proceed thank your honour's good morning i'd like to reserve five minutes for a bottle of my twenty minutes thank you my name is stephanie alexander and i'm here for appellant urban outfitters inc and century twenty one department store my focus today is going to be primarily on the grounds of summary judgment in favor of the plaintiff i think that's the key issue in the case and summary judgment was improperly granted on the issue of copying the issue of substantial similarity can't be granted in favor of a plate on summary judgment to prove copying there are two elements necessary and that access and substantial similarity of the works substantial similarity has two elements are two components and that's the extrinsic test which is the objective test and the intrinsic test which is the subjective test the intrinsic test  requires is that part of me is whether an ordinary person would find substantial similarity in the total concept and feel of the works that's this court's words in the l a print text versus a postal case cited at length in the brief cutting to the chase this court has consistently held and published opinions that the intrinsic analysis prong is within the exclusive province of the jury it held so in the l a print text case i just referenced the were the exact language was that it's solely a question for the jury in that case in the funky films case the court similarly held that an ordinary person's subjective impressions of the similarities between two works is exclusively the province of the journey any of those cases the court finds the two works to be strikingly similar they did not right if we leave the these are strikingly similar if you believe they're strikingly similar that only goes to the problem of access and i cite that to the sell case as he s e l l e e striking similarity can only give rise to an inference of access which is a different element and i'll talk about that in just a moment but i think that that's there are two different things striking similarity does not take the place of the intrinsic striking similarity isn't that correct well again my recollection of those cases is in l a protects specifically a summary judgment was granted against the plaintiff in favor of the defendant because the court found that the subsumes the province of the jury on the intrinsic test and if the court cannot grant summary judgment against the plaintiff on the intrinsic test it can grant grant summary judgment in favor of a plaintiff on entrance exam either way or taking it away from the jury my question was about the object the object of test is only one of the two components right if you can't find that the objective test is  met then there's the courts were saying in both of those cases you can't go to the judge can't reverse that by going to the intrinsic sat test and saying it's strikingly similar now how do you deal with twentieth century fox case the twentieth don't you know in that case i guess i'm i'm not sure what component of that case that you're referring to is the i'm trying to preserve the right of a district judge to grant summary judgment when he or she sees that there's something that's strikingly similar where it would be so obvious that the case shouldn't proceed and as i read the twentieth century fox film case that the where there's the things are so overwhelmingly identical that the possibility of independent creation is excluded then the judge can grant summary judgment well in theory i think that a judge summary judgment you can have cases where there is on the intrinsic where the intrinsic test is met for different reasons not here they are those different reasons the well that you are stating an absolute rule before so this sounds aggressive i think that the courts prior decisions an absolute rule and what twentieth century fox does it says the opposite well twentieth century fox i think takes into consideration and my recall of that case is that case the court reversed summary judgment an appropriate case question is whether this is one well my response to that is this isn't one in many cases there is it because you have to go back it was not absolute  that case involves different facts in in that case there was access in this case there is no access and access and substantial similarity have an inverse relationship if you have access you need less substantial similarity if you don't have access which is the case here then you need you need more substantial similarity that puts the onus on the intrinsic prong and makes it very very important what about judge or point  that is again because access was not disputed at that case number one and number two in this case a striking similarity would get over the problem of access so i'm not sure why that is really the answer if you get over the problem access you still need to go to the extrinsic and the intrinsic test and in this case substantial similar striking similarity does not get you over the prong of access because the cases clearly hold that striking similarity does not completely obviate access if there is no other evidence of access there's an issue of fact as to whether or not the striking similarity is because of copying or because of something else  by finding that the evidence showed reckless indifference or reckless disregard because your client never bothered to to check on that i believe that goes to a different issue your honor that goes to the issue of whether the infringement was willful and i do plan to address that a little bit later but an r and r just to give you a preview that would place an onus on everybody creating a work to go out and determine whether the copyright and we don't believe that's the law but as for access here it isn't that access was impossible it's just that there isn't wide enough dissemination to assume access or i mean your position isn't that it was impossible to access this is it our position is that there was a disputed issue of fact on access and summary judgment was improper well dispute or just we don't know one way or the other exactly exactly there's not enough evidence of access even if you find striking similarity to say that summary judgment was proper on the issue of access and there's not enough so if you have a very complicated painting or so i mean very very complicated graphic that and then you find of another one that's exactly the same in every possible way so i know you're going to argue that these are not exact but incredibly complicated creative thing exactly the same your