# TrendTex Fabrics, LTD v. BONNIE BROWN DESIGNS, INC.

> District Court, S.D. Florida · July 21, 2023

URL: https://www.frixlaw.com/law-library/cases/10122199

## Case

- **Court:** District Court, S.D. Florida
- **Decided:** July 21, 2023
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

United States District Court
for the
Southern District of Florida

TrendTex Fabrics, LTD and TrendTex )
Holdings, LLC, Plaintiffs, )
)
v. ) Civil Action No. 23-20291-Civ-Scola
)
Bonnie Brown Designs, Inc., d/b/a )
Island Planet, Defendant. )

Order on Motion to Dismiss
This matter is before the Court on the Defendant Bonnie Brown Designs,
Inc.’s (“Bonnie Brown”) motion to dismiss the Plaintiffs Trendtex Fabrics, Ltd.
(“Trendtex Fabrics”) and Trendtex Holding, LLC’s (“Trendtex Holding”)
complaint pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(b)(7).
(ECF No. 13.) The Plaintiffs have filed a response in opposition to Bonnie
Brown’s motion (ECF No. 15), Bonnie Brown has replied (ECF No. 16), and the
Plaintiffs have filed a sur-reply (ECF No. 19). Having reviewed the record, the
parties’ briefs, and the relevant legal authorities, the Court grants in part and
denies in part Bonnie Brown’s motion to dismiss, as explained below.1 (Mot.,
ECF No. 13.)
1. Background
This action arises from Bonnie Brown’s alleged infringement of the
Plaintiffs’ copyrighted designs. (Compl. ¶ 1, ECF No. 1.) The complaint sets
forth that Bonnie Brown reproduced and sold four items of clothing displaying
copyrighted surface designs owned by Trendtex Holding without authorization
in violation of Section 501 of the Copyright Act. (Id.) Trendtex Holding owns
numerous copyrights to various Hawaiian print surface designs and exclusively
licenses its designs to Trendtex Fabrics, a fabric wholesaler. (Id. ¶ 8.) Trendtex
Fabrics sells these fabrics to garment manufacturers and retail fabric sellers

1 Bonnie Brown’s motion was styled in the alternative as one for a more definite statement
pursuant to Federal Rule of Civil Procedure 12(e). (See ECF No. 13.) A party may move for a
more definite statement if a pleading is “so vague or ambiguous that the party cannot
reasonably prepare a response.” Fed. R. Civ. P. 12(e). A motion for a more definite statement
under Rule 12(e) is appropriate where “a pleading fails to specify the allegations in a manner
that provides sufficient notice.” See Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514, 122 S. Ct.
992, 152 L. Ed. 2d 1 (2002); see also Wagner v. First Horizon Pharm. Corp., 464 F.3d 1273,
1280 (11th Cir. 2006). After citing Rule 12(e) in the introduction, Bonnie Brown’s motion fails
to discuss it any further, leaving the Court guessing as to the nature of its request for a more
definite statement. Because the Court will not speculate as to which allegations Bonnie Brown
takes issue with, it will not address the request for a more definite statement further.
who are granted a license to display and sell items made from the fabric, but
may not copy or reproduce the design for any other purpose. (Id.) The designs
owned by Trendtex Holding are displayed publicly on two websites and can be
viewed at the Plaintiffs’ place of business for the sole purpose of advertisement
and sales. (Id. ¶ 9.)
Trendtex Fabrics registered the designs identified as KS-5420, KS-5422,
KS-6513, and EH-80106 with the United States Copyright Office. (Id. ¶¶ 10–
13.) Each of these copyrights was assigned to Trendtex Holding in October
2022. The complaint asserts that the copyrighted designs were subsequently
exclusively licensed back to Trendtex Fabrics, however, no information was
provided as to the date or terms of these licensing agreements. (Id. ¶¶ 8, 10–
13.)
The Plaintiffs assert that the online retail website islandplanet.com,
owned and operated by Bonnie Brown, displayed four garments for sale that
“bear[] a print design that is substantially similar or identical to Plaintiffs’
copyrighted [] surface designs.” (Id. ¶¶ 19, 31, 45, 57.) The Plaintiffs state they
have not licensed Bonnie Brown to reproduce or sell copyrighted designs and
have not sold it fabric. (Id. ¶¶ 20, 32, 46, 58.) The complaint alleges that
Bonnie Brown had access to the copyrighted designs through the Plaintiffs’
websites or place of business, and/or to fabric and garments sold by the
Plaintiffs’ licensees. (Id. ¶¶ 20, 33, 47, 59.) The Plaintiffs issued a copyright
infringement notice on October 5, 2022, for two of the designs, identified as
KS-5420 and KS-5422. (Id. ¶¶ 23, 35, 49.) The garment allegedly depicting KS-
5422, or a substantially similar design, continued to be displayed as of October
30, 2022. (Id. ¶ 36.)
