.
`UNICOLORS, INC., et al.,
`Defendants.
`
`INTRODUCTION
`This is a copyright case concerning a daisy flower design, which
`was printed onto fabric and made into items of clothing, which were in
`turn sold to consumers. Royal Printex, Inc., a California corporation
`(“Royal”), claims declaratory relief re: non-infringement against
`Defendants and Counterclaimants Unicolors, Inc. (“Unicolors”). Royal
`also claims that Unicolors engaged in unfair competition. Unicolors
`raises the affirmative defenses of failure to state a cause of action;
`fraud and deceit of Plaintiffs; unclean hands; and fault of Plaintiff.
`Unicolors counterclaims for copyright infringement and contributory
`infringement against Royal, Comma Design, Inc., d.b.a. Julia (“Comma”)
`and Rainbow Apparel, Inc. (“Rainbow”)(the counterclaims against Comma
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 2 of 8 Page ID #:372
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`and Rainbow are for contributory infringement).
`The matter proceeded to bench trial on June 9, 10 and 12, 2009.
`The Court now issues its Findings of Fact and Conclusions of Law.
`
`FINDINGS OF FACT
`On December 15, 2006, the U.S. Copyright Office (“Copyright
`1.
`Office”) received and registered a number of works, consisting of
`approximately 60 pattern designs, submitted by Unicolors (identified as
`“Unicolors Studio”). The date of first publication was identified as
`December 4, 2006. The pattern at issue in this case is contained within
`that registration, identified as VA 1-392-580, and the pattern bears the
`number 611135. It is, generally, a daisy flower design with a polka-dot
`background (“daisy design”).
`2.
`From on and after December 15, 2006, Unicolors sold,
`advertised and published the daisy design to potential customers.
`3.
`On or about December 15, 2006, Counter-Defendant, K-Pak
`Clothing, Corp., a California corporation (“K-Pak”)1 received a computer-
`aided design (“CAD”) bearing a flower and dot design (“flower design”)
`from one of its customers, known as Rue-21. K-Pak requested that Royal
`print the flower design from the CAD onto fabric for one of K-Pak’s
`customers. K-Pak never represented to Royal that either it or any party
`possessed a copyright registration on the flower design.
`4.
`From approximately December 2006, K-Pak placed several orders
`with Royal to print the flower design onto approximately 1,900 yards of
`fabric for one of K-Pak’s customers. In January 2007, Royal delivered
`the fabric bearing the flower design to K-Pak. Thereafter, K-Pak sold
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`A default judgment was previously entered against K-Pak.
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 3 of 8 Page ID #:373
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`fabric bearing the flower design to one of its customers.
`5.
`From January 2007 through approximately March 2007, Royal
`printed the flower design onto approximately 16,500 yards of fabric, and
`sold fabric bearing that design to two of its customers, Comma and J&K
`Textile, Inc., a California corporation (“J&K”).
`6.
`In March 2007, Comma and J&K fashioned the fabric with the
`flower design into garments which were sold to Rainbow Apparel, Inc.
`(“Rainbow”), and L.C. Purchasing, doing business as Miry Collection,
`Inc., a California corporation (“Miry”), and The Zenobia, Inc., a
`California corporation (“Zenobia”).
`7.
`In March and May 2007, Unicolors discovered garments bearing
`the flower design in the store or in the possession of Rainbow and Miry.
`Between May and June, 2007, Unicolors sent cease and desist letters to
`Miry and to Royal, alleging infringement of the daisy design.
`8.
`In April 2007, Unicolors sent a cease and desist letter to
`Rainbow. As a result, Rainbow ceased selling garments bearing the
`flower design, and thereafter refused to honor its contractual
`commitments with Comma to pay for the garments.
`9.
`On May 18, 2009, Comma and Royal entered into a settlement
`agreement and mutual release by which Royal paid Comma the sum of
`$75,000 as a compromised amount that Comma was unable to collect from
`Rainbow as a result of this lawsuit.
