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

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
L.A. PRINTEX INDUSTRIES, INC., a 
California Corporation, No. 10-56187
Plaintiff-counter-defendant- D.C. No.
Appellant, 2:09-cv-02449-JFW-
v.  FMO
AEROPOSTALE, INC., a New York ORDER AND
Corporation; MS. BUBBLES, INC., a AMENDED
California Corporation, OPINION
Defendants-Appellees.

Appeal from the United States District Court
for the Central District of California
John F. Walter, District Judge, Presiding
Argued and Submitted
December 5, 2011—Pasadena, California
Filed April 9, 2012
Amended June 13, 2012
Before: Dorothy W. Nelson, Ronald M. Gould, and
Sandra S. Ikuta, Circuit Judges.
Opinion by Judge Gould
6737
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6741
COUNSEL
Scott A. Burroughs (argued), Stephen Doniger, and Regina Y.
Yeh, Doniger / Burroughs APC, Culver City, California, for
the plaintiff-appellant.
Deborah F. Sirias (argued) and Robert M. Collins, Lewis
Brisbois Bisgaard & Smith LLP, Los Angeles, California; Jef-
frey A. Miller, Lewis Brisbois Bisgaard & Smith LLP, San
Diego, California; Kristin L. Holland, Cory A. Baskin, and
Zia F. Moddabber, Katten Muchin Rosenman LLP, Los
Angeles, California; and Jay Shapiro, Katten Muchin Rosen-
man LLP, New York, New York, for the defendants-
appellees.
ORDER
The opinion in the above-captioned matter filed on April 9,
2012, and published at 676 F.3d 841, is amended as follows:
At slip opinion page 3795, lines 19-22, change to .
The panel has voted to deny the petition for panel rehear-
ing. Judges Gould and Ikuta have voted to deny the petition
for rehearing en banc, and Judge Nelson has so recom-
mended. The full court has been advised of the petition for
rehearing en banc and no judge has requested a vote on
whether to rehear the matter en banc. Fed. R. App. P. 35. The
petition for panel rehearing and rehearing en banc is denied.
No future petitions for rehearing or rehearing en banc will
be entertained.
IT IS SO ORDERED.
OPINION
GOULD, Circuit Judge:
L.A. Printex Industries, Inc. (“L.A. Printex”) appeals the
district court’s summary judgment order in favor of Aeropos-
tale, Inc. and Ms. Bubbles, Inc. (“Defandants”) in L.A. Prin-
tex’s copyright infringement action. Because there are
genuine disputes of material fact on access and substantial
similarity, we reverse and remand.
I
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.
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6743
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 collec-
tion 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 manufactur-
ers 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 copy-
right registration for Small Flower Group A contained an
error. Two of the five designs, but not C30020, had been pub-
lished before the July 17, 2002 date of registration. On Febru-
6744 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
ary 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 reg-
istration 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 pub-
lished designs would not. On May 10, 2010, L.A. Printex
filed a second application for supplementary registration to
remove the two previously published 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 supplemen-
tary registration.
L.A. Printex and Defendants filed cross-motions for sum-
mary 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 Defen-
dants’ alternative argument that L.A. Printex’s copyright reg-
istration 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.
II
We have jurisdiction under 28 U.S.C. § 1291. We review
the district court’s grant of summary judgment de novo. Elli-
son v. Robertson, 357 F.3d 1072, 1075 (9th Cir. 2004). Sum-
mary judgment is appropriate if, viewing the evidence in the
light most favorable to the nonmoving party, “there is no gen-
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6745
uine 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 rea-
sonably be resolved in favor of either party.” See Ellison, 357
F.3d at 1075.
III
[1] 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 origi-
nal.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991).
The district court granted summary judgment for Defen-
dants because it concluded that there was no genuine issue of
material fact as to the second element, Defendants’ copying
of original elements of C30020.
[2] “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.
A
[3] “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
6746 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
must show a reasonable possibility, not merely a bare possi-
bility, that an alleged infringer had the chance to view the pro-
tected 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 evi-
dence of either (1) a “chain of events” linking the plaintiff’s
work and the defendant’s access, or (2) “widespread dissemi-
nation” of the plaintiff’s work. Three Boys Music, 212 F.3d
at 482.