Based on the four claims of alleged copyright infringement, the Plaintiffs
seek damages, injunctive relief, and attorney fees under 17 U.S.C. §§ 504 and
505. (Id. ¶¶ 38, 39, 42, 51, 52, 54, 62, 63, 65.) In response, Bonnie Brown
argues that only Trendtex Holding has standing to sue for infringement of the
assigned copyrights. Bonnie Brown also moves to dismiss the complaint for
failure to join an indispensable party, Narmada Textile, under Federal Rule of
Civil Procedure 12(b)(7), and for failure to state a claim under Federal Rule of
Civil Procedure 12(b)(6). (Mot., ECF No. 13.) As explained below, the Court
agrees that Trendtex Holding is the only appropriate plaintiff based on the
information provided in the pleadings. However, the Court otherwise denies
Bonnie Brown’s motion because it finds that Narmada Textile is not a required
party, and that the complaint sufficiently states a plausible copyright
infringement claim.
2. Legal Standard
A. 12(b)(7)
Dismissal of an action pursuant to Federal Rule of Civil Procedure
12(b)(7), for failure to join a party under Rule 19, is a “two-step inquiry.” See
Focus on the Family v. Pinellas Suncoast Transit Auth., 344 F.3d 1263, 1279
(11th Cir. 2003). “First, a court must decide whether an absent party is
required in the case under Rule 19(a).” Int’l Imps., Inc. v. Int’l Spirits & Wines,
LLC, No. 10-61856-CIV, 2012 U.S. Dist. LEXIS 64929, 2011 WL 7807548, at *8
(S.D. Fla. July 26, 2011) (O’Sullivan, Mag. J.) (citing Molinos Valle Del Cibao v.
Lama, 633 F.3d 1330, 1344 (11th Cir. 2011)). If a court determines that an
absent party does satisfy the Rule 19(a) criteria, i.e., that the party is a
required party, the court must order that party joined if its joinder is feasible.
See Fed. R. Civ. P. 19(a)(2). If the absent party is not required, the litigation
continues as is. See, e.g., Developers Sur. & Indem. Co. v. Harding Vill., Ltd., No.
06-21267-CIV, 2007 U.S. Dist. LEXIS 9471, 2007 WL 465519, at *2 (S.D. Fla.
Feb. 9, 2007) (Cooke, J.). However, an absent party is considered necessary (i)
if, in its absence, the court cannot accord complete relief among the existing
parties to the action; (ii) if the nonparty’s absence would have a prejudicial
effect on that party’s ability to protect its interest relating to the subject of the
action; or (iii) if, due to the absent party’s related interest, the nonparty’s
absence would leave the existing parties at a substantial risk of incurring
inconsistent obligations upon the court’s disposition of the current action. Fed.
R. Civ. P. 19(a)(1); see also City of Marietta v. CSX Transp. Inc., 196 F.3d 1300,
1305 (11th Cir. 1999) (Per Rule 19(a), the first question is “whether complete
relief can be afforded in the present procedural posture, or whether the
nonparty’s absence will impede either the nonparty’s protection of an interest
at stake or subject parties to a risk of inconsistent obligations.”).
Second, if the absent party’s joinder is not feasible—i.e., joinder would
defeat the court’s subject-matter jurisdiction, the absent party is not subject to
the court’s personal jurisdiction, or the absent party properly objects to the
venue of the action—the court must consider if, “in equity and good
conscience, the action should proceed among the existing parties or should be
dismissed.” Fed. R. Civ. P. 19(b); see Challenge Homes, Inc. v. Greater Naples
Care Ctr., Inc., 669 F.2d 667, 669 (11th Cir. 1982) (“[T]he court must [first]
ascertain under the standards of Rule 19(a) whether the person in question is
one who should be joined if feasible. If the person should be joined but cannot
be (because, for example, joinder would divest the court of jurisdiction) then
the court must inquire whether, applying the factors enumerated in Rule 19(b),
the litigation may continue.”). “Thus, dismissal for failure to join an
indispensable party is only appropriate where the nonparty cannot be made a
party.” Moreiras v. Scottsdale Ins. Co., No. 20-CV-21303, 2020 U.S. Dist. LEXIS
76016, 2020 WL 2084851, at *2 (S.D. Fla. Apr. 30, 2020) (Bloom, J.) (citations
omitted).
Rule 19(b) enumerates a list of the most significant factors considered in
determining whether joinder of an absent party is indispensable, which
includes “whether the plaintiff will have an adequate remedy if the action is
dismissed for nonjoinder” of the absentee. Fed. R. Civ. P. 19(b). Those factors
“must be reviewed in light of pragmatic concerns, especially the effect on the
parties and the litigation.” Sierra Club v. Leathers, 754 F.2d 952, 954 (11th Cir.