`10. The flower design and the daisy design are essentially
`identical. The design of the flower in both the flower design and the
`daisy design is of a six-petaled daisy flower, with a center round
`pistil, a short stem, and a small leaf emanating from that stem. The
`six petals, the stem, and the small leaf are each shadowed, and the
`resulting flower in both designs repeats in a manner in which the stems
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 4 of 8 Page ID #:374
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`are turned at different angles to each other, and the flowers are
`relatively equidistant from each other. The background in each of the
`designs is a generic polka-dot (“polka-dot”) pattern.
`11. The predominant part of the overall design of both the daisy
`design and the flower design consists of the actual flowers depicted in
`the design, and the placement of the flowers in a repetitive pattern.
`12. Flower designs on fabrics have existed for at least hundreds
`of years, as evidenced by various texts admitted into evidence (Exhibits
`[“Exs.”] 2-6.)
`13. Exhibit 6 is a text entitled “Forties Fabrics,” authored by
`Joy Shih, published in 1997. On page 50 of that text, in the upper
`right corner, is a flower design (“forties flower design”). The
`caption, which the Court has considered for the truth of the matter
`asserted, states, “Flowers shadowed in black, on ticking stripe
`background, cotton chintz. Spring 1949.”
`14. In the forties flower design, the size, appearance and design
`of the actual flowers, including their repetitive placement in the
`design, are essentially identical to the design of the flowers and the
`repetitive placement of the flowers in both the daisy design and the
`flower design. The only difference is that in the forties flower
`design, the background is of a ticking stripe, while in the daisy design
`and the flower design, the background consists of polka-dots.
`
`15. The Court does not accord any credibility to the testimony
`offered at trial by Unicolors that the daisy design is an entirely
`original creation done by Unicolors’ design staff. The testimony of the
`Unicolors representative regarding this issue was, at best, ambiguous.
`No particular designer was identified, nor were any records produced
`evidencing the originality of the design. The Court finds that the
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 5 of 8 Page ID #:375
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`flowers, and their repetitive placement, in both the daisy design and
`the forties flower design are so identical that no reasonable conclusion
`can be drawn but that Unicolors copied the flowers, and their repetitive
`placement, from the forties flower design into the daisy design, and
`simply substituted polka-dots for the ticking stripe background. The
`forties flower design existed, certainly, as of 1997, the date of
`publication of the text “Forties Fabrics,” and as early as Spring 1949.2
`
`CONCLUSIONS OF LAW
`To prevail on a claim of copyright infringement, a party must
`1.
`establish: (1) ownership of a valid copyright, and (2) copying of
`constituent elements of the work which are original. Feist Publ’ns,
`Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282 (1991);
`Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996).
`2.
`A certificate of copyright registration constitutes prima
`facie evidence of copyright ownership. See 17 U.S.C. §410(c).
`3.
`Submission of a certificate of registration by the copyright
`holder shifts to the alleged infringer the burden of proving invalidity.
`Entm’t Research Group, Inc. v. Genesis Creative Group, 122 F.3d 1211,
`1217 (9th Cir. 1997).
`4.
`In order to rebut the presumption of validity, an alleged
`
`In final argument, Unicolors’ counsel referenced another
` 2
`caption on a different design in the text “Forties Fabrics,” for the
`truth of the matters asserted therein. The Court indicated that if
`Unicolors’ counsel wished the Court to consider that caption for the
`truth of the matters asserted, it would also so consider other
`captions in “Forties Fabrics.” Counsel for Unicolors did not object,
`and the Court therefore will consider the captions for the truth of
`the matters asserted therein. In any event, the forties flower design
`existed as of 1997, which significantly predates the Unicolors
`copyright registration for the daisy design.
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 6 of 8 Page ID #:376
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` infringer must offer “some evidence or proof to dispute or deny the
`[copyright holder’s] prima facie case of infringement.” (Id.) Because
`“originality is the indispensable prerequisite for copyrightability,”
`the alleged infringer may rebut the presumption of validity by showing
`that “the [copyright holder’s] work is not original.” N. Coast Indus.
`v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992).
`5.
`“Originality, as the term is used in copyright, means only
`that the work was independently created by the author (as opposed to
`copied from other works) and that is possesses at least some minimal
`degree of creativity.” Feist, 499 U.S. at 345, 111 S.Ct. 1282. “[T]he
`requisite level of creativity is extremely low,” Id., but “it is not
`negligible.” Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003). “There
`must be something more than a ‘merely trivial’ variation, something
`recognizably the artist’s own.” (Id.)
