Supreme Court Case: When and How Copyright Registrations Can Be Invalidated for Inaccuracy | Arent Renard
Unicolors, Inc. v. H & M Hennes & Mauritz, LP involves a dispute between the fabric designer Unicolors and the large retailer H&M. Unicolors claims that H&M infringed its copyright in the print on fabric by using an allegedly similar version of the print without permission in connection with a jacket and skirt first sold in 2015. H&M has sold approximately 12 000 units of the accused clothes. According to H&M, however, its fabric print is a different original design, created by a Chinese designer who took inspiration from public domain designs and separately obtained a Chinese copyright registration for the print.
Shortly after the creation of Unicolors Print in 2011, the company included it in a single copyright application comprising 31 works. The application claimed a creation date of 2011 and a date of first publication of January 15, 2011 for all 31 works. The registration certificate issued on February 14, 2011.
H&M claims that the registration should be invalidated because all 31 works were incorrectly classified into one unit with the same publication date, even though 22 of them would have been published on one day and 9 would have been published on another day for different clients. According to H&M, Unicolors knowingly misrepresented the accused to the Copyright Office in order to save money on filing fees for copyright claims.
The verdict of the jury and the decisions of the district courts
The case first went to a jury in a California federal court, which found H&M liable for willful copyright infringement and awarded Unicolors $ 846,720 in damages.[iv] As part of the post-trial briefs, the court then reduced the amount of damages to $ 266,209.33 and further awarded Unicolors $ 508,709.20 in legal fees and $ 5,856.27 in legal fees. fresh.
The court dismissed H & M’s copyright invalidity claim raised in a post-trial motion for judgment as a question of law notwithstanding the jury’s verdict. According to the court, H&M: (a) failed to demonstrate that the recorded works had been published separately, so the application contained inaccurate information which, if known to the Copyright Registry, would have led it to to refuse registration; and (b) failed to identify that Unicolors knew the application contained false information at the time of registration. The court also dismissed H & M’s request for a referral under section 411 (b) (2), which was made in a footnote to its post-trial brief, [v] making no reference to it in the written notice after the trial.
The Call of the Ninth Circuit
On appeal, the Ninth Circuit overturned the district court’s decision, largely on the basis of technical objections to the court’s registration invalidity review process, and referred the case back for further consideration. deepened in the light of his opinion. The Ninth Circuit found that the lower court had committed a reversible error in failing to comply with the referral requirement of Section 411 (b) (2) of the Copyright Act and in applying inappropriate a standard of intent to fraud the disability issue, rather than focus on the knowledge issue. material inaccuracies. According to the circuit court, section 411 (b) of the copyright law requires that before assessing invalidity, a district court must submit an application to the copyright registry “for tell the court whether the inaccurate information, if known, would have caused [it] deny registration ”where a copyright defendant“ alleges that (1) an applicant’s registration certificate contains inaccurate information; (2) the incorrect information was included in the copyright registration application; and (3) the incorrect information was included in the request with the knowledge that it was incorrect. “[vi] He also reiterated his position that the correct standard for considering copyright invalidity disputes is knowing material inaccuracies, not intent to defraud. In remitting the case for reconsideration of the threshold invalidity issue, the Ninth Circuit ordered the lower court to comply with section 411 (b) (2) by first requesting the registry of rights of author whether he would have refused Unicolors registration had he been aware of the alleged inaccuracies.
The Ninth Circuit also disagreed with the lower court’s rejection of the merits of H & M’s invalidity argument. The appeals court conducted a textual analysis of the Copyright Office’s CFR regulations and stated that “a collection of works is not considered a ‘single publication unit’ unless all of the individual works of the collection was first published as a single, grouped unit. “[vii] Based on this interpretation, the court found that Unicolors’ claim contained significant inaccuracies, as the 31 works were not originally released as a single group collection. To support this conclusion, the court pointed to the testimony of the president of Unicolors at trial, who established that he knew that the 31 models were sold to different customers on different days, so they could not have all to be regrouped and published for the first time together. This finding of the appeals court laid the groundwork for the invalidation of the registration, assuming the copyright register confirms in response to the section 411 (b) (2) inquiry that ‘he would have refused the recording if he had known of the inaccuracies.
The request for review by the Supreme Court
Unicolors urged the Supreme Court to reconsider the case to correct what it believes to be errors in the interpretation of the Scienter’s Ninth Circuit needed to invalidate the copyright registrations, as well as the court’s interpretation of the meaning of the first date of publication. The Supreme Court only granted certiorari to one of the questions posed by Unicolors,[viii] indicating that the review will likely focus on the procedural aspect of the Section 411 (b) issue, rather than the copyright invalidity argument of the threshold as applied to the specific facts of this case.
Take away food
Things may change after the Supreme Court rules on the case and we will continue to monitor the case and keep you updated. In the meantime, to avoid overturns depending on where the Supreme Court ultimately lands, copyright litigants may consider the following:
- Carefully review the in-circuit review case law on copyright validity reviews before you take legal action or sue for copyright infringement or a declaratory judgment of invalidity or non-infringement actions.
- Request section 411 (b) (2) referrals to the copyright register before trial.
- Consider asserting copyright invalidity issues due to both material inaccuracies and intent to defraud standards.
- Have an intellectual property advisor prepare or review copyright claims before filing to ensure that there are no material inaccuracies that could later be used to invalidate the copyright. resulting record.
[i] Section 411 (b) of the Copyright Act states in the relevant parts that:
“(B) (1) A certificate of registration meets the requirements of this section and section 412, whether or not it contains inaccurate information, unless:
(A) the inaccurate information was included in the copyright registration application with the knowledge that it was inaccurate; and
(B) the inaccuracy of the information, if known, would have caused the Copyright Registry to refuse registration.
(2) In all cases where inaccurate information described in paragraph (1) is alleged, the court shall request the Copyright Registry to indicate to the court whether the inaccurate information, if known, would have caused the Registry of copyright to refuse registration. “
[ii] Motion for writ of certiorari, Unicolors, Inc. v. H&M Hennes & Mauritz, LP, n ° 20-915, 2021 WL 86892, p. 2 (filed in the United States on January 4, 2021); petition granted, Unicolors, Inc. v. H&M Hennes & Mauritz, LP, no.20-915, 2021 WL 2194846, at 1 (United States June 1, 2021).
[iii] See 17 USC §§ 411, 412.
[iv] The compensation for damages consisted of a large compensation for restitution of profits and a less compensation for loss of profits.
[v] Notice of motion and motion for judgment in matters of law or, alternatively, for a new trial, Unicolors, Inc. v. H&M Hennes & Mauritz LP, No. 16-CV-02322-AB (SKX), 2018 WL 6600466, at No. 11 (CD Cal. filed April 10, 2018) (“On the alternative to entering judgment for H&M, pursuant to 17 USC § 411 (b) (2), the court can ask the Copyright Registry whether it would have registered the copyright had it been aware of the Unicolors fraud. ”).
[vi] Unicolors, Inc. v. H&M Hennes & Mauritz, LP, 959 F.3d 1194, 1197 (9th Cir. 2020) (inner quotes omitted), cert. granted in part, no.20-915, 2021 WL 2194846 (June 1, 2021 in the United States).
[vii] Identifier. to 1200.
[viii] Petition accepted, Unicolors, Inc. v. H&M Hennes & Mauritz, LP, no.20-915, 2021 WL 2194846, at 1 (United States June 1, 2021).