1985) (citations omitted). Finally, Rule 19(a)(3) provides that “[i]f a joined party
objects to venue and the joinder would make venue improper, the court must
dismiss that party.” Fed. R. Civ. P. 19(a)(3).
B. 12(b)(6)
When considering a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the Court must accept all the complaint’s allegations as
true, construing them in the light most favorable to the plaintiff. Pielage v.
McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008). A pleading need only contain
“a short and plain statement of the claim showing that the pleader is entitled to
relief.” Fed. R. Civ. P. 8(a)(2). “[T]he pleading standard Rule 8 announces does
not require detailed factual allegations, but it demands more than an
unadorned, the-defendant-unlawfully-harmed-me accusation.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quotation omitted). A plaintiff must articulate
“enough facts to state a claim to relief that is plausible on its face.” Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007).
“A claim has facial plausibility when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. “The plausibility
standard is not akin to a ‘probability requirement,’ but it asks for more than a
sheer possibility that a defendant has acted unlawfully.” Id. “Threadbare
recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Id. Thus, a pleading that offers mere “labels and
conclusions” or “a formulaic recitation of the elements of a cause of action” will
not survive dismissal. See Twombly, 550 U.S. at 555. “Rule 8 marks a notable
and generous departure from the hyper-technical, code-pleading regime of a
prior era, but it does not unlock the doors of discovery for a plaintiff armed
with nothing more than conclusions.” Iqbal, 556 U.S. at 679.
Yet, where the allegations “possess enough heft” to suggest a plausible
entitlement to relief, the case may proceed. See Twombly, 550 U.S. at 557.
“[T]he standard ‘simply calls for enough fact to raise a reasonable expectation
that discovery will reveal evidence’ of the required element.” Rivell v. Private
Health Care Sys., Inc., 520 F.3d 1308, 1309 (11th Cir. 2008). “And, of course, a
well-pleaded complaint may proceed even if it strikes a savvy judge that actual
proof of those facts is improbable, and ‘that a recovery is very remote and
unlikely.’” Twombly, 550 U.S. at 556.
3. Analysis
A. Motion to Dismiss for Failure to Join a Required Party
Bonnie Brown first argues that this action should be dismissed pursuant
to Federal Rule of Civil Procedure 12(b)(7) for failure to join Narmada Textile,
Bonnie Brown’s alleged fabric supplier, as a required party under Federal Rule
of Civil Procedure Rule 19. (Mot. 4, ECF No. 13.) The Court does not agree.
As outlined above, “Rule 19 states a two-part test for determining
whether a party is indispensable.” Focus on the Family v. Pinellas Suncoast
Transit Auth., 344 F.3d 1263, 1279 (11th Cir. 2003) (quoting Challenge Homes,
Inc. v. Greater Naples Care Ctr., Inc., 669 F.2d 667, 669 (11th Cir. 1982)). “The
first part of the analysis focuses on whether a party is a ‘required part[y] (or
“necessary” part[y] under the old terminology).’” Santiago v. Honeywell Int’l,
Inc., 768 F. App’x 1000, 1004 (11th Cir. 2019) (quoting Republic of the Phil. v.
Pimentel, 553 U.S. 851, 859, 128 S. Ct. 2180, 2186, 171 L. Ed. 2d 131 (2008)).
A person is a required party—or a necessary party—when (1) “in that
person’s absence, the court cannot accord complete relief among
existing parties,” or (2) where the absent party claims an interest
relating to the action, disposing of the action without the absent
party may “as a practical matter impair or impede the person’s
ability to protect the interest; or leave an existing party subject to a
substantial risk of incurring double, multiple, or otherwise
inconsistent obligations because of the interest.” Fed. R. Civ. P.
19(a)(1).

Id. (quoting Fed. R. Civ. P. 19(a)(1)). Bonnie Brown argues that Narmada
Textile is a required party based on all three of the foregoing grounds.
First, Bonnie Brown argues that, in the event its products are found to
be infringing, its liability will be shared with Narmada Textile, so that if
Narmada Textile is not joined as a defendant in this case, the finder of fact will
be unable to apportion the appropriate monetary awards between Bonnie
Brown and Narmada Textile. Bonnie Brown, however, provides no support for
the argument that it must necessarily share any potential liability with
Narmada Textile. To the contrary, the Eleventh Circuit has recognized that
“[c]opyright infringement is in the nature of a tort, for which all who participate
in the infringement are jointly and severally liable[.]” See BUC Int’l Corp. v. Int’l
Yacht Council Ltd., 517 F.3d 1271, 1278 (11th Cir. 2008) (quoting Screen Gems-
Columbia Music, Inc. v. Metlis & Lebow Corp., 453 F.2d 552, 554 (2d Cir.