position is you can never decide that there must have been copying it always has to go to a jury well let me backpedal from that a little bit in this case we have an issue of a design on a fabric and the infringing article is a garment so if you go to the court's decision in the l a print text case the court says you have to look at the total concept and feel our position is that you can determine the total concept and feel from a piece of paper to two issues there number one the only evidence in front of the district court in the summary judgment phase w piece of paper and you have to look at the fabrics themselves you have to look at the garment you have to look at the total concept and feel complicated enough design that even if you only have it on paper you couldn't say this must have been copied there is no possible way that two people could independently come up with this i won't say that on a piece of paper or with respect to printed media it could never be the case i think that would be to extreme but i think when you're talking about fabric designs which is what is at issue here that you have to look at the media in which the infringing article and the copyrighted material exists and those are different things i don't even know if this is possible but drawing an analogy to fingerprint comparison suppose that you take a photo of raphe of each of the designs and use you take those two photographs side by side and you apply a computer analytic software program that looks at the varying points of similarity and just similarity like we do when we're matching lee fingerprints to a fingerprint database and the computer comes back and find hundred percent identical match in that case would it be impermissible for the district court to find striking similarity if fabrics and garments are at issue yes i believe it would because the courts the language as you have to look at the total concept in fields and that would only satisfy the extrinsic component the computer generated program it wouldn't you would you can't let a computer generated program or a district court judge there that opinion of either take the place but in this context of the lay person i think you're back to arguing that you can never grant summary judgment in these cases and that's not what twentieth century fox teaches i think in the context of this case you can't grant summary judgment because it does after all and have the dress right it's the total concept and feel you can't take we all i don't we have the dress  summary judgment was granted in favor of plaintiff on the basis of plaintiff's papers the dress was produced into court for the trial but liability was already adjudicated by the time what defendants would like is the opportunity to go back and have a jury look at the dress look at the fabric and make a decision as to whether based on the total concept and feel the works this is stan chalet similar from the point of view of an ordinary lay person that what the defendants believed they were deprived of when the district court granted summary judgment on this right they did have both of the trial but both side by side comparison photographs and the actual government but at that point summary judgment had already been  d your point is yes it wasn't that they didn't exist it was that plaintive supported their motion with only a piece of paper with printed images for which there was no foundation because the question i was asking or maybe it's not even a fair question is that if the jury had both pieces of evidence before it and rendered a verdict adverse to your client then what difference where's the harm from the district court granting summary judgment on the side by side comparison of the photographs without having the garment will the jury was instructed that there was already copying that's that's what the difference is so the jury found  asked ok the jury this went to the jury on the on the basis that that there was already copying so the jury did not get to decide whether or not there was copying the jury didn't decide whether there was access  and it's our position there were disputed issues of fact with respect to access and the jury didn't decide the substantial similarity so it goes to the jury in the context of urban have copied and that that was how the jury was instructed that urban has copied it has been found to copy so therefore i think it's a very easy leap for a jury to find willfulness even in the absence of knowledge because they haven't had to determine whether or not urban had access and actually copied so i think that's the distinction willfulness requires and knowledge that one once conduct constitutes infringement and there was no evidence offered a trial that urban knew of the plaintiff copyright at the time it created the dress evidence trial as you point out before which does relate to this was that your client was adopted a reckless and different test and we don't think that the evidence meets the reckless indifference standard even if that is the appropriate test i mean this strikes me as sort of an ostrich with its head buried in the sand is your position that that if that is the business modus operandi of the of the defendant that that insulates it from liability intentional right and so it's a you have intentional willfulness by burying your head in the sand and deliberately avoiding making any inquiry at all as to whether or not we might be infringing other copyright they have a chance at trial is that urban designs over five thousand or designs approximately five thousand designs a year that it's designers don't have the experience garment designs are not copyrighted and it buys a substantial amount of art from which you could infer that it's it's purchasing the rights to the art so if those facts don't get you to have a few q six nine to play in here are you arguing that you had a legitimate access to six nine two and that's how this happened i was trying to figure out if you were trying to argue something like that no we're not arguing we had access to keep the six one two the only possible overlap in the evidence at trial is that urban a significant amount of money buying art from mill print mill print is the original creator of the design it issue that was set so from that evidence we believe that there was evidence from which you know there could have been going back to the access prong there could have been access from a third party source that was not the design copyrighted so are you saying the milk print maybe