United States District Court, C.D. California
GRANTING DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT
; SUA SPONTE ENTERING SUMMARY JUDGMENT AS TO
PLAINTIFF'S REMAINING CLAIMS; AND DENYING AS MOOT
PLAINTIFF'S MOTIONS FOR SUMMARY JUDGMENT , FOR LEAVE
TO AMEND , AND FOR SANCTIONS 
D. WRIGHT, II UNITED STATES DISTRICT JUDGE
motions are currently pending before the Court. Defendants
Specialty Retailers, Inc. and Mark-Edwards Apparel Inc.
(together, “Defendants”) have moved for partial
summary judgment against Plaintiff Urban Textile, Inc.
(“Urban”) (ECF No. 52), and Urban has moved for
summary judgment (ECF No. 54), leave to amend the complaint
(ECF No. 62), and sanctions against Defendants (ECF No. 63).
After these motions were briefed but before their respective
hearing dates, the Court entered partial summary judgment in
a related case styled as Urban Textile, Inc. v.
Mark-Edwards Apparel Inc. et al.
(“Mark-Edwards”) (case number
2:14-cv-8285). In light of its decision in
Mark-Edwards, the Court requested additional
briefing from the parties on issues of collateral estoppel.
(ECF No. 76.) The parties have now provided the Court with
supplemental briefing, and the matters are ready for
decision. For the reasons discussed below, the Court
GRANTS Defendants' motion for partial summary judgment,
sua sponte ENTERS SUMMARY JUDGMENT as to
Plaintiff's remaining claims, and DENIES AS MOOT
Plaintiff's motions for summary judgment, for leave to
amend the complaint, and for sanctions.
FACTUAL AND PROCEDURAL BACKGROUND
copyright action, Urban alleges infringement of four of its
fabric textile designs, numbered UB-4694; UB-4638; UB-4701;
and UB-4672. (See generally First Am. Compl.
(“FAC”).) This is not Urban's only copyright
action in the Central District of California. Other than
Mark-Edwards and the instant case, Urban has also
filed a case titled Urban Textile, Inc. v. Rue 21 Inc.,
et al. (“Rue 21”) (case number
2:16-cv-9155). The defendants in these related actions
overlap to varying degrees with the defendants in the instant
March 31, 2017, the Court entered partial summary judgment
against Urban in Mark-Edwards as to eleven out of
the twelve designs Urban asserted in that case. (See
Order Granting Partial Summ. J., ECF No. 139 in
Mark-Edwards.) The Court based its decision on a
finding that Urban could not, as a matter of law, prove that
it owned valid copyright registrations for the designs at
issue. (See Id. at 5.) This finding was brought
about by the imposition of discovery sanctions. When Urban
refused to produce any information regarding publication, the
Magistrate Judge determined as a matter of law that Urban had
“published” its copyrighted designs prior to
registration as part of an unpublished collection.
(Id.; see also Recomm. of Magistrate Judge
Mumm, ECF No. 136.)
designs in Mark-Edwards overlap with all of the
designs at issue in this case. Because the basis for summary
judgment in Mark-Edwards goes to the registration of
the designs, the Court ordered the parties in this case to
submit supplemental briefing on the possibility of collateral
estoppel. In their supplemental briefing, Defendants argue
convincingly that because the Court already determined in
Mark-Edwards that Urban cannot demonstrate ownership
of valid copyright registrations for the designs at issue, it
should reach the same result in the present case. (Def. Supp.
Br. 1, ECF No. 78.) Urban did not address the collateral
estoppel issue but instead asked the Court to stay the
instant case pending the resolution of Mark-Edwards
on appeal to the Ninth Circuit. (Pl. Supp. Br. 1, ECF No.
courts will not relitigate issues in a second action that
have already been litigated-and were necessary to the
outcome-in a prior action. Parklane Hosiery Co.,
Inc. v. Shore, 439 U.S. 322, 326 n.5 (1979). This
doctrine, called “issue preclusion, ” applies
(1) the issue necessarily decided at the previous proceeding
is identical to the one which is sought to be relitigated;
(2) the first proceeding ended with a final judgment on the
merits; and (3) the party against whom [issue preclusion] is
asserted was a party or in privity with a party at the first
Paulo v. Holder, 669 F.3d 911, 917 (9th Cir. 2011)
(brackets in original; quoting Hydranautics v. FilmTec
Corp., 204 F.3d 880, 885 (9th Cir. 2000). Moreover,
invocation of claim preclusion requires that the first
adjudication offered a “full and fair opportunity to
litigate.” Garity v. APWU Nat'l Labor
Org., 828 F.3d 848, 859 (9th Cir. 2016) (quoting
Kremer v. Chem. Constr. Corp., 456 U.S. 461, 481
& n.22 (1982)).
their motion for partial summary judgment, Defendants request
that the Court enter judgment as to designs UB-4701 and
UB-4694. (Mot. for Partial Summ. J. 1.) However, as discussed
below, the Court finds that summary judgment is appropriate
not only ...