1972)). Joint tortfeasors are not necessary parties that must be joined in a
single lawsuit. See Temple v. Synthes Corp., Ltd., 498 U.S. 5, 7, 111 S. Ct. 315,
112 L. Ed. 2d 263 (1990).
On this issue, the Court finds persuasive the decision in Microsoft Corp.
v. Cietdirect.com LLC denying the defendant’s motion to dismiss the plaintiff’s
copyright infringement complaint for failure to join the defendant’s supplier.
No. 08-60668-CTV, 2008 U.S. Dist. LEXIS 61956, at *19-20 (S.D. Fla. Aug. 5,
2008) (Ungaro, J.). In Microsoft Corp., the plaintiff brought suit following the
unauthorized sale of copyrighted software. See id. The court explained that “in
patent, trademark, literary property, and copyright infringement cases, any
member of the distribution chain can be sued as an alleged joint tortfeasor.”
See id. at *19 (citing Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine
Distributors Pty. Ltd., 647 F.2d 200, 207 (D.C.Cir.1981)). Because copyright
infringement is governed by joint and several liability, the plaintiff could bring
an action against any of the joint tortfeasors and recover full damages. See id.
at *19-20. In other words, “the victim of a tort is entitled to sue any of the joint
tortfeasors and recover his entire damages from that tortfeasor.” Id. (citing
Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343, 360 (2d Cir.2000)).
Similar to the finding in Microsoft Corp. that the defendant’s supplier was
not a required party, the Court finds that Narmada Textile is not a required
party to the present action. Based on the pleadings, Bonnie Brown and
Narmada Textile allegedly infringed on the same copyright and are part of the
same distribution chain. Accordingly, the Plaintiffs may pursue full relief
against either party they choose, without the absent party being required to
join.
Next, Bonnie Brown asserts that the absence of Narmada Textile will
have a prejudicial effect on its ability to protect its own interests. However,
Bonnie Brown once again fails to adequately support its position, citing no
reason why Narmada Textile claims an interest relating to this action. To the
extent Bonnie Brown’s argument is that the Plaintiffs’ claims “would need to be
proven against both” Narmada Textile and Bonnie Brown, it is incorrect for the
reasons explained in the foregoing paragraphs. (See Mot. 5, ECF No. 13.)
Finally, Bonnie Brown raises the possibility of inconsistent obligations
should Narmada Textile be named as a defendant in another case. However,
Bonnie Brown seems to confuse the possibility of an inconsistent
“adjudication” in another, future, case with the inconsistent obligations
contemplated by Rule 19(a)(1)(ii). (See Mot. 5, ECF No. 13.) “‘Inconsistent
obligations’ are not . . . the same as inconsistent adjudications or results.
Inconsistent obligations occur when a party is unable to comply with one
court’s order without breaching another court’s order concerning the same
incident.” Winn-Dixie Stores, Inc. v. Dolgencorp, LLC, 746 F.3d 1008, 1040 (11th
Cir. 2014) (quoting Delgado v. Plaza Las Ams., Inc., 139 F.3d 1, 3 (1st Cir.
1998)). Here, independent litigation to which Narmada Textile may be a party
has no bearing on whether Bonnie Brown could comply with an injunction, and
Bonnie Brown provides no other reason why proceeding without Narmada
Textile leaves it at risk of incurring inconsistent obligations.
In short, the pleadings fail to establish that Narmada Textile is a required
party pursuant to Rule 19(a).2 Because of this, the Court need not consider
whether, in its absence, the action should proceed among the existing parties
or should be dismissed. See Temple v. Synthes Corp., 498 U.S. 5, 8, 111 S. Ct.
315, 316, 112 L. Ed. 2d 263 (1990) (“[N] no inquiry under Rule 19(b) is
necessary, because the threshold requirements of Rule 19(a) have not been
satisfied.”).
B. Motion to Dismiss for Failure to State a Claim
Bonnie Brown also argues that the complaint fails to plead sufficient
facts upon which the Court may draw an inference of actionable copyright
infringement pursuant to the Copyright Act, 17 U.S.C. § 101 et seq. (Mot. 7,
ECF No. 13.) To succeed on its copyright infringement claims, a plaintiff
ultimately must establish “(1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.” See Morford v. Cattelan,
Civil Action No. 21-20039-Civ-Scola, 2022 U.S. Dist. LEXIS 118967, at *4 (S.D.
Fla. July 6, 2022) (Scola, J.) (citing Compulife Software Inc. v. Newman, 959
F.3d 1288, 1301 (11th Cir. 2020)).
(1) Standing to Sue for Copyright Infringement
As a starting point, the Court addresses whether Trendtex Fabrics is a
proper plaintiff in this action. Bonnie Brown argues that the complaint lacks
clarity as to the standing of each Plaintiff. Specifically, Bonnie Brown attacks
Trendtex Fabrics’s ability to bring the copyright infringement claims at issue in
light of the four assignments to Trendtex Holding that occurred in October
2022. (Mot. 9–10, ECF No. 13.) In response, the Plaintiffs concede that all of
the copyrights at issue were assigned from Trendtex Fabrics to Trendtex

2 Indeed, Bobbie Brown seems to concede in its reply in support of dismissal that Narmada
Textile is not necessary to this case. (See Reply 2–3, ECF No. 16 (“[I]t is not untrue that
different parties along the distribution chain may be sued for copyright infringement[.]”).)
