In what can only be described as a stunning case of confusion between the Section 410 evidentiary presumption afforded certain copyright registrations and a fraud on the Copyright Office challenge to the underlying validity of a copyright registration, a court in the Central District of California refused to even consider a defendant’s challenge to the plaintiff’s copyright ownership merely because the plaintiff had obtained a registration falsely listing itself as the author of a fabric design.
In L.A. Printex Industries, Inc. v. Macy’s Retail Holdings, Inc., the plaintiff was a garment textile company that had obtained a graphic design from an Italian studio, scanned the design into a computer, reduced the size of the image and repeated the design to create a pattern, which was then used as a fabric design. The plaintiff sued Macy’s for selling garments with what it alleged were similar fabric designs.
Macy’s moved for summary judgment on numerous grounds that will be familiar to any of us who have litigated fabric design cases, including lack of originality and ownership. The plaintiff had obtained a registration for the fabric design, listing itself (not the Italian design studio) as the sole original author of the design. It was undisputed, however, that the design was actually acquired from the Italian studio, and Macy’s argued (among other things) that the alleged transfer of rights from the Italian studio to the Plaintiff was invalid because it was not signed by the artist who created the design. Italian law does not recognize work made for hire, Macy’s argued, and therefore any purported transfer from the corporate studio was insufficient.
The court refused to even consider the argument, however, on the ground that the registration entitled plaintiff to a presumption that it owned the copyright, and that the work was original. Inexplicably, the court held that even where the claim of ownership (by original authorship) in the registration is false, the Section 410 presumption of ownership from that false claim still applies and can only be rebutted by proving fraud on the Copyright Office. But fraud on the Copyright Office pertains solely to the validity of a registration as a prerequisite to litigation. It has nothing to do with the wholly separate evidentiary issue of the Section 410 presumption.
The court used this inapposite reasoning to turn the rebuttable presumption of Section 410 into an irrebutable presumption, and refused to consider the sufficiency of the true chain of title. The court claimed that Macy’s had not introduced any evidence to rebut the presumption, but this is clearly wrong. The purported transfer of rights from the Italian design studio was obviously evidence rebutting the plaintiff’s claim of original authorship and also would be insufficient (in the absence of work for hire treatment under Italian law, which the court never addressed) to support the plaintiff’s ownership claim.
Here is the district court’s decision: