`
`No. 20-915
`================================================================================================================
`
`In The
`Supreme Court of the United States
`--------------------------------- ♦ ---------------------------------
`
`UNICOLORS, INC.,
`
`Petitioner,
`
`v.
`
`H&M HENNES & MAURITZ, L.P.,
`Respondent.
`
`--------------------------------- ♦ ---------------------------------
`
`On Writ Of Certiorari To The
`United States Court Of Appeals
`For The Ninth Circuit
`--------------------------------- ♦ ---------------------------------
`
`BRIEF OF AMICUS CURIAE
`CALIFORNIA FASHION ASSOCIATION
`IN SUPPORT OF RESPONDENT
`--------------------------------- ♦ ---------------------------------
`
`MORGAN E. PIETZ
` Counsel of Record
`
`PIETZ & SHAHRIARI, LLP
` 9454 Wilshire Boulevard,
`
` Suite 310
` Beverly Hills, CA 90212
`
`(310) 424-5557
` morgan@pstrials.com
`
`JEFFREY LEWIS
`JEFF LEWIS LAW
` 609 Deep Valley Drive,
`
` Suite 200
` Rolling Hills Estates, CA
`
` 90274
`DEBORAH E. GRAVES
`WITHERS BERGMAN LLP
` 1925 Century Park East,
`
` Suite 400
` Los Angeles, CA 90067
`Counsel for Amicus Curiae
`California Fashion Association
`
`================================================================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF CONTENTS ......................................
`i
`TABLE OF AUTHORITIES .................................
`ii
`I. INTERESTS OF AMICUS CURIAE .........
`
`1
` II. SUMMARY OF THE ARGUMENT ...........
`3
` III. ARGUMENT ..............................................
`7
`A. How Unicolors and Similar Plaintiffs
`in the Business of Fabric Litigation
`Game the Copyright System ...............
`1. The Copyright Registration Pro-
`cess ..................................................
`2. Infringement Under the Copyright
`Act ................................................... 11
`3. Examples of Unicolors and Other
`Fabric Plaintiffs Gaming the Sys-
`tem .................................................. 17
`B. Section 411(b) Should be Interpreted so
`That it is Easier to Invoke and Apply,
`Not Harder ........................................... 24
` IV. CONCLUSION .......................................... 32
`
`
`8
`
`7
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`DeliverMed Holdings, LLC v. Schaltenbrand,
`734 F.3d 616 (7th Cir. 2013) ...................................... 5
`Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th
`Cir. 2003) ........................................................... 24, 25
`Feist Publ. v. Rural Telephone Serv. Co., 499 U.S.
`340 (1991) .................................................................. 9
`Gold Value Int’l Textile v. Sanctuary Clothing,
`925 F.3d 1140 (9th Cir. 2019) ............................ 14, 30
`L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676
`F.3d 841 (9th Cir. 2012) ........................................... 30
`Matrix v. Macy’s, C.D. Cal. No. 12-cv-1450 ................ 18
`Matrix v. Milkprint, C.D. Cal. No. 12-cv-8597 ..... 18, 19
`Skidmore v. Led Zeppelin, 952 F.3d 1051 (2020) ....... 12
`Star Fabrics, Inc. v. Zulily, LLC, C.D. Cal. No. 17-
`cv-8358 ............................................................... 22, 23
`
`
`RULES
`Sup. Ct. R. 37.6 ............................................................. 1
`
`STATUTES
`17 U.S.C. § 106 .............................................................. 8
`17 U.S.C. § 408(d) ............................................................ 30
`17 U.S.C. § 410(c) ............................................ 11, 12, 13
`17 U.S.C. § 411 ........................................................ 6, 31
`
`
`
`iii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`17 U.S.C. § 411(a) .......................................................... 8
`17 U.S.C. § 411(b) ................................................ passim
`17 U.S.C. § 411(b)(2) ............................................. 28, 29
`17 U.S.C. § 411(b)(3) ........................................... passim
`17 U.S.C. § 412 .................................................. 6, 15, 31
`
`OTHER AUTHORITIES
`Goold, Patrick Russell, Is Copyright Infringe-
`ment a Strict Liability Tort?, 30 Berkeley
`Technology Law Journal 305 (2015) ....................... 16
`Sag, Matthew, Copyright Trolling, An Empirical
`Study, 100 Iowa L. Rev. 1105 (2015) ............................ 7
`U.S. Copyright Office, Compendium of U.S.
