## Facts

- Unicolors, Inc. (Unicolors), a textile converter, obtained a copyright registration covering a group of fabric patterns, including a repeating daisy design with a polka-dot background (the “daisy design”).
- The daisy design featured the same daisy motif repeated at equal intervals in a uniform, repeating layout; Unicolors also used a generic polka-dot background in more than one fabric design.
- Royal Printex, Inc. (Royal), a fabric printer, printed fabric bearing a daisy-and-polka-dot pattern for a customer after receiving a CAD file through the garment supply chain; Royal printed roughly 1,900 yards of fabric using that file.
- Royal’s printed design and Unicolors’ daisy design were essentially identical, including the same individual daisies arranged in the same repeating pattern over a polka-dot background.
- Royal filed suit seeking a declaratory judgment that it did not infringe Unicolors’ asserted copyright. Unicolors counterclaimed for copyright infringement (and related secondary liability theories against other parties connected to the clothing production and sales).
- At trial, Unicolors offered testimony that the daisy design was an original work created by Unicolors. Unicolors did not produce design-development records supporting independent creation and did not identify a specific designer who created the work.
- A trial exhibit, a 1997 book titled *Forties Fabrics*, contained a fabric design captioned as from 1949 that was almost identical to Unicolors’ and Royal’s designs in the daisy elements and their repeating placement. The principal difference was that the book’s design used a ticking-stripe background instead of polka dots.
- After a bench trial, the court issued findings of fact and conclusions of law addressing whether Unicolors owned a valid, protectable copyright in the daisy design.

## Issues

1. Whether Unicolors proved ownership of a valid copyright in the daisy design, given evidence that a near-identical daisy pattern appeared in a published design dated 1949 and Unicolors’ limited proof of independent creation.
2. If Unicolors failed to prove a valid copyright, whether Unicolors could prevail on its infringement and contributory-infringement counterclaims.
3. Whether Royal was entitled to declaratory relief of noninfringement.

## Decision

- The court found that Unicolors did not establish that the daisy design contained the minimal original authorship required for copyright protection in light of the near-identity to the 1949 design and the limited evidence of independent creation.
- Because Unicolors failed to prove ownership of a valid copyright in the daisy design, the court rejected Unicolors’ copyright infringement and contributory-infringement counterclaims.
- The court entered judgment in favor of Royal and granted declaratory relief of noninfringement.

## Legal Principles

- To prevail on a copyright infringement claim, a claimant must prove (1) ownership of a valid copyright and (2) copying of protected elements that are original.
- Copyright requires at least a minimal degree of original expression; common design features and standard background patterns (such as generic polka dots) are not protected as such.
- A copyright registration may create a presumption of validity, but that presumption can be rebutted by evidence calling originality into question; once rebutted, the claimant must prove protectable original authorship.
- Where a work closely tracks a preexisting design and the differences are minor or consist of substituting one commonplace background for another, the work may lack sufficient original authorship to support protection beyond any non-trivial additions.
- If the claimant cannot show a valid copyright interest in protectable expression, infringement claims fail as a matter of law, and a party accused of infringement may obtain declaratory relief of noninfringement.

## Conclusion

In *Royal Printex v. Unicolors*, the court held that Unicolors did not prove the requisite originality in its registered daisy fabric design because the design’s key expressive elements—its daisies and their repeating placement—were nearly identical to a published pattern dated 1949, and Unicolors offered little corroborated evidence of independent creation; without a valid copyright, Unicolors’ infringement counterclaims failed and Royal obtained a declaration of noninfringement.


Royal Printex v. Unicolors, 29 Copr. L. Dec. 804 (2009)