Facts
Unicolors, Inc. (the plaintiff) registered its design copyrights in 2011, but in 2015, H&M (the defendant) launched apparel that used Unicolors’ design. Then in 2016, Unicolors filed the action against the company in federal district court due to the case of a copyright dispute that ended with the jury’s decision to hold H&M liable. However, H&M lodged an appeal against the conviction: they found false information in the Unicolors’ copyright registration. The U.S. Court of Appeals for the 9th Circuit confirmed the stated, reversed the previous district court’s judgment, and remanded additional proceedings.
Issues
- May courts refer to Copyright Office to investigate a copyright registration validity if the registrant made an error without evident intent to defraud or material registration errors?
- If the Copyright Office agrees that it would have declined registration if it had known of the incorrect information, should such a ruling deny relief to copyright owners?
- Could the designs published in one day for different users and made public on other dates be counted as “one bundled unit”?
Holding and Reasoning
At the moment, the case is still not resolved, but on June 1, 2021, the Supreme Court granted certiorari in the case, limiting consideration to one question presented in the petition:
Did the Ninth Circuit err in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to work at issue in the subject copyright registration? (Supreme Court of the United States para.5).
Holdings connected to the legal issues are presented as follows:
May courts refer to Copyright Office to investigate a copyright registration validity if the registrant made an error without evident intent to defraud or material registration errors?
Yes, courts may refer to Copyright Office to investigate a copyright registration validity if the registrant made an error without evident intent to defraud or material registration errors.
Rationale: section 411(b)(2) of the Copyright Act: “In any case in which inaccurate information…is alleged, the court shall request the Register of Copyrights…” (U. S. Copyright Office 193). The court referred to their earlier case, Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, L.L.C. of 2019, when they analyzed the application of the expression “with knowledge” (United States Court of Appeals for the Ninth Circuit 7). The U.S. Court of Appeals for the 9th Circuit concluded that Unicolors had consciously misrepresented facts when applying for the registration because they knew that confined designs could not be published on the same date as ordinary designs – January 15, 2011. Thus, the U.S. Court of Appeals for the 9th Circuit remanded the case for the federal district to request the Register of Copyrights on information if the mistakes could have impeded registration action.
If the Copyright Office agrees that it would have declined registration if it had known of the incorrect information, should such a ruling deny relief to copyright owners?
Yes, under the Copyright Act, registrations are a prerequisite to filing for copyright infringement and requesting legal damages and attorney’s fees relief.
Rationale: the Copyright Act, section 411(a): “Except for … section 106A(a), and… subsection (b), no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” (U. S. Copyright Office 193). That rule was already applied by the Supreme Court in Feist Publ’ns, Inc. v. Rural Tel. Serv. Co. of 1991 (United States Court of Appeals for the Ninth Circuit 7). Therefore, according to the ruling, Unicolors will not get any compensation.
Could the designs published in one day for different users and made public on other dates be counted as “one bundled unit”?
No, single-unit registration could be applied only to works published in a bundle.
According to Title 37: Patents, Trademarks, and Copyrights, section 202.3(b)(4): “…the following shall be considered one work…all copyrightable elements…recognizable as self-contained works, …included in the same unit of publication, …the copyright claimant is the same” (Office of the Federal Register National Archives and Records Administration 574). The court refers to the case Am. Vitagraph, Inc. v. Levy of 1981 (United States Court of Appeals for the Ninth Circuit 10). Hence, the registration of all 31 designs as one work is considered wrong.
Dissent
There are no official opinions presented on Unicolors, Inc. v. H&M Hennes & Mauritz, LP case, but specialists could turn to the unofficial ones. Madigan is sure that an intent to defraud is fundamental: adopting a lower standard by the United States Court of Appeals for the Ninth Circuit is a move away from the actual practice. Knowledge of inaccuracy standards has been used for years in U.S. law and legislative history. The court’s decision was a shift away from the previous precedents and rulings of other circuits in similar cases.
Madigan refers to the Prioritizing Resources and Organization for Intellectual Property Act, known as the PRO IP Act of 2008. When passing this act, Congress intended to alter the Copyright Act’s section 411 to emphasize the question of intent and fraud during the registration process in the Copyright Office. Hence, the PRO IP Act established the ruling that errors of unknowing in registrations are not reasons for their invalidation. When registrants think the provided registration information was accurate, they could not be deemed culpable of deliberately including false information.
Madigan argues that in copyright infringement cases, the practice when courts permit defendants to invalidate plaintiffs’ registrations due to the registrants’ general knowledge of an error would turn over the whole litigation practice and copyright registration system. Lowering the standard will lead to the copyright registration system’s abuse while denying defendants of such an ability could not disadvantage people obtaining legitimate reasons to sue. Therefore, “the Supreme Court should reverse the judgment to ensure 411(b) does not become a get-out-of-jail-free card for culpable defendants” (Madigan para.19).
Works Cited
Madigan, Kevin. “Unicolors Case Presents the Supreme Court With an Opportunity to Reinforce the Foundations of the Copyright Registration System.”. 2021, Copyright Alliance. Web.
Office of the Federal Register National Archives and Records Administration. Title 37: Patents, Trademarks, and Copyrights, 2011.
Supreme Court of the United States. 20-915 Unicolors, Inc. V. H&M Hennes & Mauritz, L.P, 2021.
U. S. Copyright Office. Copyright Law of the United States and related laws contained in Title 17 of the United States Code, 2021.
United States Court of Appeals for the Ninth Circuit. Unicolors, Inc. V. H&M Hennes & Mauritz, L.P.: Opinion, 2020.