FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

MALIBU TEXTILES, INC., a New York 

corporation,

Plaintiff-Appellant,

v.

LABEL LANE INTERNATIONAL, INC., a 

California Corporation; ENTRY, INC., 

DBA ALT B., a California 

Corporation,

Defendants-Appellees.

No. 17-55983

D.C. No.

2:14-cv-04054-

R-MAN

MALIBU TEXTILES, INC., a New York 

corporation,

Plaintiff-Appellant,

v.

H&M HENNES & MAURITZ, L.P., a 

New York limited partnership,

Defendant-Appellee.

No. 17-55984

D.C. No.

2:14-cv-01018-

R-E
2 MALIBU TEXTILES V. LABEL LANE INT’L

MALIBU TEXTILES, INC., a New York 

corporation,

Plaintiff-Appellee,

v.

H&M HENNES & MAURITZ, L.P., a 

New York limited partnership,

Defendant-Appellant.

No. 17-56531

D.C. No.

2:14-cv-01018-

R-E

OPINION

Appeals from the United States District Court

for the Central District of California

Manuel L. Real, District Judge, Presiding

Argued and Submitted January 7, 2019

Pasadena, California

Filed April 24, 2019

Before: A. Wallace Tashima and Paul J. Watford, Circuit 

Judges, and Jack Zouhary,* District Judge.

Opinion by Judge Zouhary

 * The Honorable Jack Zouhary, United States District Judge for the 

Northern District of Ohio, sitting by designation.
MALIBU TEXTILES V. LABEL LANE INT’L 3

SUMMARY**

Copyright

The panel reversed the district court’s dismissal of two 

copyright infringement actions, dismissed a cross-appeal 

regarding attorney fees as moot, and remanded.

Malibu Textiles claimed that defendants infringed its 

copyrights for two floral lace designs. The panel held that, 

on remand following prior appeal, Malibu sufficiently 

alleged ownership of valid, registered copyrights. Malibu 

also successfully pled striking similarity between its designs 

and defendants’ designs. The panel further held that the 

district court abused its discretion in denying Malibu leave 

to amend its allegations of access for a theory of substantial 

similarity.

The panel dismissed as moot one defendant’s crossappeal from the district court’s denial of its motion for 

attorney fees.

 ** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
4 MALIBU TEXTILES V. LABEL LANE INT’L

COUNSEL

Stephen Doniger (argued), Frank Gregory Casella, and Scott 

A. Burroughs, Doniger/Burroughs APC, Venice, California, 

for Plaintiff-Appellant.

Neal J. Gauger (argued) and Staci Jennifer Riordan, Nixon 

Peabody LLP, Los Angeles, California, for DefendantsAppellees.

OPINION

ZOUHARY, District Judge:

INTRODUCTION

Five years ago, Plaintiff-Appellant Malibu Textiles filed 

these copyright infringement lawsuits against DefendantsAppellees Label Lane International, Entry, and H&M 

Hennes & Mauritz (collectively, “Defendants”), accusing 

them of illegally copying Malibu’s lace designs. And for 

five years, these cases have languished at the pleading stage. 

The cases are now before this Court for a second time, after 

the district court again denied leave to amend and dismissed 

with prejudice. We again reverse and remand.

BACKGROUND

In 2014, Malibu sued Defendants for copyright 

infringement. Malibu alleges it owns copyrights for two lace 

designs, consisting of flowers, vines, leaves, and other 

elements arranged in a pattern. Malibu refers to these two 

designs collectively as the Subject Work and alleges 

Defendants infringed on both.
MALIBU TEXTILES V. LABEL LANE INT’L 5

The first appeal came after the district court dismissed 

the cases with prejudice for failure to state a claim. This 

Court reversed, stating that “[d]ismissal with prejudice is 

appropriate only if the complaint ‘could not be saved by any 

amendment.’” Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 

668 F. App’x 803, 803 (9th Cir. 2016) (quoting Leadsinger, 

Inc. v. BMG Music Publ’g, 512 F.3d 522, 532 (9th Cir. 