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 dissemi-
nation” 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 possibili-
ty” 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 con-
tained 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 alleg-
edly infringing shirts.1
1
Defendants object to the sales printout’s admissibility as a business
record and argue that L.A. Printex’s differing characterizations of the
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6747
[4] 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 dis-
seminated. 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 dissemi-
nated 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 was more than a ‘bare
possibility’ that [the defendant] had access to [the plaintiff]’s
quantity of yards sold make the document untrustworthy. The district
court stated that it had either overruled or not ruled on the parties’ objec-
tions to evidence. Viewing the sales printout in the light most favorable
to L.A. Printex, we may consider it as part of the district court record. The
numbers speak for themselves, and if credited, show sales of more than
50,000 yards.
6748 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
. . . designs,” and affirmed the district court’s grant of sum-
mary judgment for the defendant. Id. at 1144-45.
[5] The circumstances here differ from those of our prior
cases, and so those cases, though instructive, are not disposi-
tive. 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 oper-
ate 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. Bub-
bles 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 possi-
bility” 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.
B
To determine whether two works are substantially similar,
we apply a two-part test. Smith, 84 F.3d at 1218. The “extrin-
sic 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
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6749
“ ‘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 & Televi-
sion, 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. Free-
man, 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, sum-
mary 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, “which have
softer edges and are more impressionistic in appearance”; (2)
on C30020, “multiple shades of one color are used to give the
flowers their definition and sharper edges, while multiple
shades of green are used to give the leaves and stems their
definition and clean lines,” but on the allegedly infringing
shirts, by contrast, “the flowers are of one uniform color, with
the leaves and stem a single shade of green”; (3) C30020
“contains an overall background pattern of almost lace-like
flowers that is completely lacking” on the allegedly infringing
shirts; and (4) the groupings of flowers, stems, and leaves
6750 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
within a vertical row are “spaced much farther apart” on
C30020 than on the allegedly infringing shirts.
Notwithstanding these observations by the district court,
our comparison of C30020 and Defendants’ allegedly infring-
ing 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 distin-
guish protectible from unprotectible elements and ask only
whether the protectible elements in two works are substan-
tially 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 sub-
ject matter, shapes, colors, materials, and arrangement of the
representations.” See id. at 826 (comparing “art works”).
[6] Original selection, coordination, and arrangement of
unprotectible elements may be protectible expression. See
Feist Publ’ns, 499 U.S. at 362; 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 infringe-
ment,” a court must “dissect them into their separate compo-
nents, 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
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6751
of the symbols “as felt appliques stitched to the sweaters’ sur-
face,” “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 defen-
dant’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 ele-
ments 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:
Both patterns depict small clusters of flowers and
leaves. The shapes of the flower petals and the
leaves are virtually identical, and feature similar
defining line work and highlights in the flowers and
leaves. Both patterns depict leaves that do not appear
to be attached to any of the flowers. Both patterns
are “tossed,” which means that they have no top or
bottom and are non-directional, and appear in repeat.
Id. at 102.
[7] Though the Second Circuit’s “ordinary observer” and
“more discerning ordinary observer” tests differ somewhat
from our two-part extrinsic/intrinsic test for substantial similar-
ity,2 its reasoning, at least in the context of fabric designs, is
persuasive, and it guides our comparison of the designs in this
case.
[8] C30020 is a repeating pattern of bouquets of flowers
and three-leaf branches.3 The idea of a floral pattern depicting
2
See Knitwaves, 71 F.3d at 1002-03; Folio Impressions, Inc. v. Byer
California, 937 F.2d 759, 766 (2d Cir. 1991).
3
We compare Defendants’ design to the deposit copy of C30020.
Because we conclude that a rational jury could find that the two designs
are substantially similar, it is not necessary for us to analyze the similari-
ties between Defendants’ design and fabric swatches of C30020. But on
6752 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
bouquets and branches is not protectible, and C30020 has ele-
ments that are not protectible, for example the combination of
open flowers and closed buds in a single bouquet or the green
color of stems and leaves. See Satava v. Lowry, 323 F.3d 805,
811 (9th Cir. 2003).4 However, L.A. Printex’s original selec-
tion, coordination, and arrangement of such elements is pro-
remand, the district court—and the jury—may consider fabric swatches of
C30020 in applying our two-part test for substantial similarity, so long as
the district court determines that the digital prints that L.A. Printex depos-
ited with the Copyright Office constitute “one complete copy” of C30020,
and that the fabric swatches are also “copies” of C30020. See 17 U.S.C.
§ 101 (defining copies as “material objects, other than phonorecords, in
which a work is fixed by any method now known or later developed, and
from which the work can be perceived, reproduced, or otherwise commu-
nicated, either directly or with the aid of a machine or device”); id.§ 113(a) (“[T]he exclusive right to reproduce a copyrighted pictorial,
graphic, or sculptural work in copies under section 106 includes the right
to reproduce the work in or on any kind of article, whether useful or other-
wise.”); id. § 408(b)(1) (requiring deposit of “one complete copy” for reg-
istration); Three Boys Music, 212 F.3d at 486 (stating that “our definition
of a ‘complete copy’ is broad and deferential”).