`Copyright Office Practices § 602.4(D) (3d ed.
`2021) .................................................................... 9, 13
`
`
`
`1
`
`INTERESTS OF AMICUS CURIAE1
`
`I.
`
`The California Fashion Association (“Cal. Fash-
`ion”) is a non-profit organization established in 1995,
`providing information for business expansion and
`growth to the apparel and textile industry of Califor-
`nia.
`
`Cal. Fashion’s mission is to provide a forum for in-
`
`dustry networking, outline global sourcing options and
`export opportunities, provide information about labor
`law compliance, share industry-related legal develop-
`ments, analyze the application of apparel-related tech-
`nology, promote advanced education for the industry,
`and define the industry’s economic impact.
`
`Cal. Fashion was specifically organized to ad-
`
`dress issues of concern to the California fashion and
`apparel industry. Its 140+ members include fashion
`and apparel manufacturers, suppliers, financial ser-
`vice providers, professional service providers, tech-
`nology providers, other fashion-related businesses,
`industry publications, educational institutions, re-
`lated associations, and international points of contact.
`
`Cal. Fashion strives to be the local voice of the
`
`fashion business, which is the largest manufacturing
`sector in Southern California. Over 10,000 firms are
`
`
`1 Counsel for all parties have filed blanked consents to the
`
`filing of amicus briefs. In accordance with Rule 37.6, amicus con-
`firms that no party or counsel for any party authored this brief in
`whole or in part, and that no person other than amicus, its mem-
`bers, or its counsel made any monetary contribution intended to
`fund the preparation or submission of this brief.
`
`
`
`2
`
`involved in fashion-related businesses in Los Angeles
`and Orange County; it is a $49.3-billion industry (ap-
`parel and textile shipments including imported and
`domestically produced merchandise). The apparel and
`textile industry of the region employs approximately
`128,000 people, directly and indirectly in Los Angeles
`and surrounding counties.
`
`The outcome of the decision in this case will di-
`
`rectly and profoundly impact the fashion business as a
`whole and the California Fashion Association’s mem-
`bers in particular. Fabric copyright infringement law-
`suits have become a real—and, as discussed below,
`unavoidable—problem for the industry. But it is not
`just the defendants that are caught up in cases like
`this one, or the courts burdened with hearing them,
`that will lose out if the Court reverses the decision be-
`low. It is also the public, which will not only have to pay
`higher costs for fashion and apparel items as a result
`of the increased risk and costs of defending meritless
`litigation, but also because, at the end of the day, many
`companies, including California Fashion Association
`members, will avoid working with prints to reduce the
`risk of being sued in a case like this one. This potential
`chilling effect on creativity and commerce is contrary
`to the purposes of the Copyright Act.
`
`
`
`
`
`
`
`3
`
`II. SUMMARY OF THE ARGUMENT
`
`The Court should decline Unicolors’ invitation to
`read a fraudulent intent requirement into Section
`411(b) of the Copyright Act.2 The statutory text does
`not support doing so and that ought to be the end of
`the matter, as H&M ably argues. Resp. Br. at 23-26.
`
`The perspective of the California Fashion Associa-
`
`tion (“Cal. Fashion”) is that any attempt to neuter Sec-
`tion 411(b) would be a mistake for important policy
`reasons.3 That is, doing what Unicolors and its sup-
`porting amici ask would make a situation that is al-
`ready problematic rather significantly worse.
`
`Generally speaking, the situation that Cal. Fash-
`
`ion is obviously very concerned with is the veritable
`plague of fabric copyright infringement lawsuits that
`has descended upon the fashion industry over the past
`fourteen years. Since 2007, Unicolors has filed 261
`copyright infringement cases in the Central District of
`California alone. If a PACER search is expanded na-
`tionwide to include other Los Angeles-based fabric con-
`verter clients of the Doniger/Burroughs plaintiffs’ law
`firm, the number of fabric copyright cases filed in the
`federal courts (mainly C.D. Cal.) since 2007 swells to
`well over 1,000: Star Fabrics, Inc. (541 cases total
`
`
`2 Unless otherwise noted, all statutory references are to the
`
`Copyright Act, codified at 17 U.S.C.