Holding and attaches the agreements evidencing those assignments. (See Resp.
8, ECF No. 15.) They argue, however, that, as a matter of prudence and judicial
economy, Trendtex Fabrics should not be dismissed because Bonnie Brown
may later attempt to challenge the validity of the assignments and Trendtex
Holding’s own standing. However, this is not a compelling reason to allow a
plaintiff without proper standing to remain in the present suit.
Pursuant to the Copyright Act, “only the legal or beneficial owner of an
‘exclusive right’ has standing to bring a copyright infringement action in a
United States court.” Saregama India Ltd. v. Mosley, 635 F.3d 1284, 1290-91
(11th Cir. 2011) (emphasis added) (citing 17 U.S.C. § 501(b); Itar-Tass Russian
News Agency v. Russian Kurier, Inc., 153 F.3d 82, 91 (2d Cir. 1998)). “[O]nce an
owner or exclusive licensee exclusively licenses away those rights to another,
the licensor loses standing to sue for infringement of those rights, and only the
licensee has standing to sue.” World Thrust Films, Inc. v. Int’l Family Entm’t,
Inc., No. 93-0681-CIV, 1996 U.S. Dist. LEXIS 16631, at *11 (S.D. Fla. Aug. 1,
1996) (citing 3 M. NIMMER AND D. NIMMER, NIMMER ON COPYRIGHT §
12.02[B], p.12-54 - 12-55 (1996)). Because the Copyright Act specifies that the
infringement must have “been committed while” a claimant was “the owner” of
the exclusive right, “[t]he copyright owner must have such status at the time of
the alleged infringement to have standing to sue.” See Optima Tobacco Corp. v.
US Flue-Cured Tobacco Growers, Inc., 171 F. Supp. 3d 1303, 1308 (S.D. Fla.
2016) (Moore, J.).
Here, the complaint alleges that Trendtex Holding is the owner of the
copyrights at issue and exclusively licenses the designs to Trendtex Fabrics.
(Compl. ¶ 8, ECF No. 1.) Trendtex Fabrics was the original registrant of the
four copyrights, but assigned them to Trendtex Holding on October 31, 2022,3
October 3, 2022, and October 24, 2022. (Id. ¶¶ 10–13.) The assignment
agreements provided in the Plaintiffs’ response opposing dismissal indicate that
Trendtex Holding was assigned all of Trendtex Fabrics’s rights to the
copyrights, including “the right to recover for past infringements of the
copyrights.” (See ECF No. 15-2.)4 Because the right was explicitly enumerated
in the agreement in “no uncertain terms,” Trendtex Holding does have standing
to sue for past infringement. See Vellejo v. Narcos Prods. LLC, 418 F. Supp. 3d

3 Two of the copyrights were assigned on this date.
4 “[A] document outside the four corners of the complaint may still be considered if it is central
to the plaintiff's claims and is undisputed in terms of authenticity.” Maxcess, Inc. v. Lucent
Techs., Inc., 433 F.3d 1337, 1340 n.3 (11th Cir. 2005). There is no question that the
assignment agreements are central to the Plaintiffs’ claims and neither party disputes their
authenticity. Although Bonnie Brown asserts that it “simply cannot stipulate” to the
agreements’ authenticity at this juncture, this is not the same as questioning whether the
agreements are, in fact, authentic. (See Reply 5, ECF No. 16.)
1084, 1088–89 (S.D. Fla. 2019) (Smith, J.) (citing Prather v. Neva Paperbacks,
Inc., 410 F.2d 698 (5th Cir. 1969)). Each of the earliest alleged infringement
dates occurred before the copyrights had been assigned from Trendtex Fabrics
to Trendtex Holding, except for design KS-5422, whose alleged infringement
occurred on the same day as the assignment. (Compl. ¶¶ 10–13, 18, 30, 44, 56,
ECF No. 1.) Moreover, while the complaint also alleges that, after the
assignments in October 2022, Trendtex Holdings licensed the designs back to
Trendtex Fabrics, the complaint provides no information regarding the nature
of that license, such as its duration or what rights were conferred by the
licensing agreements. (Compl. ¶¶ 10–13, ECF No. 1.) Accordingly, based on the
allegations in the complaint, Trendtex Holding appears to be the only party
with the exclusive right to sue for copyright infringement of the four designs.