`The requisite originality for copyright protection can also be
`found in the combination of unoriginal (and therefore uncopyrightable)
`elements. Mere facts are not copyrightable, but the creative
`organization - choosing which facts to include and how to arrange them -
`of those facts may be. Urantia Found. v. Maaherra, 114 F.3d 955, 958-59
`(9th Cir. 1997).
`6.
`The daisy design in this case does not possess at least the
`requisite minimum degree of creativity to qualify as an original design
`which is copyrightable. In the daisy design, the actual flowers, and
`their repetition throughout the design, constitute the predominant
`design elements. Neither the flowers, nor their repetitive placement,
`were independently created by Unicolors.
`7.
`The deletion of the ticking stripe background from the forties
`flower design, and the insertion of generic polka-dots, does not
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 7 of 8 Page ID #:377
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`constitute the requisite originality required for a design to be
`copyrightable. For example, seemingly identical background polka-dots
`are found in design no. 611212, which is part of VA 1-392-580. While
`the presence of generic polka-dots may be part of a copyrightable
`design, in this case, they do not impart even a minimum level of
`originality such as would make the daisy design copyrightable. Thus,
`the Court concludes that the daisy design is not sufficiently original
`to warrant copyright protection. Royal did not copy any protectable
`elements of the daisy design. Juxtaposing the uncopyrightable flowers,
`with their repetitive pattern, over the polka-dot background does not
`constitute sufficient originality to warrant copyright protection.
`Consequently, Unicolors did not have a basis for registering the daisy
`design with the United States Copyright Office.
`8.
`Because the Court finds and concludes that the daisy design is
`not copyrightable, the Court declines to issue findings of fact or
`conclusions of law concerning Royal’s affirmative defense that Unicolors
`violated copyright regulations by combining multiple designs in a single
`registration.
`9.
`Royal claims damages of $75,000 based upon the amount it paid
`to Comma pursuant to its settlement agreement. Royal brought claims for
`declaratory relief as well as federal, common-law, and California
`statutory unfair competition. Damages are not available under
`California’s statutory unfair competition statute, contained in Business
`and Professions Code §§17200, et seq.
`10. Royal claims that Unicolors engaged in unfair competition by
`claiming exclusive rights to a fabric design which it did not originally
`create, obtaining a Certificate of Registration by misleading the
`Copyright Office, and subsequently stifling competition with the threat
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`Case 2:07-cv-05395-VBK Document 79 Filed 07/08/09 Page 8 of 8 Page ID #:378
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`of wholly unjustified legal action. (See Royal’s post-trial brief re
`damages.) The Court, however, does not find that Unicolors engaged in
`unfair competition, as Royal asserts. While the Court has found that
`the daisy flower design does not contain sufficient elements of
`originality to be copyrightable, nevertheless, Unicolors did make some
`modification of the forties flower design; to wit, by substituting
`polka-dots for the ticking stripe background. The Court is not
`persuaded, based upon this evidence, that Unicolors engaged in unfair
`competition or deceptive practices by either claiming exclusive rights
`to the daisy design, or by sending out cease and desist letters to
`various parties here. Thus, the Court finds that, in this instance,
`Unicolors was entitled to rely upon the presumptive validity of its
`copyright registration for the daisy design, when it attempted to
`enforce its registered design, and is therefore not liable for any
`damages under an unfair competition theory.
`11. Unicolors is not entitled to any relief, nor has it suffered
`any compensable damages.
`12. The matter of attorney’s fees claimed by Royal against
`Unicolors will be determined by post-judgment motion pursuant to Federal
`Rule of Civil Procedure 54(d)(2)(A); see Local Rule 54-12. Costs will
`be determined by a Notice of Application to the Clerk to Tax Costs under
`Local Rule 54-3, et seq.
`IT IS SO ORDERED.
`
`DATED: July 8, 2009
`
` /s/
`VICTOR B. KENTON
`UNITED STATES MAGISTRATE JUDGE
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