gave it to you in an unauthorized way or i don't quite understand this access theory that gets you around the problem of what your theory is that you had access in some valid way or on the will the milk print evidence came in to trial because of the will issue is urban bought a design from mill print that was similar to the design that the plaintiffs copyrighted that would not be willful infringement so so you're saying maybe milk print gave you something very similar yes but you haven't found that very similar no matter now can i just ask you one other question so you said a little earlier and you've said this in your brief that the district court relied on authenticated exhibits and you say that the district relied on exhibit one but when i read the district court opinion it looks like it relied on exhibits three and five which were authenticated by declaration and i don't understand why you think that this record relied on exhibit one the argument the reporter transcript  version which we contend and it objected at trial that that was the inappropriate evidence in a fabric case and secondly that the that that was all that counsel argued and did you did you object and said that's not authenticated yet so what prevents dividend to disregard of uses discretion in determining that three and five were authentic based on the darker and that supported the foundation for their admission three and five i don't have an objection to three and five judgment opinion citing to the properly admitted exhibit but our response to that is it's still failing to take into account the total concept  setting aside the evidentiary in your briefs you argued even after they pointed out the other exhibits you came back in your reply and still said the district court only relied on exhibit one which seems like a false statement in your brief it was quite troubling so i i mean now you're jumping to a different argument you could have argued that's not the look and feel but that's not what you argued i'll go back and i'll look at the district court's opinion in just a moment my recollection from the oral argument again starting at the reporter's transcript approximately page seven is the total focus of the summary judgment argument was on exhibit one and there was repeated objections and there were objections that were filed written objections that were filed to the consideration of a day one even if the district court went and considered exhibits three and five are are same argument would apply setting aside the evidentiary objections that that's not take into account from a piece of paper the total concept and feel of the works at issue good morning your honors may please the court scott boros for the appellee i want to start by identifying where in the evidence for a record judge otero reference exhibit three and five it's s t r four eight nine as indicated by read the opinion referenced the properly authenticated exhibits exhibits to which there was no objection and also to correct a misstatement of law proffered by my colleague in the ninth intentional behavior is sufficient to support a finding willfulness in fact the the case and i certainly know so strong the united circuit knowledge or instruction recently amended to indicate that recklessness can't satisfy the will from the standard now going to the substance of the arguments proffered by my colleague the finding on m s on the motion for summary judgment should not be disturbed the designs are strikingly similar as found by but that evidence is buttress and that finding is buttressed by the fact that no independent creation evidence has been proffered by urban outfitters the case law that gives rise to the striking similarity doctrine in the case that striking similarity should be found when the designs are so similar that independent creation is precluded here there's no evidence of independent creation so it's easy for us to arrive at the fact that independent creation is precluded given that the designs are extremely similar very similar as conceded by urban outfitters urban outfitters did not bother to present any evidence independent creation so the striking similarity the court didn't actually make a finding as far as i can find saying strikingly similar that we need to do this ourselves in your view because it seems like it's a bit of a gap in the reasoning well when i argued the only print x case was which also addressed similarity between designs the ninth circuit panel indicated that the ninth circuit is able to review the designs just as easily as the district court and the ninth circuit can do that here because of course as this panel knows it can uphold judge what hiro's ruling on any basis and sufficient evidence of access was presented at the summary judgment stage to which we entered evidence that fourteen thousand yards of the unit colors design and issue was entered into the marketplace and in a ruling that's not published but a previous ruling by judge marshall in the united fabrics international inc first urban outfitters c seven eight nine five docket seventy nine the court finds on summary judgment urban outfitters liable for copyright infringement of a fabric design based in part on united fabrics disseminating about thirteen fourteen thousand yards of fabric into the marketplace before the infringement in that case the court found that was enough to permit a reasonable opportunity to access the design and given that would we have to know though where it was distributed and where they were collecting things i mean it's not clear to me we have enough to rule on that issue as a matter of law on this record agreed your honor but given that urban outfitters has failed to identify from where from which market obtained this design i would submit that under the recent live nation be freedmen ruling that information is soley within the province of urban outfitters that information being where they obtain the design they have failed to identify from where they attain the design so it's impossible for my client to prove that urban outfitters obtain the designs from the same market in which we disseminated the fabric and i can provide the site with live nation for the freedmen in that case the court recognized the long standing of equity whereby the party should not be forced to prove something that's clearly within the province of the opposing party and the extent that urban cannot identify for us from where detain this design it initially told us it found the design of dead at a vintage