Double-Check That Copyright Application: Inaccuracies Could Kill Your Infringement Case
July 15, 2020
Despite a global pandemic, the U.S. Court of Appeals for the Ninth Circuit recently issued an opinion that highlights the importance of providing accurate information in your copyright application. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 18-56253, slip op. (9th Cir. May 29, 2020). In this case, Unicolors submitted a “single-unit” copyright application of thirty-one designs with a single publication date, even though a portion of the individual works were not initially published with the larger collection of works. See id. at 4-5. H&M argued on appeal that these inaccuracies invalidate the copyright registration at issue, which necessitates a dismissal of Unicolors’ copyright infringement claims. According to the Ninth Circuit, Unicolors’ favorable judgment after trial could be erased if the Register of Copyrights ultimately agrees with H&M.
The underlying jury trial pitted Unicolors, a company that creates designs for use on textiles and garments, against H&M, which owns retail clothing stores. Unicolors alleged that H&M began selling clothing that incorporated a design that was remarkably similar to a design that it created in 2011. At trial, the jury determined that the two designs were substantially similar, and the district court entered a judgment for Unicolors.
On appeal, H&M challenged the validity of Unicolors’ copyright registration, which is an initial requirement for filing a copyright infringement lawsuit. In 2011, Unicolors filed a “single-unit registration” of thirty-one separate designs in a single application. Only a single design was at issue in this case. A representative testified that Unicolors filed numerous designs in a single application to save money and there was no compelling evidence that Unicolors intended to defraud the Copyright Office. While Unicolors claimed a common publication date for all thirty-one designs, the evidence at trial showed that the collection of works was not sold or offered for sale in an integrated manner as is required. Most of the designs were generally offered for sale, but a portion of the designs were confined to specific customers for a number of months. This portion of the designs remained private for that period of time.
H&M argued that this evidence proves that Unicolors secured the registration by knowingly providing inaccurate information, and that if known, the Register of Copyrights would have denied registration. The Ninth Circuit agreed with H&M and ruled that a “single unit of publication” must have been first published as a “singular, bundled collection,” and that this collection of works does not qualify since some of the designs were confined to specific customers. Although the panel agreed that Unicolors’ copyright registration contained these inaccuracies, it remanded the case back to the district court to request the Register of Copyrights to advise the court whether these inaccuracies “would have caused the Register … to refuse registration.” 17 U.S.C. § 411(b)(2). Thus, Unicolors could prevail if these inaccuracies would not have led to refusal by the Register of Copyrights.
The key takeaway from this decision is that you must check and double-check the accuracy of your copyright application. And if you plan to file a “single-unit” application, confirm that all the individual works of the collection were first published as a “singular, bundled unit.” Because if you fail to file an accurate copyright application, it could kill your copyright infringement case.
This opinion from the Ninth Circuit Court of Appeals can be accessed here. https://cdn.ca9.uscourts.gov/datastore/opinions/2020/05/29/18-56253.pdf
Dustin Mauck focuses his practice on intellectual property and technology disputes, counseling, and licensing.
RegitzMauck PLLC is an intellectual property boutique based in Dallas, Texas. The firm focuses on providing value-based legal services to cost-conscious clients seeking high quality legal representation in intellectual property and technology matters and disputes.