4
In Satava, we held that “ideas, first expressed by nature, are the com-
mon heritage of humankind, and no artist may use copyright law to pre-
vent others from depicting them.” 323 F.3d at 812. Here too, we stress that
we will not give copyright protection to ideas recurring in nature, such as
flowers with brightly colored petals, stems, and buds, because brightly
colored flowers exist in nature. Unlike Satava’s jellyfish sculptures, how-
ever, C30020 is “stylized and not lifelike,” and depicts not flowers as they
appear in nature but an artistic combination of floral elements that is suffi-
ciently original to merit copyright protection. See Hamil Am., 193 F.3d at
101. What we held in Satava about “the common heritage of humankind”
is reinforced by the Supreme Court’s recent decision in Mayo Collabora-
tive Services v. Prometheus Laboratories, Inc., holding that laws of nature
are not patentable but that an application of a law of nature may merit
patent protection if it “contain[s] other elements or a combination of ele-
ments . . . sufficient to ensure that the patent in practice amounts to signifi-
cantly more than a patent upon the natural law itself.” ___ S. Ct. ___, No.
10-1150, 2012 WL 912952, at *4-5 (Mar. 20, 2012). We commend the
general proposition that our laws of intellectual property do not give
strong protection to one who merely copies or recites what nature has pro-
vided.
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6753
tectible. See Feist Publ’ns, 499 U.S. at 362; Metcalf, 294 F.3d
at 1074. Because there is “a wide range of expression” for
selecting, coordinating, and arranging floral elements in styl-
ized fabric designs, “copyright protection is ‘broad’ and a
work will infringe if it’s ‘substantially similar’ to the copy-
righted work.” Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d
904, 913-14 (9th Cir. 2010). That is, “there are gazillions of
ways” to combine petals, buds, stems, leaves, and colors in
floral designs on fabric, in contrast to the limited number of
ways to, for example, “paint a red bouncy ball on black can-
vas” or make a lifelike glass-in-glass jellyfish sculpture. See
id.; Satava, 323 F.3d at 812.
[9] 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 simi-
lar scale and layout. See id. at 103.
[10] 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 simi-
larities 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 appear-
ance in one of defendant’s fabrics of colors identical to plain-
tiff’s is additional evidence of actual copying, as well as
another factor leading to the conclusion that the aesthetic
6754 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
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 sub-
ject matter.”).
The differences noted by the district court do not compel
the conclusion that no reasonable juror could find that Defen-
dants’ design is substantially similar to C30020. Rather, in
light of the similarities described above, the differences sup-
port 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 dissimi-
lar, 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 Defen-
dants’ 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 substan-
tial similarity where plaintiff claimed that differences between
two rugs were “relatively small” and “consistent with short-
cuts 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.
[11] In granting summary judgment for Defendants, the
district court also reasoned that Defendants’ design lacks the
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6755
background pattern in C30020 and that the groupings of flow-
ers, stems, and leaves are spaced farther apart in C30020 than
in Defendants’ design. But a copyright defendant need not
copy a plaintiff’s work in its entirety to infringe that work. It
is enough that the defendant appropriated a substantial portion
of the plaintiff’s work. See Newton v. Diamond, 388 F.3d
1189, 1195 (9th Cir. 2004); Cavalier, 297 F.3d at 825; cf.
Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d
Cir. 1936) (Hand, J.) (“[I]t is enough that substantial parts
were lifted; no plagiarist can excuse the wrong by showing
how much of his work he did not pirate.”). A rational jury
could find that despite some differences between Defendants’
design and C30020, the similarities in the selection, coordina-
tion, and arrangement of bouquets and three-leaf branches are
sufficiently substantial to support an inference of copying.
Accordingly, we hold that objective similarities in the expres-
sive elements of Defendants’ design and C30020 present a
genuine dispute of material fact under the extrinsic test.
[12] At the intrinsic stage, “we ask, most often of juries,
whether an ordinary reasonable observer would consider the
copyrighted and challenged works substantially similar.” Mat-
tel, 616 F.3d at 914. But on a summary judgment motion, a
court’s attempt to apply this subjective and fact-oriented stan-
dard, 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 substan-
tial similarity).5 As our precedent has evolved, the extrinsic
test considers the objective expressive similarities in two
works and leaves the subjective evaluation of such similarities
to the intrinsic test. Apple Computer, Inc. v. Microsoft Corp.,
35 F.3d 1435, 1142 (9th Cir. 1994). A subjective evaluation
of the expressive similarities in two fabric designs, here
5
In Cavalier, we left open the question whether the “Shaw rule” applies
to art work. 297 F.3d at 826. Our decision today suggests that at least on
the facts here presented, it does.
