Sanctuary Clothing and a group of retailers including Amazon, Nordstrom and Macy’s just cemented their win in a copyright case brought by a California-based textile company over a fabric design.
The Ninth Circuit federal appeals court on Tuesday upheld a California federal court’s ruling from 2017 in favor of the defendants. The lower court had ruled that the textile company Fiesta Fabric’s copyright registration was invalid, and had also granted the defendants more than $121,000 in attorneys fees. Sanctuary was the manufacturer of a blouse allegedly made from a sheer fabric with an embroidered mixed-geometric design, but the retailers were included in the suit as vendors and beneficiaries, according to Fiesta’s complaint.
The case is marked by an interesting series of events in a copyright case, in which the lower court had scrutinized whether Fiesta’s copyright registration was valid in the first place. Before its copyright application, Fiesta had sold samples of the fabric with the design to certain customers, but had then apparently applied to register the design as part of an “unpublished” collection. Under the Copyright Act, a design is considered “published” if it has reached “the public by sale or other transfer of ownership,” according to the Ninth Circuit. Designs that are “published” can still be copyrighted, but they would have to be copyrighted separately.
Would such an inaccuracy doom the copyright registration? The lower court had posed the question to the Copyright Office, which replied that it indeed would not have registered the copyright under the “unpublished collections” category if it had known. The lower court then dismissed the case, and on Tuesday, the Ninth Circuit agreed with that decision.
“The district court did not err in finding that the [design] had been published prior to registration and that, therefore, Fiesta’s [registration] application contained an inaccuracy,” the appeals court panel wrote in its opinion.
Fiesta had argued that it could have corrected any inaccuracy with a supplemental registration indicating the date of publication of the design, according to the ruling. But the court found that still would not have persuaded the copyright office to register the design in an “unpublished” collection.
Jed Ferdinand of Ferdinand IP, an attorney for the defendants, said the Ninth Circuit ruling marked a rare win for defendants in copyright cases, where plaintiffs generally assert that they have a valid copyright registration and that there is an infringing design. Copyright disputes often end up settling.
“Courts that have looked at [these types of cases] have often times let the plaintiff correct the error, or found that the error was not worthy of dismissing the case,” Ferdinand said Tuesday.
“The court in this case found that the mistake was so fundamental to the registration that the law simply didn’t allow copyright protection,” he said. “Once you do that, you have to dismiss the case, because without a copyright, there is no case.”
Fiesta Fabric had sued clothing brand Sanctuary and the retailers in 2016, accusing them of selling garments with a design similar to one it had copyrighted in 2013. An attorney for Fiesta could not immediately be reached for comment Tuesday. A representative for Macy’s declined to comment on pending litigation.