`3 This is true regardless of whether the change is effected by
`
`reading fraud into the statute, as Unicolors framed the issue in
`its petition, or by taking a strained view of the meaning of
`“knowledge that [information] was inaccurate,” as Unicolors ar-
`gued in its merits brief.
`
`
`
`4
`
`cases); Gold Value International Textile, Inc. (116
`cases); LA Printex Industries Inc (123 cases); United
`Fabrics Int’l, Inc. (140 cases). There are others; the fore-
`going list highlights only the most active repeat fabric
`plaintiffs represented by the Doniger/Burroughs firm.
`
` More specifically though, the problem is not just
`that there are lots of fabric infringement lawsuits, it is
`that these kinds of cases are virtually impossible to
`avoid and very difficult to defend. Why? It is impossible
`to usefully search prior registrations. There are also
`structural aspects of the Copyright Act including the
`presumption of validity, the allure of statutory dam-
`ages and attorneys’ fees. And registration require-
`ments are susceptible to being gamed. All of this is
`discussed in more detail below. Unicolors has proven
`very adept at systemically exploiting these systemic
`weaknesses in ways that make pursuing these fabric
`cases en masse low-risk, high-reward, and very easy—
`too easy—for the plaintiffs to win, even where, as here,
`the plaintiffs’ claims are dubious.
`
`Unicolors asks the Court to further stack the deck
`
`in favor of copyright infringement plaintiffs by making
`it much harder for defendants to invoke the Section
`411(b) procedure successfully. Specifically, all of the
`various (and at times competing) formulations of what
`Unicolors would propose the Section 411(b) standard
`should be, focus the inquiry on what the applicant (who
`is often not a lawyer) was thinking. How often will a
`defendant be able to properly allege, much less prove,
`whatever half-baked ideas about “publication” or the
`“unit of publication rule,” etc., were going on in the ap-
`plicant’s head at the time the application to register
`
`
`
`5
`
`was submitted? The whole point of this case is that
`Unicolors knows that defendants will seldom be able
`to do so, which suits Unicolors just fine.
`
` Whether information is legally “inaccurate” should
`be determined objectively based on what the law is, not
`what the applicant thought it was (reasonably or oth-
`erwise) years ago. And the only subjective part of the
`inquiry, focused on what the applicant knew or thought
`at the time of the application, should be evaluating
`whether he or she intended to submit the information
`that was included in the application (not whether he
`or she knew it was legally incorrect at the time). That
`is a workable standard, more fair given the parties’ re-
`spective access to proof, easy to apply, and as H&M per-
`suasively argues, it is consistent with many other civil
`and even some criminal statutes that require “know-
`ing” violations.
` Moreover, the consequences of an adverse Section
`411(b)(2) determination for a plaintiff are not nearly
`as dire as what Unicolors and its supporting amicus
`make them out to be. As H&M points out, if the Regis-
`ter makes the determination that the copyright would
`not have been registered if the new facts were known
`“the applicant doesn’t lose their copyright protection;
`at worst they simply must properly register the work
`and start over, perhaps without the benefit of certain
`statutory remedies.” Resp. Br. at 47; see also id. at 6
`(citing DeliverMed Holdings, LLC v. Schaltenbrand,
`734 F.3d 616, 624-25 (7th Cir. 2013) (court must decide
`whether application can support the action despite the
`inaccuracy)).
`
`
`
`6
`
`In terms of what happens after a Section 411(b)
`
`referral, this brief adds a few points. Most importantly,
`if the plaintiff knowingly includes material, inaccu-
`rate information in its copyright registration applica-
`tion, it absolutely should lose the ability to recover
`statutory damages and attorneys’ fees for that regis-
`tration—which is exactly what the statute says is sup-
`posed to happen. See 17 U.S.C. § 411(b)(3) (Section
`411(b) affects plaintiff ’s ability to “institute” a federal
`infringement action under Section 411, and to recover
`“remedies . . . under . . . [S]ection 412”4). As discussed
`below, there are many reasons why applicants are often
`tempted to fudge the facts in their registration applica-
`tions. Section 411(b) properly incentivizes them to
`be more honest, by threatening their ability to re-
`cover statutory damages and attorneys’ fees if it is
`discovered that they knowingly including material,
`inaccurate information. Such an interpretation would
`encourage accuracy in applications, discourage law-
`suits brought primarily for statutory damages and
`fees, while still allowing actual damages and injunc-
`tive relief to be obtained by a plaintiff in an otherwise
`meritorious case.