store and then later said that it found the design in a drawer somewhere how is my client supposed to prove that that finding that location that provenance of the design is from the marketplace in which we distribute the design it's simply an equitable so looking at everything holistically which we should there was a reasonable opportunity to access the design on the part of our go back to striking similarity if you will because evidence of access is unnecessary if they're striking similarities and i understand it from the baxter case so what do you how do you address the argument that your colleague has made the total concept and feel was lacking cases what's to positive the copyright office in this case a digital printout of the design was deposited with the copyright office that was then compared with the garment with images of the garment but it's a summary judgment images of the gun images of the government if we would have attempted to submit the fabric swatches as we've attempted in case in the past we would have drawn an objection from urban outfitters that because the fabric had not been deposited with the copyright office we were limited to only the deposit copy of the paper so even even with that even conceding that it was paper copies and not the actual fabric and as an aside the jury did have the fabric in the garments and they did make a finding of willful infringement surely  that the difference is identified by urban outfitters the size which is irrelevant the color which is also irrelevant and the the line renderings can be explained by the fact that we're comparing the deposit copy which  digital print on paper with images of a garment of course there's going to be line rendering differences if you're comparing a digital print with that sharpness with fabric on which of the crohn's and there's issues in that regard so there simply no differences and that's that was conceded by urban outfitters at deposition and it's counsel it's complicated designs were very similar and during deposition urban indicated the only difference is where those three that i just mentioned can you explain the relationship between q q six nine two one one three oh yes your honor and this takes him to my next point which is i need to emphasize the difference between copyright and registration because too often copyright infringement cases are becoming copyright registration infringement cases a copyright the cruise as judge thomas panel indicated in cosmetic ideas since one thousand seventy six as soon as you commit the design or the artwork to a tangible form your copyright that attaches at that point a covered registration is a formality send paperwork to the copyright office and they approve it and in many cases this is not the first time i've stood before this court and addressed copyright registration issues in many cases to many cases the courts will look at the formal the formalistic requirements of a copyright straighten and take action that's adverse to the artist or to the author and that's despite numerous cases such as l a print  united fabrics jewels jordin alaska stock that all indicate that issues with the registration are non issues unless the error putative error in the registration is immaterial it goes something like the originality of the work if i try to register mickey mouse and that registration issues for some reason that can be invalidated because of the material issue but if the issue is not material such as including something in section six be as issue here or not listing the titles per alaska stock l a protection all these other cases those issues are relevant to congress solve this problem of too many courts invalidating otherwise valid cases because of registration issues in two thousand and eight and enacted the pro i all this case law and makes clear that a copyright registration the presumption that attaches to it should not be disturbed unless there's a knowing inaccuracy that was made on purpose and that's to requirements so i think you might be jumping ahead to the legal implication of my question i was actually trying to just figure out are these the same pattern the two six one two and one one three are they identical are they different i just don't even understand kind of what these two things are  already is and what was it purchased like you have an ownership rights whether it's registered or not in the six one two yes that's that's three questions i'll address them in reverse order yes we do have a a written license from milk milk studio that provided that  science to us all the rights in the artwork so yes we do have those rights it was not registered because there's no need to register something you're cooperative crews as soon as it's made and therein lies the rub in terms of this this issue regarding the exclusion of the statute requires a party that's registering a collection to identify any preexisting works and  registration of copyright at that evidentiary e r three forty seven and we have a nice red box around the instructions for this particular provision of the registration because it instructs the applicant to identify any preexisting works on the application but what happened in this is going don't get too far in the weeds but the copyright office at some point over the last five years migrated the registration process from paper applications to online applications and when it did that it conflated section five in six of the paper registration so you'll see in the instructions section five is to identify any pre registered works and if you register a work once you're not to register it again so it makes sense if you've already registered the work that you would exclude it from a form of future registration but section six as a route to says to identify preexisting works works that have been published works that you purchased that had not necessarily been registered and on the paper registration that's made clear but as you can see from the registration issue in this case it's a result of electronic process and the electronic process conflates those to conflate preexisting works with preexisting registered works so the extent that it says the materials excluded that your attempt was to list it as a preexisting work ended up being listed as an explicit work absolutely and even then it was only the title of the work and is only the source artwork that we then created as derivative from and street wise and all these other cases say that if we have a derivative copy covered in the derivative or