2008)); Malibu Textiles, Inc. v. H&M Hennes & Mauritz, 

L.P., 668 F. App’x 800, 801 (9th Cir. 2016) (same). This 

Court concluded that Malibu could fix its Complaints by 

adding more allegations of similarity between the Subject 

Work and Defendants’ works and how Defendants had 

access to the Subject Work. Label Lane, 668 F. App’x 

at 803–04; H&M, 668 F. App’x at 801.

On remand, Malibu filed new Complaints1 with 

additional similarity allegations, including side-by-side 

photos of the Subject Work and Defendants’ works. But the 

Malibu attorneys mistakenly omitted new access allegations. 

When they realized their error, the parties filed a joint 

stipulation seeking leave to file amended versions of the 

post-remand Complaints. Malibu included a declaration 

explaining the mistake and provided the district court with 

redlined copies of the new Complaints with the missing 

access allegations. In a one-sentence, handwritten order, the 

district court denied leave to amend: “Denied[,] no good 

cause is shown.”

Defendants again moved to dismiss, and the district court 

again dismissed with prejudice. The district court 

determined that most of the similarities between Malibu’s 

designs and Defendants’ designs consisted of non-

 1 In the Label Lane case, Malibu filed its Second Amended 

Complaint. In the H&M case, Malibu filed its First Amended Complaint.
6 MALIBU TEXTILES V. LABEL LANE INT’L

protectable elements, such as “the natural appearance of a 

Bengal Clockvine flower.” The district court identified 

differences in the side-by-side images, concluding that the 

designs were not strikingly similar. The district court further 

held that Malibu failed to plausibly allege access, without 

mentioning whether the proposed amendments would have 

cured this deficiency. H&M moved for attorney fees, which 

the district court denied. These appeals followed.

DISCUSSION

This Court reviews dismissals under Federal Civil 

Rule 12(b)(6) de novo, accepting the plaintiff’s allegations 

as true and construing them in the light most favorable to the 

plaintiff. Zucco Partners, LLC v. Digimarc Corp., 552 F.3d 

981, 989 (9th Cir. 2009). At this stage, a complaint’s factual 

allegations need not be detailed. Bell Atl. Corp. v. Twombly, 

550 U.S. 544, 555 (2007). They “must be enough to raise a 

right to relief above the speculative level” and to “state a 

claim to relief that is plausible on its face.” Id. at 555, 570.

To state a claim for copyright infringement, Malibu 

“must plausibly allege two things: (1) that [it] owns a valid 

copyright in [the Subject Work], and (2) that [Defendants] 

copied protected aspects of [the Subject Work]’s 

expression.” Rentmeester v. Nike, Inc., 883 F.3d 1111, 

1116–17 (9th Cir. 2018).

Ownership

Although the district court based its decision on the 

copying element, Defendants argue this Court should affirm 

because Malibu failed to allege ownership of a registered 

copyright in the Subject Work. See Livid Holdings Ltd. v. 

Salomon Smith Barney, Inc., 416 F.3d 940, 950 (9th Cir. 

2005) (“This court can affirm the district court’s dismissal 
MALIBU TEXTILES V. LABEL LANE INT’L 7

on any ground supported by the record, even if the district 

court did not rely on the ground.”). To plead ownership, 

Malibu must plausibly allege it owns a valid copyright 

registration for its work. See Unicolors, Inc. v. Urban 

Outfitters, Inc., 853 F.3d 980, 988 (9th Cir. 2017) 

(“[Plaintiff] was required to show registration as an element 

of an infringement claim.”); see also Fourth Estate Pub. 

Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 887 

(2019) (“[A]lthough an owner’s rights exist apart from 

registration, registration is akin to an administrative 

exhaustion requirement that the owner must satisfy before 

suing to enforce ownership rights.”) (citations omitted).

Malibu alleges it owns “two original two-dimensional 

artworks”—Designs 1967 and 1717—which are registered 

with the United States Copyright Office under numbers 

VA 1-159-155 and VA9230008. But Defendants argue that 

Malibu’s case is not based upon either of these copyrights, 

but rather upon some third work called the “Subject Work.”

Defendants mischaracterize Malibu’s allegations. 