`
`It should be left to the district court judge to de-
`
`termine post-referral issues including whether the
`facts “alleged” by the defendant at the outset of
`the 411(b) process are actually established, whether
`amendment of the complaint will be allowed to include
`
`
`4 Section 412 says that subject to certain exceptions likely to
`
`be inapplicable, registration must occur prior to discovery of the
`infringement, in order for the plaintiff to recover statutory dam-
`ages or attorneys’ fees.
`
`
`
`7
`
`a new or supplemental registration, and whether an
`applicant’s good faith or honest mistake of law mili-
`tates in favor of allowing amendment or declining to
`award a defendant fees if loss of the registration means
`that the plaintiff loses on the merits of the case.5
`
`
`III. ARGUMENT
`A. How Unicolors and Similar Plaintiffs in
`the Business of Fabric Litigation Game
`the Copyright System
`
`
`An issue lurking in the background of this case is
`the extent to which Unicolors (and a dozen or so other
`LA-based fabric converters also represented by the
`Doniger/Burroughs plaintiffs’ firm) can fairly be said
`to be engaged in “copyright trolling.” Although that
`term is inherently difficult and controversial to define,
`one commentator has attempted to helpfully do so by
`focusing on what he terms “systematic opportunists.”
`Sag, Matthew, Copyright Trolling, An Empirical Study,
`100 Iowa L. Rev. 1105 (2015)6 at pp. 1105, 1111-14. And
`in that limited sense of the term, Unicolors and its
`fellow travelers certainly qualify. Section A of the
`
`
`5 As a matter of access to proof and burden of persuasion, it
`
`is fairer to allow a plaintiff to prove its own good faith mistake of
`law, as an equitable defense against a fee award or as a factor to
`be considered in whether amendment will be allowed, than to
`force the defendant to prove the plaintiff ’s fraudulent intent as a
`threshold issue at the outset of the statutory referral process. The
`party best positioned to know and be able to prove the plaintiff ’s
`state of mind is obviously the plaintiff.
`6 Available here (last accessed September 22, 2021): https://law
`
`ecommons.luc.edu/cgi/viewcontent.cgi?article=1530&context=facpubs.
`
`
`
`8
`
`argument addresses the aspects of the copyright system
`that allow it to be gamed, and attempts to show exactly
`how fabric converter plaintiffs including Unicolors do
`so. Section B of the argument focuses on the important
`role that Section 411(b) can play in counter-balancing
`this system, and argues that it should be interpreted
`so that it is easier to use, not rendered effectively im-
`possible to invoke.
`
`
`
`1. The Copyright Registration Process
`
`
`The first and most important thing to appreciate
`about the copyright registration process is that it
`mainly operates on the honor system. That is, the ap-
`plicant itself is largely trusted to self-define the scope
`of the federally-enforceable monopoly7 that the appli-
`cant obtains for itself by virtue of registration.
`
`Unlike in the patent and trademark systems, in
`
`which an agency examiner is tasked with independently
`verifying assertions made by an applicant, the Copy-
`right Office plays no such role. As H&M explains, the
`Copyright Office accepts the facts provided by the ap-
`plicant as true, unless the applicant contradicts itself.
`Resp. Br. at pp. 4-5. In other words, it is not the Copy-
`right Office’s job to test the substantive truth of an ap-
`plicant’s various representations made in a copyright
`registration application.8
`
`
`7 The Copyright Act gives the owner of a registered copyright
`
`the right to sue others to stop them from infringing on the six so-
`called exclusive copyright rights. See 17 U.S.C. §§ 106, 411(a).
`8 Aside from instances where the applicant contradicts it-
`
`self within the four corners of its own application, the one main
`
`
`
`
`9
`
`Thus, if a company submits a copyright registra-
`
`tion application saying that it authored a particular,
`minimally original zig-zag pattern without reference
`to any prior source material, the Copyright Office will
`generally accept those facts as true and issue the reg-
`istration.
`
`Further, unlike with patents, there is no “prior art”
`
`search that is done as part of the copyright registration
`process. As H&M notes, the Copyright Office “generally
`does not conduct searches to determine whether previ-
`ously registration or publication has occurred.”) Resp.
