United States: 11th Circuit Affirms Finding Of Copyright Infringement In Zebra And Polka Dot Print Boots; Clarifies "Willful" Standard

The 11^th Circuit has affirmed a Southern District of Florida ruling that Olem Shoe Corporation did not willfully infringe copyrights owned by Washington Shoe Company, but did infringe in general. See Olem Shoe Corp. v. Wash. Shoe Corp., 2015 U.S. App. LEXIS 434 (11th Cir. Fla. Jan. 12, 2015).

The case appeared before the court on appeal by both Washington Shoe and Olem. The 11^th Circuit reviewed the district court's grant of summary judgment on the willfulness claims concluding that no evidence existed showing that Olem knew of Washington Shoe's copyrights or chose to violate them. In particular, the court rejected the proposition that evidence of cease-and-desist letters could be used to show Olem recklessly disregarded the risk that it was infringing because the letters did not include reference to copyright registration numbers, deposit copies, or anything from which Olem could have determined Washington Shoe's claim was "legitimate." Additionally, after receiving the letters, Olem's attempts to halt shipments and contact Washington Shoe demonstrated the steps it took to determine whether the assertions were true. While the boots' similarity may serve as a basis for copying, striking similarity is not evidence that one recklessly disregarded the risk that it was violating copyrights when it purchased and sold infringing products. Moreover, the fact that a company did not design its products and purchased them from China, does not increase the probability of infringement such that a jury could infer the company acted recklessly, as Washington Shoe claimed.

According to the 11^th Circuit, a reckless state of mind in a copyright case "requires a showing that the infringer possessed particular knowledge from which willfulness could be inferred, such as evidence demonstrating that the infringer was given samples of the copyrighted work prior to producing the infringing work." Because no evidence illustrated Olem knew it was infringing Washington Shoe's copyrights, and because no genuine issues of material fact with respect to reckless disregard existed, the 11^th Circuit affirmed the district court's grant of summary judgment to Olem on the issue of willfulness.

The court however did conclude that because the "Ditsy Dots," "Zebra Supreme," and "Rose Zebra Supreme" boot-print designs was the subject of certificates of registration, prima facie evidence of the validity of the copyrights existed, thus satisfying the first element of an infringement claim. Moreover, because the similarities were so striking "that the possibilities of independent creation, coincidence and prior common source, were as a practical matter, precluded," the second prong of copyright infringement, requiring copying was met.

The 11^th Circuit also found the District Court did not abuse its discretion in denying Olem's Rule 60(b)(3) motion seeking relief from the verdict in Washington Shoe's favor of $27,395.40. And, the court affirmed the district court's decision to decline imposing Rule 56(h) sanctions on Washington Shoe for statements made related to the length of time surrounding popularity of its women's rain boots.

Olem will not face paying additional damages that could have been imposed had there been a finding of willfulness.

This article previously appeared in 'Incontestable' Newsletter, Jul 30, 2015.

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