According to Malibu, Design 1967 derives from Design 

1717. The designs are “essentially the same artwork” with 

only “slight variations” due to differences in the machinery 

used in production. The post-remand Complaints allege that 

Malibu owns valid, registered copyrights in both Design 

1967 and Design 1717, and that the infringement action is 

based on the original artistic expression owned by Malibu 

and reflected in both designs. Malibu is entitled to protect 

all components of that artistic expression—both derivative 

and original. See DC Comics v. Towle, 802 F.3d 1012, 

1023–25 (9th Cir. 2015). Malibu plausibly alleges it owns 

registered copyrights for the artwork in Designs 1967 and 

1717; its use of a shorthand label for that artwork does not 

change that fact.
8 MALIBU TEXTILES V. LABEL LANE INT’L

And contrary to Defendants’ assertions, Malibu was not 

required to include images of Design 1717, a complete 

deposit of Design 1967, or registration materials for either 

Design in the Complaints to plausibly allege ownership. See 

Rentmeester, 883 F.3d at 1117–18. As for Defendants’ 

arguments about their foreign copyright registrations, those 

defenses are better suited for summary judgment. At the 

pleading stage, Malibu successfully alleged ownership of 

valid, registered copyrights.

Copying

To allege actionable copying, Malibu was required to 

plead facts plausibly showing either (1) “that the two works 

in question are strikingly similar,” or (2) “that [the works] 

are substantially similar and that [Defendants] had access to 

the [Subject Work].” Label Lane, 668 F. App’x at 803 

(citing Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481, 

485 (9th Cir. 2000)); H&M, 668 F. App’x at 801 (same). 

Where two works are strikingly similar, access may be 

inferred. Unicolors, 853 F.3d at 987–88; see also 

Rentmeester, 883 F.3d at 1124 (“[I]f the similarities are 

‘striking’ enough . . . such similarities can be sufficient on 

their own to establish that the defendant must have had 

access to the plaintiff’s work.”). Thus, a plaintiff must 

separately plead access only when alleging substantial 

similarity, not when alleging striking similarity. See, e.g., 

Three Boys Music, 212 F.3d at 485; Baxter v. MCA, Inc., 

812 F.2d 421, 423–24 & n.2 (9th Cir. 1987); see also AstorWhite v. Strong, 733 F. App’x 407, 407 (9th Cir. 2018).

“In assessing whether particular works are substantially 

similar, or strikingly similar, this Circuit applies a two-part 

analysis: the extrinsic test and the intrinsic test.” Unicolors, 

853 F.3d at 985. At the pleading stage, this Court considers 

only the extrinsic test. See Williams v. Gaye, 895 F.3d 1106, 
MALIBU TEXTILES V. LABEL LANE INT’L 9

1119 (9th Cir. 2018). The extrinsic test “is an objective 

comparison of specific expressive elements; it focuses on the 

articulable similarities between the two works.” L.A. Printex 

Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 848 (9th Cir. 

2012) (internal quotation marks and citation omitted). The 

extrinsic test consists of two steps.

Step 1: Protectable Elements

First, the reviewing court “must ‘filter out’ the 

unprotectable elements of the plaintiff’s work,” 

Rentmeester, 883 F.3d at 1118 (citation omitted), and 

determine the breadth of copyright protection for the 

protectable elements, id. at 1120. Although certain 

elements—like elements found in nature—may not be 

protectable individually, “[o]riginal selection, coordination, 

and arrangement” of unprotectable elements may be 

protectable expression. L.A. Printex, 676 F.3d at 849. A 

combination of unprotectable elements is eligible for 

copyright protection “if those elements are numerous 

enough and their selection and arrangement original enough 

that their combination constitutes an original work of 

authorship.” Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 

2003).

For protectable elements, this Court “distinguishe[s] 

between ‘broad’ and ‘thin’ copyright protection based on the 

‘range of expression’ involved.” Williams, 895 F.3d at 1120 

(quoting Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 

913–14 (9th Cir. 2010)). “[T]he greater the range of creative 

choices that may be made, the broader the level of protection 

that will be afforded to the resulting [work].” Rentmeester, 

883 F.3d at 1120. “We review de novo the district court’s 

determination as to the scope of copyright protection.” 

