U.S. Ninth Circuit - The FindLaw 9th Circuit Court of Appeals Opinion Summaries Blog

Urban Outfitters Burned for Stealing Fabric Company's Design

Urban Outfitters, the specialty retail chain geared towards hip teens, has a bit of a reputation for ripping off others' designs. It's not hard to find an artist who claims that the chain has picked up their designs -- sans permission, of course -- turning their art prints into miniskirts or their necklaces into knockoffs.

Now, at least one allegedly wronged party has gotten some justice. On Monday, the Ninth Circuit upheld a district court's ruling (on summary judgement no less) that UO had infringed on a fabric company's copyright, selling a textile that was a "near duplicate" of the original.

The Case of the Infringing Fabric

The case involves a design made by the art studio Milk Print and purchased by Unicolors, a Los Angeles company that produces fabrics and textiles. The Milk Print design was registered as part of Unicolors' "Flowers 2008" collection, with the company selling around 14,000 yards of fabric with the print.

Two years later, Urban Outfitters came out with a women's dress that bore a striking resemblance to the Milk Print design. The dress was sold in UO's subsidiary stories, Century 21 and Free People. (You can see a picture online of the fabric and dress.)

The district concluded on summary judgement that UO was liable for copyright infringement. After a two-day trial, a jury further found that Urban's infringement was willful. It awarded Unicolors $164,400 in damages and the court granted nearly $400,000 in costs, making Urban's dress an expensive one indeed.

Ninth Upholds Infringement Finding

Urban Outfitters challenged the findings of both infringement and willfulness, but failed to convince the Ninth Circuit. Where there is no direct evidence of copying, the Ninth explained, a plaintiff may rely on circumstantial evidence showing access to the copyrighted work and a substantial similarity between the copyrighted work and the allegedly infringing one. The similarity analysis involves a two-part test: one extrinsic test, looking at overlapping elements, and one intrinsic, looking at whether an "ordinary, reasonable person" would find the two to be substantially similar.

Urban argued that only a jury could apply the intrinsic test. The court itself, as was done on summary judgement, could not. But that position, the Ninth ruled "cannot be reconciled with our prior recognition that, in exceptional cases, works may be so identical that summary judgement in favor of a plaintiff is warranted." The alleged infringement here is "one of those exceptional cases," involving complex patterns with "nearly identical orientation, spacing, and grouping."

Further, because the two works were so similar, the court could infer access; Unicolors did not have to provide evidence of access.

Finally, when it came to determining that the infringement was willful, the Ninth turned to evidence of Urban's "reckless policy with regard to copyright infringement," in which the company "made no attempt to check or inquire" whether its designs infringed on existing copyrights. That recklessness or willful blindness is enough to support the jury's conclusion, the Ninth wrote.

This isn't Unicolors' first victory against infringing retailers, either. The company has been involved in at least 90 IP suits since 2005, Apparel News reports.

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