Critically, the Plaintiffs’ response concedes that “the assignments and
general contract principles would suggest that Trendtex Holding has the
exclusive right to prosecute this action.” (Resp. 8, ECF No. 15.) But they ask
the Court to allow both Trendtex Fabrics and Trendtex Holding to remain in the
case in the interest of judicial efficiency, anticipating a potential challenge by
Bonnie Brown to the validity of the assignments. As noted, this is not a
compelling reason to allow a plaintiff without proper standing to remain in the
present suit. Accordingly, the Court grants Bonnie Brown’s request to dismiss
Trendtex Fabrics’s claims for lack of standing. The subsequent analysis
therefore will impact only the remaining Plaintiff, Trendtex Holding.5
(2) Ownership of a Valid Copyright
The parties otherwise agree that Trendtex Holding is the legitimate owner
of the valid copyrights. (Mot. 10, ECF No. 13.) Therefore, the first prong of the
two-prong inquiry need not be discussed further because Bonnie Brown does
not contest the validity of the copyrights, nor Trendtex Holding’s ownership, in
its motion to dismiss. See MiTek Holdings, Inc. v. Arce Engineering Co., Inc., 89
F.3d 1548, 1554 (11th Cir. 1996).
(3) Copying of Constituent Elements
Next, the second prong of the analysis “requires both ‘factual and legal
copying’”: “a plaintiff must show both that (1) the defendant ‘actually used’ the
copyrighted work and that (2) the copied elements are ‘protected expression’
such that the appropriation is legally actionable.” Morford, 2022 U.S. Dist.

5 Because the Court has concluded that this case will proceed with only Trendtex Holding as
the Plaintiff, it need not address Bonnie Brown’s additional argument that the complaint lacks
clarity as to the right to certain claimed remedies relative to the two Plaintiffs.
LEXIS 118967, at *4 (quoting Compulife Software Inc. v. Newman, 959 F.3d
1288, 1301 (11th Cir. 2020)); see also MiTek Holdings, 89 F.3d at 1554 (“. . . 1)
whether the defendant, as a factual matter, copied portions of the plaintiff’s
program; and 2) whether, as a mixed issue of fact and law, those elements of
the program that have been copied are protected expression and of such
importance to the copied work that the appropriation is actionable.”).
(a) Factual Copying
“In the absence of direct proof, factual copying may be inferred from
circumstantial evidence, either through establishing that the works are
‘strikingly similar,’ or through ‘proof of access to the copyrighted work and
probative similarity.’” Peter Letterese & Assocs. v. World Inst. of Scientology
Enters., 533 F.3d 1287, 1300-01 (11th Cir. 2008) (cleaned up) (emphasis
added) (quoting Calhoun v. Lillenas Publ’g, 298 F.3d 1228, 1232 n.6 (11th Cir.
2002); Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996)).
Neither party specifically discusses whether Trendtex Holding may be able to
establish factual copying by showing that the works at issue are strikingly
similar, so the Court will not address this possibility in its analysis. Instead,
Bonnie Brown attacks the existence of factual copying by arguing that the
complaint claims of access are merely speculative and not supported by
sufficient facts. (Mot. 8, ECF No. 13.) The Court does not agree.
Access for the purposes of copyright infringement “requires proof of ‘a
reasonable opportunity to view’ the work in question.” See Olem Shoe Corp. v.
Washington Shoe Co., No. 09-23494-CIV, 2011 WL 6202282, at *15 (S.D. Fla.
Dec. 1, 2011) (Huck, J.) (citing Corwin v. Walt Disney Co., 475 F.3d 1239, 1253
(11th Cir. 2007)). The complaint alleges that Bonnie Brown had access to the
copyrighted designs through various sources, including the Plaintiffs’ website,
place of business, or by seeing fabrics or garments displayed and/or sold by
licensed third parties. (Compl. ¶¶ 21, 33, 47, 59, ECF No. 1.) The complaint
specifies that samples of the designs are publicly available on Trendtex
Fabrics’s websites trendtex-fabrics.com and hawaiibarkcloth.com, as well as in
person at Trendtex Fabrics’s place of business. (Id. ¶ 9.) In addition, the
complaint alleges that purchasers of licensed fabrics are, in turn, granted a
license to display and sell garments or printed materials made from the
purchased fabrics. (Id. ¶ 8.)
At the motion to dismiss stage, Trendtex Holding need not establish that
Bonnie Brown had access to the designs, but only plausibly allege that it had
such access. Moreover, “courts in this District have held that plaintiffs must
have the opportunity to establish evidence showing the extent of internet
presence in support of access.” See Morford v. Cattelan, Civil Action No. 21-
20039-Civ-Scola, 2022 U.S. Dist. LEXIS 118967, at *13-14 (S.D. Fla. July 6,
2022) (Scola, J.) (compiling cases). In Morford, for example, the plaintiff
generally alleged that the defendant had access to its copyrighted work and
argued that the work had been available on YouTube and on the plaintiff’s
website for years and had been accessed from numerous countries. 2022 U.S.