6756 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
intended for public consumption as clothing apparel, is best
suited for the trier of fact. Thus, in light of our conclusion that
the competing designs present a triable issue of fact under the
extrinsic test, on the facts here involving stylized floral fabric
designs, the issue of substantial similarity must go to the jury.
IV
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. Defen-
dants 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, 130 S. Ct. 1237, 1241 (2010). “A certificate of
registration satisfies the [registration requirement], regardless
of whether the certificate contains any inaccurate informa-
tion,” unless (1) “the inaccurate information was included on
the application for copyright registration with knowledge that
it was inaccurate,” and (2) “the inaccuracy of the information,
if known, would have caused the Register of Copyrights to
refuse registration.” 17 U.S.C. § 411(b)(1). Thus we have held
that “inadvertent mistakes on registration certificates do not
invalidate a copyright and thus do not bar infringement
actions, unless the alleged infringer has relied to its detriment
on the mistake, or the claimant intended to defraud the Copy-
right Office by making the misstatement.” Urantia Found. v.
Maaherra, 114 F.3d 955, 963 (9th Cir. 1997); see also, e.g.,
Jules Jordan Video, Inc. v. 144942 Canada, Inc., 617 F.3d
1146, 1156 (9th Cir. 2010); Lamps Plus, 345 F.3d at 1145; 2
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6757
Nimmer on Copyright § 7.20[B][1] (“[A] misstatement or
clerical error in the registration application, if unaccompanied
by fraud, should neither invalidate the copyright nor render
the registration certificate incapable of supporting an infringe-
ment action.”).
A copyright owner may file an application for supplemen-
tary 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 con-
tained 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 can-
celled,” 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 distin-
guish 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 ‘collec-
tion.’ ” 37 C.F.R. § 202.3(b)(4)(i)(B).6
6
A combination of such elements is considered a “collection” if:
(1) The elements are assembled in an orderly form;
(2) The combined elements bear a single title identifying the
collection as a whole;
(3) The copyright claimant in all of the elements, and in the
collection as a whole, is the same; and
(4) All of the elements are by the same author, or, if they are
by different authors, at least one of the authors has contrib-
uted copyrightable authorship to each element.
6758 L.A. PRINTEX INDUSTRIES v. AEROPOSTALE
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 regis-
tration 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 supple-
mentary registration. We agree with L.A. Printex.
[13] The July 2002 certificate of registration for Small
Flower Group A contained an error—the inclusion of two pre-
viously published designs in a work registered as an unpub-
lished collection. But that error in itself does not invalidate
the registration or render the certificate of registration incapa-
ble of supporting an infringement action. 17 U.S.C. § 411(b);
Lamps Plus, 345 F.3d at 1145; 2 Nimmer on Copyright
§ 7.20[B][1]. The record, when viewed in the light most
favorable to L.A. Printex, does not demonstrate that L.A.
Printex knowingly included previously published designs in
its application for copyright registration such that the error
was other than an inadvertent mistake, or that L.A. Printex
intended to defraud the Copyright Office. See 17 U.S.C.
§ 411(b)(1)(A); Lamps Plus, 345 F.3d at 1145. Upon learning
of its registration error, L.A. Printex corrected it. It filed an
application for supplementary registration, communicated
with the Copyright Office about the error through email and
phone correspondence, and filed a second application for sup-
plementary registration. Moreover, the Copyright Office
issued a certificate of supplementary registration. Its decision
to do so after it was told of the two designs’ prior publication
Registration of an unpublished “collection” extends to each copy-
rightable element in the collection and to the authorship, if any,
involved in selecting and assembling the collection.
37 C.F.R. § 202.3(b)(4)(i).
L.A. PRINTEX INDUSTRIES v. AEROPOSTALE 6759
shows that the error was not one that “if known, would have
caused the Register of Copyrights to refuse registration.” 17
U.S.C. § 411(b)(1)(B). L.A. Printex’s registration error does
not bar its action against Defendants for infringement of its
copyright in C30020.
V
We REVERSE the district court’s grant of summary judg-
ment, VACATE the award of attorneys’ fees, and REMAND
for further proceedings consistent with this opinion.