Ninth Circuit Reverses Statutory Damage Award against Apparel Company, But Remands Attorneys’ Fees Award

Holding:

The U.S. Court of Appeals for the Ninth Circuit resolved a novel issue: whether the Copyright Act, particularly 17 U.S.C. § 412, bars an award of statutory damages for post-registration infringements when the initial act of infringement occurred prior to the effective copyright registration date. Here, plaintiff-appellee, Derek Andrew, Inc. (“Andrew”), accused defendant-appellant, Poof Apparel Corp. (“Poof”), of copyright and trademark infringement relating to its garment hang tags. The District Court awarded default judgment against Poof, along with statutory damages and attorneys’ fees. On appeal, the Ninth Circuit reversed the District Court’s $15,000 statutory damages award because the infringing activity occurred before the effective registration date of the copyright at issue; similarly, the Ninth Circuit reversed the District Court’s award of attorney’s fees under the Copyright Act for the same reason. Separately, the Ninth Circuit upheld the District Court’s award of attorneys’ fees related solely to Lanham Act claims.

Detailed Summary:

Andrew and Poof are in the apparel business. This case involved Andrew’s “Twisted Heart” clothing line - a line of casual sportswear for women aged 14-70. Andrew’s Twisted Heart line is identified by its label and, in particular, its “hang-tag” featuring its “Heart Design” and “Twisted Heart” trademarks.  Developed and first used in 2003, the Twisted Heart hang-tag hangs from the garment by a small, satin ribbon. The tag, including its configuration and the artwork in the label, was registered with the U.S. Copyright Office on June 15, 2005.

Similarly, Poof sells women’s clothing to retail stores throughout the United States.…

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