Textiles bearing printed designs create a host of legal issues affecting many, including fabric manufacturers, designers, retailers of product made from such fabrics and even the home craft maker. Alleged industry “rules of thumb” regarding those issues, such as the percentage of a fabric design that can lawfully be incorporated into another design, or the belief that a purchaser of a piece of fabric can do whatever it wants with that fabric, often do not adequately reflect the applicable laws. In L.A. Printex Industries Inc. v. Aeropostale Inc., No. 10-56187, 2012 WL 1150273 (9th Cir. April 9, 2012), the scope of protection afforded floral fabric designs, and the defendants’ access to the allegedly infringed design, were considered. When the infringing product in question is made from a plaintiff’s authentic fabric, the “first-sale rule” of the copyright law offers guidance.

There is no magical percentage of a fabric design that can be incorporated into another design without incurring liability for copyright infringement. It has long been the law that a plagiarist cannot “excuse the wrong by showing how much of his work he did not pirate.” Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936). To establish copyright infringement of a fabric design, two elements must typically be proven: ownership of a valid copyright and copying of the original elements of the work. Feist Publ’ns Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

Often, in cases involving fabric designs, direct evidence of copying is not available. Infringement can be shown by proving that the defendant had access to the plaintiff’s fabric and that the two designs in question are substantially similar. Proof of access requires an opportunity by the defendant to view the plaintiff’s work. When it can be shown that the defendant possessed a sample of the allegedly infringed fabric at the time the infringement was made, access can be proven. In other instances, “widespread dissemination” of a plaintiff’s work to the public, and not to the specific defendant, can comprise sufficient access. In L.A. Printex, the plaintiff, a fabric printing company, sought to prove that defendants Aeropostale Inc., an apparel retailer, and Ms. Bubbles Inc., an apparel wholesaler, had access to an L.A. Printex fabric design by showing that wide dissemination of the plaintiff’s fabric gave the defendants an opportunity to see it. The district court, granting summary judgment in the defendants’ favor, found the plaintiff had proved only a “bare possibility” that the defendants may have had access to the L.A. Printex fabric.

Relying on production and sale of more than 50,000 yards of fabric to numerous customers over a period of four years, the U.S. Court of Appeals for the Ninth Circuit distinguished the circumstances presented from prior cases it had decided in which widespread dissemination had not been found. In Art Attacks Ink LLC v. MGA Entertainment Inc., 581 F.3d 1138, 1144-45 (9th Cir. 2009), the court had found that the plaintiff had not widely disseminated its T-shirt designs, although the designs were displayed at kiosks and fair booths, on people wearing the shirts and on the Internet. The L.A. Printex court noted that in that case only 2,000 T-shirts were disseminated per year and the parties were in different industries. In contrast, in L.A. Printex, the court noted that the parties were in the same industry and in the same Los Angeles area. The plaintiff sold its fabric to converters, who sold the fabric to apparel vendors like defendant Ms. Bubbles. The dissemination of the fabric by L.A. Printex had taken place over a four-year period immediately preceding defendant’s alleged infringement.

The court found it was a “reasonable inference” that most of the 50,000 yards of fabric sold by the plaintiff had been sold to fabric converters in the Los Angeles area, and a reasonable jury could find that the allegedly infringed design was widely disseminated in the Los Angeles fabric industry, supporting a “reasonable possibility” that the defendants had an opportunity to view and copy it. The court reversed the grant of summary judgment in the defendants’ favor on access. L.A. Printex, 2012 WL 1150273, at *4.

Substantial similarity

Once access is proven in an infringement analysis, a determination is made as to whether the fabrics are substantially similar. The law generally does not offer protection to ideas recurring in nature, such as flowers with brightly colored petals, stems and buds. However, the original selecting, arranging and coordination of such elements into a floral pattern is protectable. In L.A. Printex, the Ninth Circuit stated that stylized fabric designs were entitled to broad protection and acknowledged that there are “gazillions” of ways to combine flower components and colors in floral designs on fabric, and the particular selection, coordination and arrangement of those elements can be protectable. Id. at *6.

In comparison, the Second Circuit affirmed the dismissal of a plaintiff’s claim that defendant had sold a fabric with a stem and leaf design substantially similar to its own fabric design, noting that evidence was presented to the district court that stem and leaf designs have been around for hundreds of years and the accused design was similar to many. Cameron Indus. Inc. v. Caravan, Ltd., 405 Fed. Appx. 542 (2d Cir. 2010).

The test used to determine substantial similarity differs somewhat among the circuits. In L.A. Printex, the Ninth Circuit’s two part “extrinsic-intrinsic” test was used, which includes both an extrinsic objective comparison of similarities between two works and an intrinsic, subjective determination of whether the ordinary reasonable observer would find that the two works shared a substantial similarity. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996). In comparing fabric designs, noted the court, it is necessary to examine the similarities in their objective details including “subject matter, shapes, colors, materials, and arrangement of the representations.” L.A. Printex, 2012 WL 1150273 at *5. The L.A. Printex court followed the Second Circuit’s admonition that a court should not dissect the fabric designs into component parts and compare only copyrightable elements, finding that, at least in the context of fabric designs, such direction is “persuasive.” Id. at *6. Taking into account the similar color arrangements, the court noted that, although mere variations of color are not copyrightable, similarities in color arrangements are probative of copying.

In addressing the defendant’s argument that its design lacked the background pattern of the plaintiff’s design and had spacing differences, the court reiterated that it is enough that the “defendant appropriated a substantial portion of the plaintiff’s work.” Id. at *7.

Derivative works

When authentic, legally obtained fabrics are acquired and used to create products for resale, access and substantial similarity are not at issue. However, a purchaser of fabric may incur liability for copyright infringement if the resulting creation is a derivative work of the original. Precious Moments Inc. v. La Infantil Inc., 975 F. Supp. 66 (D.P.R. 1997). Among the exclusive rights afforded a creator of an original fabric design is the right to prepare derivative works based on the work and to distribute copies of the work. The right to distribute a work is limited by the first-sale doctrine, which allows a purchaser of a legally made copy of the work to sell that particular copy without consent of the rights owner. However, the first-sale doctrine does not limit other rights, such as the right to make derivative works.

In the fabric arena, the first-sale doctrine may apply to fabric purchased by home crafters and others who purchase fabric and use it to make a product for sale. However, when the purchaser of fabric uses that fabric to create its own original work, he or she runs the risk of that work being a derivative work, which would not be covered by the first-sale doctrine and would constitute an infringement. In La Infantil, the District of Puerto Rico considered whether bedding made with authentic fabric was an infringing derivative work or was covered by the first-sale doctrine and noted that, in order to be a derivative work, a work must contain added creativity and originality. Id. The La Infantil court found that the bedding at issue did not comprise the necessary element of originality and was not a derivative work. Id. at 69. The more original a work made from existing fabric, perhaps as an elaborate quilt or wall-hanging, the higher the risk that the work will not be afforded protection under the first-sale doctrine.

Donna A. Tobin is a partner in the New York office of Baker & Hostetler who focuses her practice on copyright and trademark litigation and prosecution.