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Striking or substantial similarity in lace patterns

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

On April 24, in a copyright infringement case involving floral lace fabric patterns, the U.S. Court of Appeals for the Ninth Circuit explained what federal copyright law requires when comparing protected and allegedly copied works.  

In Malibu Textiles, Inc., v. Label Lane International, Inc., the court stated that to plead an adequate copyright infringement claim from which a reasonable jury could find for the plaintiff, Malibu must have alleged sufficient facts to show that it owns the copyright to the two lace patterns at issue and that the defendants "copied protected aspects of [the laces'] expression."

Level of similarity

After finding that Malibu sufficiently alleged that it owned registered copyrights in the lace patterns, the court explained that there are two ways to show "actionable copying" -- either that the two works are "strikingly similar," or "substantially similar" and that the defendants had access to the copyrighted works.

At the pleading stage of a case, to assess similarity the court applies the "extrinsic test," which is an objective, side-by-side comparison of the two works. First, the court looks at which elements of the original work are protectable and how broad is that protection.

The opinion explained that "elements found in nature" may not be protectable individually, but the unique, original combination and arrangement of these elements may be. In addition, in this case, protection is "broad" as opposed to "thin" because there is a wide range of patterns that could be created using the floral elements involved.

Second, the court compares the protected elements of the original with the same elements in the allegedly infringing work to see if the similarity is either striking or substantial. There is no set standard or rule for these assessments; it depends on the nature of the works. For fabric, it would be appropriate to look at "objective details in appearance, including, but not limited to, the subject matter, shapes, colors, materials, and arrangement of the representations."

Striking similarity

Two works are strikingly similar if their similarities are "so great" that it is "highly unlikely" that they were created independently. With this level of similarity, the court presumes the defendant had access to the original work, so access does not have to be alleged.

The two laces at issue use "nearly identical floral, leaf, boteh, and dot elements" with virtually the same arrangements and only minor differences -- close enough to adequately plead striking similarity.

Substantial similarity

To sufficiently plead substantial similarity, the plaintiff must allege facts that reasonably show the defendant has "reasonable opportunity" to copy the protected work. By alleging several ways in the marketplace that the defendant companies had public access to the protected lace fabric patterns such as in stores and showrooms, for example, Malibu adequately pleaded access.

(The court explained that the trial court improperly denied Malibu's request to amend their filings because of accidental omission of text and that the omitted material would have provided the alleged facts showing access.)

The first link above brings the reader to the original case, which contains side-by-side photos of the laces for comparison.




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