                                                                           FILED
                           NOT FOR PUBLICATION                              DEC 20 2011

                                                                        MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



UNITED FABRICS INTERNATIONAL,                    No. 10-56169
INC., a California Corporation,
                                                 D.C. No. 2:08-cv-06865-ODW-
              Plaintiff - Appellee,              PLA

  v.
                                                 MEMORANDUM *
LANE BRYANT, INC., a Delaware
Corporation; CHARMING SHOPPES,
INC.; INTERNATIONAL NEWPORT
GROUP, a California Business Entity
Form Unknown Erroneously Sued As
Newport Apparel Corporation; MOA
MOA, INC.,

              Defendants - Appellants,

  and

K.E.S. TEXTILE, INC.,

              Defendant.



                    Appeal from the United States District Court
                       for the Central District of California
                     Otis D. Wright, District Judge, Presiding



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
                     Argued and Submitted December 5, 2011
                              Pasadena, California

Before: D.W. NELSON, GOULD, and IKUTA, Circuit Judges.




       The August 2006 registration of “Ethnic Collection X” was sufficient to

support this infringement action under 17 U.S.C. § 411(a) and to support the award

of attorney’s fees under 17 U.S.C. § 412(2). Ethnic Collection X meets the criteria

for registration as a collection of unpublished works under 37 C.F.R.

§ 202.3(b)(4)(B), see United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255,

1259 (9th Cir. 2011), and therefore the August 2006 registration registered not just

the collection as such but “all copyrightable elements [within the collection] that

are otherwise recognizable as self-contained works.” § 202.3(b)(4)(B).

      The failure of United Fabrics (“UFI”) to note in its application that the

Hailey design is a derivative work does not render the registration invalid; Lane

Bryant has neither argued that it detrimentally relied on the omission nor pointed to

any evidence that UFI intended to defraud the Copyright Office. See Jules Jordan

Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146, 1156 (9th Cir. 2010).

Furthermore, because Ethnic Collection X would still have been registerable even

if the derivative nature of the Hailey design had been noted in the application, the



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omission was immaterial. See id.; see also Melville B. Nimmer & David Nimmer,

Nimmer on Copyright § 7.20[B][1].

      Lane Bryant has waived its arguments that the evidence was insufficient to

support the jury’s verdict that Lane Bryant, Inc. and Newport Apparel Corp.

willfully infringed UFI’s copyright and that Newport Apparel Corp., Lane Bryant,

Inc., and Charming Shoppes, Inc. vicariously infringed UFI’s copyright, because

Lane Bryant did not file a Rule 50(b) post-trial motion for judgment as a matter of

law. See Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 400–01

(2006); Fed. R. Civ. P. 50(b).

      Lane Bryant has also waived its argument that Plaintiff’s Special Jury

Instruction No. 1 was erroneous. Lane Bryant did not object to the instruction on

the record. See Fed. R. Civ. P. 51; Medtronic, Inc. v. White, 526 F.3d 487, 495

(9th Cir. 2008) (noting that, to be valid, an objection to a jury instruction must be

made on the record and state the grounds for objection). Nothing in the record

suggests that the district court knew Lane Bryant’s ground for disagreement with

the instruction. See Medtronic, 526 F.3d at 495. Nor does this instruction call into

question the integrity or fundamental fairness of the proceedings in the district

court. See Jerden v. Amstutz, 430 F.3d 1231, 1236 n.4 (9th Cir. 2005).




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      The district court did not err in excluding Christina Hutchings’s testimony

with regard to overhead expenses Lane Bryant, Inc. purportedly incurred in

connection with the sale of the infringing garments. Because Hutchings testified

that she had not been asked to determine the amount of overhead attributable to the

sale of the infringing garments and that she calculated overhead expenses without

regard to whether those expenses actually related to the sales of the garments at

issue, she would have been unable to testify regarding the relevant legal issue,

specifically whether “the categories of overhead actually contributed to sales of the

infringing work.” Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d

505, 516 (9th Cir. 1985); see also Kamar Int’l, Inc. v. Russ Berrie & Co., Inc., 752

F.2d 1326, 1332 (9th Cir. 1984).

      The district court erred in excluding Lane Bryant’s proffered evidence that

Newport Apparel Corp. had sold a dress that did not include the infringing fabric

design, but which had an identical silhouette and cut as the infringing garment, to a

competing retailer for a higher price than that at which the infringing garment was

sold to Lane Bryant, Inc. This evidence was relevant to the issue of apportionment

because it suggested that at least some of the value of the infringing garment arose

from features other than the infringing fabric design. Although this evidence did

not provide a mathematically precise method of determining what portion of Lane


                                          4
Bryant’s profits were attributable to non-infringing aspects of the garment, such

precision is not required. See Frank Music, 772 F.2d at 518. On remand, the

district court must consider the evidence adduced by Lane Bryant and determine

whether it “suggests some division which may rationally be used as a springboard”

to make an apportionment.1 Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754

F.2d 826, 829 (9th Cir. 1985).

      The parties shall bear their own costs on appeal.

      AFFIRMED in part, REVERSED in part, and REMANDED for further

proceedings.




      1
         On remand, if the district court determines that the apportionment issue is
not sufficiently separable from the other damages issues in this case, or that a
retrial on the apportionment issue alone would work an injustice to the parties, it
may conduct a full retrial on damages and would not be precluded from
considering any additional evidence adduced by Lane Bryant regarding overhead
expenses. Cf. Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d 725,
732–33 (9th Cir. 1999). Conversely, if the district court determines that the
apportionment issue is sufficiently separable, and that it is fair to the parties, the
court may have a retrial on that issue alone. See Frank Music, 772 F.2d at 519;
Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 710 (9th Cir. 2004).

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