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Express, LLC v. Forever 21

September 2, 2010


The opinion of the court was delivered by: Otis D. Wright II United States District Judge


Currently before the Court is Defendant White Owl Clothing, Inc.'s ("White Owl") motion for summary judgment (Docket No. 90), Defendants Forever 21, Inc., Forever 21 Logistics, Inc., Forever 21 Retail, Inc., Jin Sook Chang, Do Won Chang, (collectively "Forever 21") and Steps Apparel Group, Inc.'s ("Steps") motion for summary judgment (Docket No. 93), and Plaintiff Express Ltd.'s ("Express") motion for summary judgment (Docket No. 97). After careful consideration of the briefing and evidence submitted in support of and in opposition to these motions, White Owl's motion is GRANTED, Forever 21 and Step's motion is GRANTED, and Express's motion is DENIED.


Express and Forever 21 are both clothing retailers with hundreds of locations nationwide. See 1st Amend. Compl. ¶¶ 17, 19. This case involves five garments sold at Forever 21 stores: four plaid men's shorts (the "Forever 21 Shorts") and one men's track jacket (the "Forever 21 Jacket"). Plaintiff Express alleges that all five Forever 21 garments are copies of garments designed and sold by Express, and brings claims for copyright infringement, trade dress infringement, and unfair competition.

A. The Plaids

Express first brings a claim for infringement of its copyrights in four plaid designs named "Bruin," "Jack," "Ocean," and "Roth" (collectively, the "Express Plaids" or "Plaids") based on Forever 21's sale of the four plaid Forever 21 Shorts. 1st Amend. Compl. ¶¶ 63-64. Defendant White Owl is the supplier of two of the Forever 21 Shorts, the two accused of infringing the Ocean and Jack Plaid copyrights, respectively. Decl. of Isaac Saul in Supp. of White Owl's Mot. Summ. J. ¶ 2. Defendant Steps is the supplier of the other two Forever 21 Shorts, accused of infringing the Roth and Bruin Plaid copyrights, respectively. Decl. of Key Chu in Supp. of Forever 21 & Steps's Mot. Summ. J. ¶ 2. Express alleges that the plaid designs on the Forever 21 Shorts are essentially exact copies of the Express Plaids.*fn1 See, e.g., 1st Amend. Compl. ¶ 47.

Express designer Michael Tower, the alleged creator of the copyrighted Express Plaids, gave detailed deposition testimony about the process by which he generated each of the four Plaids. Decl. of Theresa W. Middlebrook in Opp'n to Express's Mot. Summ. J., Exh. B; Decl. of Frank J. Colucci in Opp'n to Defendants' Mots. Summ. J., Exh. 5 (collectively, the "Tower Deposition").*fn2 Tower described the design process as follows:

A. It's very easy actually. We start -- This is how the process works: We start. We come up with inspiration, whether it's a tear sheet, whether it's a photograph, whether it's a garment. It can be any of those. I basically get that. I start with that. I use it for inspiration. I like it. I meet with my CAD designer. We talk about a couple of things, how we want to reengineer it, redesign it, and basically, that's how the process begins, basically.

Q: So in this case, you started out with pictures or swatches of some plaids along with pictures of shorts. That was your original concept before you went to go talk to the CAD designer?

A: Yes.

Q: Okay. And then you would show the CAD designer the swatches and photos or whatever you used for inspiration, you showed that to the CAD designer?

A: Yes.

Q: And then you would collaborate with the CAD designer to do what? What does the CAD designer do?

A: He -- He takes the pattern that I tell him, that I give him instructions on, and he renders that for us.

Q: So he takes the pattern that you show him, and he basically creates that on his CAD machine?

A: Yes.

Q: Okay. And then what happens? He creates it on the CAD machine. What does he do with it? He shows it to you?

A: Yes.

Q: Then what happens?

A: Then I take a look at it, and if I'm happy with it, I begin to do colorups with it.

Q: What does that mean, to do colorups?

A: Well, we have color stories for seasons. . . .

A: It means coloring -- taking the CAD and putting colors into that CAD.

Q: . . . [T]he line that you're introducing during the course of this season are going to follow certain color patterns that you've selected for the season?

A: Yes.

Tower Deposition at 53-55 (emphasis added).

Tower went on to confirm that he used this process to create each of the Plaids at issue in this case. For each of the four Plaids, Tower verified that the Plaid was based on a pre-existing design,*fn3 though he cannot remember precisely what design each Plaid was based on nor what he did or did not change when creating the Plaids from these original, pre-existing designs.

Q: In connection with [the Roth Plaid]. Do you remember what you showed the CAD designer, the CAD person, to create this particular plaid?

A: No. . . .

Q: But you do remember that you did show ...

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