Dist. LEXIS 118967, at *13. This Court construed the plaintiff’s allegations
liberally to conclude that they were sufficient at the motion to dismiss stage.
Here, the allegations of access are similarly sufficient because the designs are
available on two websites, as well as at Trendtex Fabrics’s place of business, in
addition to being displayed and/or sold by licensed third parties. (Compl. ¶¶ 8,
9, ECF No. 1.)
Finally, “[p]robative similarity requires that ‘an average lay observer
would recognize the alleged copy as having been appropriated from the
copyrighted work.’” Dream Custom Homes, Inc. v. Modern Day Constr., Inc., 476
F. App’x 190, 192 (11th Cir. 2012) (quoting Peter Letterese & Assocs. v. World
Inst. of Scientology Enters., 533 F.3d 1287, 1301 n.16 (11th Cir. 2008)). Bonnie
Brown does not question whether the designs at issue are probatively similar.
While Bonnie Brown contends that, based on a preliminary review, any claim
that the parties’ designs are identical is frivolous, the designs need not be
identical to be probatively similar.
(b) Legally Actionable Copying of Protectable Elements
Legal copying looks to whether the similarities between the two works
extend to the work’s original, protectable elements. See Compulife Software Inc.
v. Newman, 959 F.3d 1288, 1306 (11th Cir. 2020); see also Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., Inc., 499 U.S. 340, 359, 111 S. Ct. 1282, 113 L. Ed. 2d 358
(1991). To establish the requisite similarity, courts apply different standards
depending on the nature of the allegations.6 See generally Morford v. Cattelan,
Civil Action No. 21-20039-Civ-Scola, 2022 U.S. Dist. LEXIS 118967, at *6 (S.D.
Fla. July 6, 2022) (Scola, J.) (summarizing different tests applied by the
Eleventh Circuit). “In most cases,” courts look to whether “substantial
similarity” exists between the allegedly infringing work and the protectable
elements of the copyrighted work. See Newman, 959 F.3d at 1302; see also
BUC Int’l Corp. v. Int’l Yacht Council Ltd., 489 F.3d 1129, 1147-48 (11th Cir.
2007). Thus, Trendtex Holding must plausibly allege that—after its print

6 While a thorough application of these tests usually involves a multi-step analysis, given the
nature of the Defendant’s arguments for dismissal, the Court does not find such an analysis
necessary here.
surface designs have been dissected and stripped (or filtered) of their non-
protected elements—there is substantial similarity between the parties’ works.
Bonnie Brown argues that the complaint here pleads no facts upon
which an inference may be drawn that it copied portions of the Plaintiffs’ work.
However, for each of the four designs at issue, the complaint alleges that
Bonnie Brown’s garment is identical or substantially similar to the copyrighted
surface design and provides images allowing for a side-by-side comparison of
the two products. (See Compl. ¶¶ 19, 31, 45, 57, ECF No. 1.) As touched on
above, Bonnie Brown also contends that a cursory review of the side-by-side
photos in the complaint clearly reveals that any allegation that the works are
identical is frivolous. The Court does not agree and, in fact, finds that, for at
least some of the designs at issue, the images seem to be indistinguishable.
Moreover, the designs need not be identical to support a finding of substantial
similarity, and Bonnie Brown does not question this in its motion to dismiss.
See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1543 n.25 (11th Cir. 1996).
Regardless, as this Court has observed in the past, “judge-observed similarities
and differences between two works are ‘inherently subjective and unreliable’
and[,] [] unless such similarities and differences render a plaintiff’s case bunk
as a matter of law, such questions should go to the trier of fact.” See Morford v.
Cattelan, Civil Action No. 21-20039-Civ-Scola, 2022 U.S. Dist. LEXIS 118967,
at *10 (S.D. Fla. July 6, 2022) (quoting Leigh v. Warner Bros., Inc., 212 F.3d
1210, 1215 (11th Cir. 2000)).
Finally, Bonnie Brown broadly argues that the complaint pleads no facts
upon which the Court may draw an inference that any copied, constituent
elements of the Plaintiff’s designs are original, protectible, and of importance.
However, the complaint provides the specific, original works that are the
subject of the copyright claims—i.e., the four different print surface designs.
(See Compl. ¶¶ 19, 31, 45, 57, ECF No. 1.) It also alleges that Trendtex Holding
is the owner of the copyrights to those works, that the copyrights are registered
with the United States Copyright Office, and that each has its own, unique,
copyright registration certificate number. (See id. ¶¶ 8, 10–13.) The complaint
also sets forth that Bonnie Brown has infringed upon Trendtex Holding’s rights
through the unauthorized reproduction and sale of the exact same surface
designs that are the subject of its copyrights. (See id. ¶¶ 9, 31, 45, 57.)
