Authors: Julia Anne Matheson, Danielle Wright Bulger
The United States District Court for the Southern District of New York recently awarded an Amsterdam-based accessories company a permanent injunction and over $86,000 in damages on its copyright infringement claim of textile designs. MPD Accessories B.V. v. Urban Outfitters, 2014 WL 2440683 (S.D.N.Y. May 30, 2014).
Plaintiff MPD brought suit against defendants Urban Outfitters and GMA Accessories claiming copyright infringement of its exclusive right to sell scarves with certain star and stripe designs. MPD purchases and creates textile designs for use on products it sells globally. The company acquired the design in question from Whiston & Wright, a United Kingdom textile studio, and slightly altered it before sending it to the Tongshi Factory in China for manufacturing. When visiting the factory, the CEO of defendant GMA examined the designs and concluded the “basic shapes” lacked enough creativity to qualify for copyright protection. Tongshi Factory sold the scarves with the same or similar design as MPD’s scarves to defendant GMA between 2011 and 2012. GMA then re-sold both the star design and stripe design scarves to Urban Outfitters. In mid to late 2012, plaintiff MPD discovered the scarves for sale on Urban Outfitters’ website and in defendant GMA’s retail store in New York.
Because Tongshi Factory and MPD had e-mail discussions regarding design-formatting adjustments, the defendant claimed that Tongshi Factory was the sole or joint author of both the stripe design and the star design. The District court however called the messages insignificant and thus unprotectable because the factory merely changed some of the spacing and sizing after receiving instructions from the plaintiff. “There is no genuine dispute that the color, size, arrangement and repetition of the shapes were all the aesthetic choices of the Plaintiff. Their unique combination can be protected as a whole,” the court wrote in its opinion.
The defendants also claimed that the Whiston & Wright transfer of ownership agreement was invalid because MPD executed it a year after acquisition of the original design. But, the court disregarded this argument as well after noting the defendants offered no law to support its position.
The court granted the plaintiff’s motion for summary judgment, ordered a permanent injunction against the defendants, and mandated Urban Outfitters to pay $61,382.62 and GMA to pay $25,533 in actual damages.
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