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February 16, 2011 / screwvala

Won’t You Carry My Burden?

Burden of proof is as important to lawyers as location is in real estate. In United Fabrics International v. C&J Wear, Inc., Macy’s got a painful reminder of this fact, courtesy of the Ninth Circuit.

United held a copyright in a collection of fabric designs. One of these designs had been purchased by United from an Italian company and added to the collection. United sued Macy’s, along with several others, alleging infringement of its fabric designs. Defending the action, Macy’s argued that United’s registration was invalid owing to, in part, an alleged failure to establish clear chain of title. An invalid copyright registration, of course, would preclude pursuit of the infringement claim.

Here’s where the burden of proof fits in. United’s registered copyright is entitled to the presumption of validity.  17 U.S.C. §410(c). Since the copyright is presumed to be valid, it falls to Macy’s to prove otherwise. Macy’s sought to meet its burden by arguing that United failed to present evidence to establish the chain of title. The District Court agreed and dismissed United’s complaint.

Macy’s reliance on United’s failure to present evidence ultimately turned out to be a fatal flaw. Because its registration carries a presumption of validity, the Ninth Circuit held that Macy’s could not simply rely on United’s failure to present evidence to confirm the basis for the registration. Instead, Macy’s was obligated to present its own evidence to show that the presumption of validity is not valid. Since it did not, the Ninth Circuit reversed.

Macy’s may yet prevail, as the Ninth Circuit recognized that there may be sufficient evidence in the record to support the claim of invalidity. But that’s Macy’s trial now.

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