Construing these allegations in the light most favorable to Trendtex Holding, as
is required at this stage, the Court concludes that it has stated a valid claim for
copyright infringement. Further, to the extent Bonnie Brown attacks the actual
substance of the copyright infringement claims, those attacks are better suited
for later stages of the litigation. See Magical Mile, Inc. v. Benowitz, 510 F. Supp.
2d 1085, 1088 (S.D. Fla. 2007) (Huck, J.) (“That the claim may ultimately be
inadequate is not enough to overcome such a valid claim at the motion to
dismiss stage of litigation.”).
(c) No Requirement to Specifically State “Direct Infringement” Theory
In its reply in support of its motion to dismiss, Bonnie Brown for the first
time argues that the complaint does not satisfy the required pleading
standards because the Plaintiffs failed to allege whether they are claiming
copyright infringement pursuant to a direct or secondary copyright
infringement theory. Preliminarily, the Court notes that, because Bonnie Brown
did not raise this argument in its motion to dismiss, the Court need not
consider it. See Aknin v. Experian Info. Sols., Inc., Civil Action No. 17-22341-
Civ-Scola, 2017 U.S. Dist. LEXIS 163146, at *6 (S.D. Fla. Oct. 3, 2017) (Scola,
J.) (“Bright Star did not make these arguments or identify these deficiencies in
its Motion to Dismiss. Therefore, Bright Star has waived the arguments and the
Court will not consider them.”). However, because the Court granted the
Plaintiffs leave to file a sur-reply addressing the new argument, the Court will
briefly discuss this issue on the merits.
The Plaintiffs’ sur-reply counters that they are not required to use the
exact phrase “direct infringement” when stating copyright infringement claims.
The Court agrees. Bonnie Brown does not provide any authority for the
argument that plaintiffs are required to allege the precise theory of liability
pursuant to which they are proceeding. To the contrary, even the cases cited by
Bonnie Brown indicate that the infringement theory a plaintiff is pursuing may
be garnered from the nature of his allegations. See, e.g., Disney Enters. v.
Hotfile Corp., 798 F. Supp. 2d 1303, 1307 (S.D. Fla. 2011) (Jordan, J.) (“Where
a plaintiff shows that he owns a valid copyright and that the other party copied
some of the protected elements of that work, he has shown direct infringement
of his copyright.”); see also Broad. Music, Inc. v. Joint Bar & Grill, LLC, No. 12-
21209-CV, 2012 U.S. Dist. LEXIS 186206, at *3 n.1 (S.D. Fla. Dec. 11, 2012)
(Lenard, J.) (inferring that the plaintiffs were advancing a theory of vicarious
liability based on the language used in the complaint, even though the specific
theory was not explicitly stated).
Based on the complaint, it is clear that the Plaintiffs are proceeding
based on a theory of direct infringement. The Plaintiffs allege that they own
valid copyrights, and each claim in the complaint includes a statement that the
copyrighted designs and the alleged infringing designs are “substantially
similar” and enumerates five possible ways Bonnie Brown could have “access”
to the designs. Although Bonnie Brown is now challenging the sufficiency of
the complaint for failing to state whether it advances a direct or indirect theory
of copyright infringement, in its initial motion to dismiss, Bonnie Brown
challenged the claims as though they were for direct infringement, making no
mention of possible alternative theories. Bonnie Brown did not bring up the
lack of specificity until its reply, suggesting that it understood the Plaintiffs
intended to advance a theory of direct copyright infringement.
Moreover, the Plaintiffs were clearly not pleading indirect infringement,
which holds defendants responsible for infringement by third parties. See
Affordable Aerial Photography, Inc. v. Modern Living Real Estate, LLC, No. 19-cv-
80488-BLOOM/Reinhart, 2019 U.S. Dist. LEXIS 132023, at *7 (S.D. Fla. Aug.
6, 2019) (Bloom, J.) Theories of indirect infringement include contributory
infringement, requiring some inducement or encouragement of direct
infringement, and vicarious infringement, requiring the right and ability to
supervise the direct infringer. See id. The complaint contains no facts tending
to support another party’s direct infringement or Bonnie Brown’s alleged
relationship to the direct infringer.
In short, given that the complaint plainly advances a theory of direct
infringement, the Court finds that it sufficiently pleads copyright infringement
without expressly stating which theory the claims are based on.
4. Conclusion
For the reasons set out above, the Court grants in part and denies in
part Bonnie Brown’s motion to dismiss pursuant to Federal Rules of Civil
Procedure 12(b)(7) and 12(b)(6). (Mot., ECF No. 13.) In short, while Trendtex
Fabrics must be dismissed as a Plaintiff in this case, Narmada Textile is nota
required party, and the complaint sufficiently states a plausible claim for
copyright infringement.
Done and ordered at Miami, Florida TINGS L—
Robert N. Scola, Jr.
United States District Judge

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10122199. Public record. Not legal advice.