registration the derivative then we can sue for the underlying work and this issue is so so convoluted that the do you think they cost him one one three zero or six thank you or does it not matter well they absolutely copy p e one one three zero because the q q design was not published we marketed the eleven thirty artwork because in this fabric is that printing fabric is quite technical you can't take a source artwork and simply print it on fabric you have to develop it formatted put it in repeat and prepared for printing so the fabric that was published and printed by my client was p eleven thirty  have seen sixty nine some other way or could they have seen it in this registration itself well no you're not required to submit or deposit the prior works the derivative works are only to deposit what you're seeking to register so they wouldn't of been part of that but in a nother case that urban outfitters is a party to they are challenging the registry in this another copyright case with their legs of infringing ours rights in the design they are challenging the copyright registration in that case because the plaintiffs the author failed to identify the preexisting works so what we've done this case in our registration we've indicated that there are these other works that we incorporate into these final works they're challenging i in that case for not filling out six p or completing that section so we have been taking to inconsistent positions in regard to the same technical requirement of the copyright act and just not in the spirit and  policy of the act which as judge thomas indicated to tell the panel indicated in that the cosmetic ideas case were looking to reduce formalities and reduce these these burdens that we impose on these artists and bring in their cases these are copyright infringement cases we  focusing on do the artist create the work was a copy we should not be spending a lot of time and a lot of this the district court's time this panel time the ninth circuit's time reviewing these copyright registrations for these formalities the  says so every opinion on this issue of registration from the ninth circuit has made clear has taught us that the court should not be bogged down with these copyright formalities it's a promise of the copyright office to look into that the court should be looking at copyright infringement not copyright registration infringement yet in so many of these cases that's the first tack of an infringer has to attack the registration and courts still confused about five and six that you're pointing to something has happened a lot like if we agree with you do we need a published opinion on this five and six issues i think you see where i'm going or that's exactly what we're asking for the fact that urban outfitters itself is taking the make the opposite approach in two different cases regarding section sixty we're asking for this court to come out and say not for the first time but clearly that if there is an issue regarding the name of the author which is addressed in joules jordan it's not immaterial there's an issue regarding publication if there is an issue regarding section sixty none of these issues none of these  invalidate a registration in a copyright infringement case because the author is there to prove copyright infringement and the formalities of a registration which as judge thomas panel also noted in cosmetic i d s this is a piece of paper that's often just sent before  filing because the pre filing registration and reed elsevier said it's not even jurisdictional anymore the formalities attendant to this registration process need to be reduced in order to stop what's become a chilling effect on authors bringing their rights because these artists are not lawyers they don't have resources to parse what it means to publish a preexisting they simply know they created something and someone stole it and to jettison their cases because of this formality it's just not in the spirit i'll give you a couple minutes i know my time is short and i just wanted to make to clarify questions again going to last the issue that was just discussed our our issue with the registration is that p e o levon thirty isn't in the registration that's our issue is we're not saying that there was a mistake we're not saying that you think needs to be named or that there was no picture of it where saying that it needs to be listed all of the collective works that are listed that about are are part of the collection are listed on the registration and p eleven thirty is not listed on the registration so it's oh there's a place for us and you don't have to name the in the collection well we do but if you have a registration that names all of the parts of the collection except for the one for which they're claiming was infringed i think that gives rise to an issue of fact as to whether or not that one is in the collection people eleven thirty five of these are it wasn't in the collection the picture of it is not on the registration it was to the certificate of registration does not include the p l m thirty and it expressly includes excludes the source artwork so we have we believe that we have put forth enough evidence in the district court to demonstrate that it's at least an issue of fact as to whether the registration included the word what you said included the picture yes the application included the picture but the application included the picture under  response is that i think our argument has been misconstrued our argument is that it's not their number one and number two it was clearly excluded but it's not there because there was in the instructions well it could because you registered as to exactly what had to be listed with regard to prior source no i don't think that's why it's not there we don't agree that that's  clerical error at least there's no evidence that would meet our test of knowing falsity i guess and the question is whether it's immaterial our position is you don't get to know fraud on the copyright office if there is an issue of fact as to whether it's included in the first place the presumption doesn't arise so for the purpose of summary judgment you don't have the presumption arise and you have to go to the to the you have to prove it up that that's our position and that's our only position we're not we're not taking a position on the other council your your time your two minutes thank you that's the case is argued is submitted for decision and we'll be in recess for ten minutes before we hear