`Br. at p. 6; quoting U.S. Copyright Office, Compendium
`of U.S. Copyright Office Practices § 602.4(D) (3d ed.
`2021).
`
` Moreover, even if searching to see whether a de-
`sign claimed by an applicant had been previously reg-
`istered by someone else were part of the copyright
`registration process (and it is not) actually doing such
`a search would be technologically impossible. The fun-
`damental problem is that there is no way to query the
`copyright registration system to say, in effect, ‘show me
`
`
`exception, where the Copyright Office does perform a gatekeeping
`function, is with respect to the so-called threshold of originality.
`Which means evaluating whether the claimed design (or, in the
`case of a group registration, all of the included designs) is (or are
`all) so totally lacking in originality that no part of any of it is pro-
`tectable. See Feist Publ. v. Rural Telephone Serv. Co., 499 U.S.
`340, 345 (1991) (originality means that a work “possesses at least
`some minimal degree of creativity. [Citation omitted]. To be sure,
`the requisite level of creativity is extremely low; even a slight
`amount will suffice.”). Thus, if an applicant sends in a drawing of
`a single circle and tries to register it, that is the rare sort of ap-
`plication that the Office would likely reject.
`
`
`
`10
`
`all of the previously-registered zig-zag pattern designs
`that look like this one I have here.’ Although reverse
`image searching is a relatively ubiquitous technology
`these days,9 that kind of functionality has not yet made
`its way to the Copyright Office’s Online Records Cata-
`log or to the Library of Congress’s collection of deposit
`copies. The Copyright Office’s online catalog does not
`include pictures or copies of the registered work itself;
`only the written information submitted on the applica-
`tion form itself.
`
`One upshot of continuing to use what is essen-
`
`tially a mid-20th Century card catalog system (as op-
`posed to an image-searchable online database) for
`keeping deposit copies of copyrighted works is that no-
`body, including the Copyright Office itself, can ever
`possibly know whether or not there might be a prior
`copyright registration on file for something that is the
`same or substantially similar to any given work. The-
`oretically, the only way to be sure that a given fabric
`design or other work of authorship was not previously
`registered by someone else would be to put the design
`in question firmly in mind, and then go through and
`search the entire Library of Congress collection of de-
`posit copies to look for the proverbial matching needle
`in one of the world’s largest haystacks.
`
`Accordingly, there is no way for an apparel manu-
`
`facturer purchasing printed fabric, or a retailer sell-
`ing garments on which the same print appears, to
`
`9 Such technology, e.g., Google Image Search, is frequently
`
`used by some photographers to scan the entire Internet for copies
`of their photos, so they can sue the (often-unsuspecting) website
`owners for infringement.
`
`
`
`11
`
`determine whether a company like Unicolors will
`claim to own the design, because it is arguably similar
`to one of Unicolors’ tens of thousands of registered de-
`signs. Retailers can require their vendors to represent
`and warrant they are not selling infringing goods. And
`a manufacturer can ask for assurances that the sup-
`plier of printed fabric created the design itself or oth-
`erwise has rights to it. But, as this case demonstrates,
`even that is no protection; H&M’s designer had a Chi-
`nese copyright registration, but getting it into evidence
`was problematic. What these cases normally come
`down to is a battle of evidence about who supposedly
`created what, when, and how. While the plaintiff ’s
`story is treated as presumptively correct under the law,
`the defendant is left to scramble and try to trace the
`particulars about the creation of its own product up the
`global supply chain.
`
`
`
`2. Infringement Under the Copyright
`Act
`
`
`The Copyright Act’s presumption of validity allows
`a plaintiff to prove most of its prima facie case for
`infringement simply by introducing its registration
`certificate into evidence. See 17 U.S.C. § 410(c). Im-
`portantly, the presumption of validity extends to all of
`“the facts stated in the [registration] certificate.” Id.10
`
`
`10 Introduction of the registration certificate establishes that
`
`the plaintiff has a valid copyright, that the plaintiff owns protect-
`able “original authorship,” identifies the “author,” and when the
`work was completed and first published. What remains for the
`plaintiff to prove is “copying” of the protectable aspects of a plain-
`tiff ’s work by the defendant. Rarely will plaintiffs have direct
`
`
`
`
`12
`
`Thus, the representations made by the plaintiff
`
`are not only not substantively examined by the Copy-
`right Office during the registration process, they are
`also then treated as factually correct and established
`without the need for further proof after the plaintiff
`sues for infringement.11 Therein lies a big part of the
`problem as to how these cases lend themselves to
`abuse.