Mattel, 616 F.3d at 914 (citation omitted).
10 MALIBU TEXTILES V. LABEL LANE INT’L

Here, although copyright law does not protect the natural 

appearance of a Bengal Clockvine flower, see Satava, 

323 F.3d at 813, it does protect the original “selection, 

coordination, and arrangement” of floral elements in a lace 

pattern, Label Lane, 668 F. App’x at 803 (citing L.A. Printex, 

676 F.3d at 850); H&M, 668 F. App’x at 801 (same). The 

Subject Work’s copyright protection is broad—not thin—

because there is “‘a wide range of expression’ for selecting, 

coordinating, and arranging floral elements in stylized fabric 

designs.” L.A. Printex, 676 F.3d at 850 (citation omitted). 

After all, “there are gazillions of ways to combine petals, 

buds, stems, leaves, and colors in floral designs on fabric.” 

Id. at 850–51 (internal quotation marks and citation omitted).

Step 2: Similarity Comparison 

Second, the “protectable elements that remain are then 

compared to corresponding elements of the defendant’s 

work to assess similarities in the objective details of the 

works.” Rentmeester, 883 F.3d at 1118. “We do not have a 

well-defined standard for assessing when similarity in 

selection and arrangement becomes ‘substantial’” or 

striking, “and in truth no hard-and-fast rule could be devised 

to guide determinations that will necessarily turn on the 

unique facts of each case.” Id. at 1121. “In comparing fabric 

designs, we examine the similarities in their objective details 

in appearance, including, but not limited to, the subject 

matter, shapes, colors, materials, and arrangement of the 

representations.” L.A. Printex, 676 F.3d at 849 (internal 

quotation marks and citation omitted).

Striking Similarity. The first question is whether Malibu 

pled striking similarity, which would obviate the need to 

plead access. Two works are strikingly similar when the 

similarities between them are so great that they are “highly 
MALIBU TEXTILES V. LABEL LANE INT’L 11

unlikely to have been the product of independent creation.” 

Rentmeester, 883 F.3d at 1124.

Here, the similarities between the lace patterns go well 

beyond their mutual inclusion of the Bengal Clockvine 

flower. The works contain nearly identical floral, leaf, 

boteh, and dot elements, and those elements are arranged in 

virtually the same way. The post-remand Complaints state 

that the patterns are “identically arranged” and that the 

elements “are arranged exactly the same in relation to each 

other.” They describe, in detail, some of the similarities 

between the patterns. And most importantly, they provide 

side-by-side pictures that make the similarities apparent. See 

Appendix, infra.

To be sure, the pictures do show some minor differences 

between the Subject Work and Defendants’ works, such as 

in color, netting, and shape curvature. “But a rational jury 

could find that these differences result from the fabricprinting process generally and are ‘inconsequential,’ or 

could credit [Malibu]’s assertion that these differences result 

in part from ‘print[ing] using cruder, lower-quality 

techniques and machinery.’” L.A. Printex, 676 F.3d at 851 

(second alteration in original) (citations omitted). 

Alternatively, a jury could find these to be knowing 

modifications, which could be evidence of willful copying. 

See Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 

409 F.2d 1315, 1316 (2d Cir. 1969) (per curiam) (“While the 

trial court placed great emphasis on the minor differences 

between the two patterns, we feel that the very nature of 

these differences only tends to emphasize the extent to which 

the defendant has deliberately copied from the plaintiff.”).

As for the differences pointed out by the district court in 

its dismissal order, those appear to result from the cropping 

and angle of the images rather than any real differences in 
12 MALIBU TEXTILES V. LABEL LANE INT’L

the designs. And to the extent Defendants contend the 

similarities are “required by the medium of lace” and are 

merely “functional choices . . . dictated by the lace medium,” 

those arguments are better suited for summary judgment, 

after discovery and perhaps with the aid of expert testimony. 

For this stage, Malibu successfully pled striking similarity in 

the post-remand Complaints, and the district court erred in 

dismissal on this ground.

Substantial Similarity. But striking similarity was not 

the only theory Malibu sought to plead. The next question 

is whether the district court erred in denying Malibu leave to 

amend its access allegations for a theory of substantial 

similarity. This Court reviews denial of leave to amend for 

abuse of discretion. Gompper v. VISX, Inc., 298 F.3d 893, 

898 (9th Cir. 2002). “Dismissal without leave to amend is 

improper unless it is clear, upon de novo review, that the 

complaint could not be saved by any amendment.” Id.

