The opinion of the court was delivered by: Hon. Gonzalo P. Curiel United States District Judge
ORDER DENYING DEFENDANTS'
MOTIONS FOR SUMMARY
JUDGMENT ON COPYRIGHT
[Doc. Nos. 136, 170, &
Having carefully considered the briefs and exhibits, the Court finds that Plaintiff's copyright infringement claim and Defendants' statute of limitations and laches defenses involve disputed questions of fact that cannot be resolved by summary judgment, and therefore denies those motions.
By separate order, the Court scheduled oral argument on the remaining motions on December 20, 2012. Local Civil Rule 7.1.d. Upon the resolution of those motions, the case will be ready for trial. Accordingly, the Court requests the Magistrate Judge to issue an amended scheduling order.
Plaintiff Brighton Collectibles, Inc. ("Brighton") manufacturers and sells women's fashion accessories, including handbags. Brighton registered copyrights on several of its designs, in particular, Brighton "adorns" its handbags with a "hollow, sculpted, silver heart." Kohl Decl. ¶ 13. This action concerns 23 designs in Brighton's Western Collection.
Brighton filed this action in February 2010 against RK Texas Leather Manufacturing, Inc., and subsequently added Richard Ohr, K & L Import, Inc., NHW, Inc., YK Trading, Inc., JC NY, Joy Max Trading Inc., and AIF Corporation (collectively, "Defendants"), alleging violations of Brighton's intellectual property rights. RK Texas and Ohr filed cross claims for indemnification against the other defendants.
Defendants now challenge whether fourteen of Brighton's products can survive summary judgment due to alleged flaws in the registrations; an absence of originality, particularly since the designs are allegedly "derivative" of prior works; and a lack of similarilty. Defendants further contend that Plaintiff's claims are barred by the statute of limitations and the equitable doctrine of laches.
I. Summary Judgment Standard
Summary judgment is appropriate when the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). As the moving party, Defendants bear an initial burden of proving the absence of a disputed issue of fact; however, because Brighton bears the burden of proving infringement, it must come forward with "specific facts showing that there is a genuine issue for trial" in order to defeat the summary judgment motion. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Celotex, 477 U.S. at 325. The Court must construe the evidence and draw justifiable inferences in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
II. Copyright Infringement
To prevail on a copyright infringement claim, Brighton "must demonstrate '(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Benay v. Warner Bros. Entm't, Inc., 607 F.3d 620, 624 (9th Cir. 2010) (quoting Feist Publ'ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
A. Four Designs Not Registered Within Five Years of Publication
Brighton submitted certificates of registration for each of its claimed designs. Under the copyright laws, the registration of a copyright certificate constitutes "prima facie evidence of the validity of a copyright in a judicial proceeding commenced within five years of the copyright's first publication. 17 U.S.C. § 410(c)." Entm't Research Grp., Inc.
v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997). "The presumption is rebuttable, and does not definitively resolve the ownership issue." In re Napster, Inc. Copyright Litig., 191 F. Supp. 2d 1087, 1096 (N.D. Cal. 2002).
Defendants argue that four of the certificates are not prima facie evidence of authorship and copyrightability because the Callie, Charmaine, Melanie, and Heart Conch designs do not satisfy the five-year requirement. Rice Decl., Exs. A (Callie registered in 2000 and published in 2007), D (Charmaine published in 1998 and registered in 2011), & E (Melanie published in 1998 and registered in 2007); Kuo Decl., Ex. B (Heart Conch published in 1991 and registered in 1997).
At this stage of the proceedings, Defendants have not come forward with any evidence, they simply rely on the passage of time to question whether Brighton is entitled to rely on the presumption. Entm't Research, 122 F.3d at 1217-18; Napster, 191 F. Supp. 2d at 1095-96 (defendants questioned whether plaintiff owned rights to music works identified in complaint); Broadcast Music, Inc. v. Rockingham Venture, Inc., 909 F. Supp. 38, 43 & n.4 (D.N.H. 1995). The Copyright Act allows the district court the discretion to determine the evidentiary weight accorded to a certificate when the only flaw is the passage of time. 17 U.S.C. § 410(c). Most courts conclude that untimely certificates constitute prima facie evidence. E.g., Graphic Design Mktg., Inc. v. Xtreme Enters., Inc., 772 F. Supp. 2d 1029, 1032-33 (E.D. Wis. 2011); Yurman Design, Inc. v. Golden Treasure Imports, Inc., 275 F. Supp. 2d 506, 514 (S.D.N.Y. 2003); Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F. Supp. 1231, 1242 (N.D. Cal. 1995).
Here, however, Defendants challenge whether Brighton's designs are original. They argue the designs merely repeat common, generic elements from the public domain. Because the Copyright Office does not evaluate the originality of a design before issuing a certificate, courts have shifted the burden to the plaintiff when the certificates fall outside the five-year window. Metal Morphosis, Inc. v. Acorn Media Publ'g, Inc., 639 F. Supp. 2d 1367, 1374 (N.D. Ga. 2009).
"Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Feist, 499 U.S. at 346 (citation omitted). "To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as the possess some creative spark, 'no matter how crude, humble or obvious' it might be." Id. at 345 (citation omitted). "Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying." Id. at 345-36.
As discussed in more detail below, the Court finds that Brighton's designs satisfy the threshold standard of originality. LA Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 848-51 (9th Cir. 2012), amended 2012 U.S. App. LEXIS 12033 (June 13, 2012); N. Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992) (originality "means little more than a prohibition of actual copying") (citation and quotation marks omitted). Here, Brighton made independent choices of selection and arrangement with at least a minimal degree of creativity. Wesley Decl., Exs. 44, 45, 53, 54, 59, & 64; Kuo Decl. Ex. A; Feist, 499 U.S. at 348. The designers testified they used their own imaginations to compose familiar design elements in creative ways. E.g., Rice Decl., Ex. I (Clancy Depo. at 17-21, 44-46, 55, & 110-11) (Charmaine). Defendant's expert witness did not find any hearts that were exactly the same as the ones designed by Brighton. Wesley Decl, Ex. 119 (Zapata Depo. at 22); see Rice Decl., Ex. R (photographs).
In sum, the Court finds that the time delay between publication and registration does not rebut the presumption that the Callie, Charmaine, Melanie, and Heart Conch designs are copyrightable as evidenced by the certificates.
B. The Charmaine Heart and Carolina Designs
Defendants also argue the Charmaine Heart and Carolina designs lack sufficient originality to warrant copyright protection. Specifically, Defendants contend these two designs are "derivative" works of pre-existing works.
A derivative work is "based upon one or more pre-existing works, such as [an] . . . art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101. "A work consisting of . . . elaborations, or other modifications which, as a whole, represent an original work of authorship, is a 'derivative work.'" Id. A derivative work is afforded less protection than an original work. "The copyright in . . . a derivative work extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work." Id. § 103(b).
The Ninth Circuit applies a two-prong test for the copyrightability of a derivative work:
First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the original aspects of a derivative work must reflect the degree to which it relies on pre-existing material and must not in any way affect the ...