`
`The most common—and fundamentally unfair—
`
`“inaccuracy” that occurs in copyright registration ap-
`plications is the failure of the applicant to disclose
`information about the applicant’s own source or inspi-
`rational material. When an applicant properly dis-
`closes pre-existing source material used as inspiration
`
`
`evidence that the defendant or its designer actually literally cop-
`ied a plaintiff ’s design. A plaintiff generally proves copying by
`showing that its design is “substantially similar” to the defend-
`ant’s product, and that the defendant has “access” to the plain-
`tiff ’s design. Fabric plaintiffs establish “access” by claiming that
`the design was available for public viewing at their showroom
`(showrooms where they keep no records of who visits, even though
`that same showroom is repeatedly claimed as the locus for pur-
`portedly unlawful copying), plus producing evidence that the
`plaintiff advertised its at-issue designs in various ways. The jury
`is then asked to infer, based on the foregoing, that defendant or
`its designer must have seen the plaintiff ’s design somewhere.
`However, if the defendant’s product is claimed to be “strikingly
`similar” to the plaintiff ’s design, plaintiffs will, as Unicolors did
`here, ask the court to excuse it from even proving access, and ar-
`gue that the designs are so similar that the defendant must have
`copied the plaintiff. See Resp. Br. at 11, Skidmore v. Led Zeppelin,
`952 F.3d 1051, 1064-65 (2020).
`11 Assuming that the registration was obtained within five
`
`years of first publication, which is usually the case. See 17 U.S.C.
`§ 410(c).
`
`
`
`13
`
`for its own design, the resulting copyright registration
`is correspondingly limited; only the applicant’s “origi-
`nal authorship” is protected, the pre-existing source
`material is excluded from the scope of registration. See,
`e.g., Copyright Compendium 3rd at 503.5.12 By neglect-
`ing to disclose source and inspiration material in the
`application, the applicant obtains a broader grant of
`rights than what it should, which it can also use to sue
`others later. And that broader grant of rights is legally
`presumed to be valid and correct when it comes time
`for litigation, thanks to Section 410(c). Obviously, this
`creates a strong incentive for an applicant to be “inac-
`curate” in a way that maximizes the applicant’s rights
`and makes it easier to sue later.
`
`Similar incentives apply with respect to “publica-
`
`tion.” An applicant disclosing when its design was “first
`published” is not just some arcane relic of a bygone era
`when copyright formalities were curiously treated as
`more important. One reason “first publication date”
`
`
`12 “A copyright registration covers the new expression that
`
`the author created and contributed to the work, but it does not
`cover any unclaimable material that the work may contain. For
`purposes of registration, unclaimable material includes the fol-
`lowing:
`• Previously published material.
`• Previously registered material (including material that
`has been submitted for registration but has not been reg-
`istered yet).
`• Material that is in the public domain.
`• Copyrightable material that is owned by a third party
`(i.e., an individual or legal entity other than the claimant
`who is named in the application).”
`
`
`
`14
`
`remains key is because it normally establishes the tar-
`get date that the defendant needs to beat in order to
`negate plaintiff ’s proof of access (or affirmatively es-
`tablish independent creation by the defendant). In
`other words, if the defendant can show that it has been
`selling its product (or that its product was otherwise in
`existence) prior to the plaintiff ’s claimed “first publica-
`tion” date for its copyrighted design, then the plaintiff
`is normally not going to be able to prove copying. One
`cannot copy something that has not yet been created.
`Moreover, a plaintiff will normally not be able to prove
`that the defendant had “access” to a design not yet re-
`leased to the public. Accordingly, applicants like Uni-
`colors who register their designs with one eye (or
`perhaps both) on future litigation are incentivized to
`always choose the earliest possible claimed first publi-
`cation date, to move the goal post as far back in time
`as possible, even if publication on that date is question-
`able.13
`
`One key corollary to the presumption of validity,
`
`which sophisticated repeat plaintiffs like Unicolors
`
`13 Since a Doniger/Burroughs fabric client lost on summary
`
`judgment due to a publication “inaccuracy” in 2017, a result
`which was affirmed by the Ninth Circuit in Gold Value Int’l Tex-
`tile v. Sanctuary Clothing, 925 F.3d 1140 (9th Cir. 2019), the
`firm’s fabric clients now mainly tell the same story about publica-
`tion that Unicolors told here: designs in suit were purportedly
`“first published” when they were allegedly released into the plain-
`tiff ’s physical showroom. (Showrooms that are purposefully setup
`by the plaintiffs to be evidentiary black boxes from which no doc-
`uments or independently-verifiable evidence can ever seem to es-
`cape, except for the plaintiff ’s own oral testimony about the
`legally significant goings on that supposedly occurred there.).