(citation omitted). “An outright refusal to grant leave to 

amend without a justifying reason is . . . an abuse of 

discretion.” Manzarek v. St. Paul Fire & Marine Ins. Co., 

519 F.3d 1025, 1034 (9th Cir. 2008) (citation omitted).

When pleading substantial similarity, a copyright 

infringement plaintiff “must allege facts ‘from which a 

reasonable finder of fact could infer that the defendant had a 

reasonable opportunity to copy his or her work.’” Shame on 

You Prods., Inc. v. Banks, 120 F. Supp. 3d 1123, 1149 (C.D. 

Cal. 2015) (citation omitted), aff’d, 690 F. App’x 519 (9th 

Cir. 2017); see also L.A. Printex, 676 F.3d at 846 (“Proof of 

access requires ‘an opportunity to view or to copy plaintiff’s 

work.’”) (citation omitted). As the prior Panel instructed, 

Malibu could meet this pleading requirement by alleging “a 

chain of events that linked the protected pattern with the 

allegedly infringing patterns, or provid[ing] sales figures 
MALIBU TEXTILES V. LABEL LANE INT’L 13

accompanied by dates and geographic distribution 

information plausibly showing access via widespread 

dissemination.” Label Lane, 668 F. App’x at 804; see also 

H&M, 668 F. App’x at 801.

Here, the proposed amended Complaints allege several 

ways Defendants had access to the Subject Work. Malibu 

first alleges that Defendants do business in California and 

that they had access to the Subject Work through Malibu’s 

California showrooms. Malibu next states that, since 1998, 

it has produced “approximately 1 million yards of lace 

bearing the Subject Work,” which have been manufactured 

in “over twenty mills, including numerous mills in China.” 

Those mills’ libraries of patterns, containing the Subject 

Work, have since been acquired by other mills, who in turn 

“have offered those patterns to customers without regard to 

whether those patterns were protected by copyright law.” 

Malibu further alleges that its customers have “sold 

garments and other products featuring the Subject Work . . .

in the same markets (domestically and internationally) as 

Defendants.” Finally, Malibu specifies several clothing 

retailers “operating in the same market as Defendants” that 

collectively “have sold hundreds of thousands of garments 

featuring reproductions of the Subject Work.”

These allegations, taken as true, plausibly allege 

Defendants had reasonable opportunities to view the Subject 

Work. See L.A. Printex, 676 F.3d at 848. The proposed 

amendments would have sufficiently alleged access. The 

district court thus abused its discretion by denying leave to 

amend.

Attorney Fees

In its cross-appeal, H&M argues the district court erred 

in denying its motion for attorney fees. Because of the 
14 MALIBU TEXTILES V. LABEL LANE INT’L

district court errors, H&M is no longer a prevailing party 

eligible for attorney fees under 17 U.S.C. § 505, making its 

cross-appeal moot. See Electro Source, LLC v. BrandessKalt-Aetna Group, Inc., 458 F.3d 931, 941 (9th Cir. 2006).

CONCLUSION

It is the responsibility of “the court and the parties to 

secure the just, speedy, and inexpensive determination of 

every action and proceeding.” Federal Civil Rule 1. This 

aspirational goal was not achieved in these cases. This latest 

round of appeals added nearly two years to cases that were 

already three years old. And these cases have not advanced 

beyond the initial pleading stage. Direction from the earlier 

appeals was disregarded, as were the parties’ stipulations to 

allow amendments to the Complaints. This Court reverses 

the dismissal of the Complaints and remands to allow the 

cases to proceed consistent with this Opinion.

The district court judgments in Case Nos. 17-55983 and 

17-55984 are REVERSED and REMANDED. The crossappeal in Case No. 17-56531 is DISMISSED as moot.
MALIBU TEXTILES V. LABEL LANE INT’L 15

APPENDIX

SUBJECT WORK LABEL LANE 

PATTERN
16 MALIBU TEXTILES V. LABEL LANE INT’L

SUBJECT WORK H&M PATTERN