OMG Accessories LLC v. Mystic Apparel LLC

Background

OMG Accessories LLC alleged that it owned a valid copyright in a design called “Unicorn Pattern.” It alleged that Mystic Apparel LLC and Kohl’s Department Stores, Inc. infringed that copyright by selling a backpack and lunchbox set with a design reproduced from the Unicorn Pattern Design. OMG alleged that the defendants had access to its design through its website, social media, showroom, samples, and, for Kohl’s, earlier purchases of products displaying the design.

Motion to dismiss

The defendants moved to dismiss under Rule 12(b)(6), which asks whether the complaint contains enough factual allegations to state a legally plausible claim. They argued that the designs were not substantially similar and that the lunchbox design had no meaningful similarity to OMG’s design. They also argued that, even if the designs were substantially similar, the defendants’ use qualified as fair use.

Substantial similarity

The court explained that a copyright-infringement claim requires a valid copyright, actual copying, and unlawful copying shown by substantial similarity between the protected parts of the original work and the accused work. Because the works were attached to the complaint, the court could compare them at the motion-to-dismiss stage.

The court applied a more discerning comparison because the design included both protectable and unprotectable elements. It agreed that some features—such as a unicorn’s horn, rainbow-colored features, and a close-eyelash line—were not protectable by themselves. But it found that the works shared a similar overall concept and feel. The court identified the combined effect of closed eyes with distinctive eyelashes, rainbow-colored locks, a glittered horn, and pink hearts on the unicorn’s face or cheek. It concluded that it would be premature to decide that no properly instructed reasonable jury could find substantial similarity.

The court addressed only the backpack image because OMG had stated that its claim focused on the backpack and that the complaint included that image. The court did not make a final finding that the defendants infringed the copyright.

Fair use

Fair use is a defense that can excuse what would otherwise be copyright infringement. The court described it as a fact-dependent inquiry involving the purpose and character of the use, the nature of the copyrighted work, the amount used, and the effect on the potential market.

The court declined to resolve fair use on the motion to dismiss. OMG alleged that Kohl’s had direct access to the design through earlier purchases and that OMG’s sales declined when Kohl’s began selling the allegedly infringing product. The court found that the existing record did not provide enough information to evaluate the purpose of the use and its effect on the market. It stated that a full fair-use analysis was better suited to a motion for summary judgment after the record had been developed.

Disposition

The court denied the defendants’ motion to dismiss. The opinion therefore did not dismiss OMG’s copyright-infringement claim at this stage. Because the order ruled on a Rule 12(b)(6) motion without finally deciding infringement, this summary classifies it as a procedural order.