`
`
`
`15
`
`shrewdly appreciate, is that the risk of maintaining ev-
`idence of what occurred during the design and regis-
`tration process far outweighs the reward. Absent the
`presumption of validity, Unicolors would need to retain
`evidence establishing who created its design(s) at is-
`sue, how, when, etc., in order to establish it has a valid
`copyright. However, because the presumption nor-
`mally does apply, a clever plaintiff will jettison any
`hard proof that a defendant might someday use to try
`and burst the bubble of the presumption of validity.
`Thus, the presumption not only washes away whatever
`transgressions may have occurred during the design
`and registration process, it also incentivizes profes-
`sional plaintiffs like Unicolors to dispose of any docu-
`mentary evidence that might undermine the validity
`of the registration.
`
`Another important structural aspect of the Copy-
`
`right Act that has allowed fabric copyright cases to be-
`come a cottage industry unto themselves is the lure of
`statutory damages and attorneys’ fees, which make
`even low value cases worth pursuing.14
`
` What is unusual though about the statutory dam-
`age and attorneys’ fee remedies under the Copyright
`Act is that their availability is generally precondi-
`tioned on registration being obtained prior to infringe-
`ment being discovered, per Section 412. And, under
`Section 411(b), it is specifically contemplated that one
`
`14 In this case the defendant’s gross profits on the allegedly
`
`infringing items were $98,385 (see E.R. 666), which actually
`makes this case relatively high value for the world of fabric copy-
`right litigation.
`
`
`
`16
`
`consequence of an adverse Section 411(b) referral de-
`termination is supposed to be that the plaintiff loses
`the right to obtain these remedies. See 17 U.S.C.
`§ 411(b)(3).
`
`The final aspect of the Copyright Act that helps
`
`explain the profusion of fabric infringement lawsuits
`is that U.S. retailers and importers are all liable for in-
`fringement, even if the alleged “copying” was actually
`done by an upstream vendor. While there is generally
`some degree of confusion and debate about whether
`copyright infringement is a strict liability offense,15 in
`the sense that matters here, it is. Thus, a retailer that
`may have done absolutely nothing wrong can and often
`does find itself staring down a six or seven figure lia-
`bility because its vendor’s supplier’s designer in China
`allegedly copied a plaintiff ’s design.16
`
`
`
`
`15 Goold, Patrick Russell, Is Copyright Infringement a Strict
`
`Liability Tort? (December 8, 2014), 30 Berkeley Technology Law
`Journal 305 (2015), Available at SSRN: https://ssrn.com/abstract=
`2535557.
`16 Another, non-copyright factor that helps fuel the fabric
`
`copyright phenomenon is asymmetrical access to key overseas ev-
`idence and witnesses. Given the longstanding relationships it has
`with them, the plaintiff often is able to get its European and U.S.
`designers to cooperate in discovery voluntarily, but only if the
`plaintiff thinks that would help. By contrast, a defendant will of-
`ten face severe difficulty trying to obtain admissible evidence
`from a vendor located in mainland China, even if, as in this case,
`that vendor has helpful evidence (such as its own copyright regis-
`tration) and wants to cooperate. See Resp. Br. at pp. 13-14.
`
`
`
`17
`
`3. Examples of Unicolors and Other
`Fabric Plaintiffs Gaming the System
`
`
`Given the strong incentive for fabric plaintiffs
`such as Unicolors to unburden themselves from keep-
`ing any documentary evidence that might be used to
`rebut the presumption of validity, the changing stories
`told by Unicolors about the creation of the design it is
`suing on in this case are sadly unsurprising.
`
`Here, Unicolors initially stated (repeatedly) in ver-
`
`ified discovery responses that the design at issue was
`based on artwork it purchased from a third party de-
`signer called Milkprint, LLC.17 Unicolors then changed
`its
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