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28 June 20213 minute read

Supreme Court Corner

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.

COPYRIGHT – Certiorari granted: June 1, 2021

Issue: Whether 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration.

A copyright certificate of registration is effective, “regardless of whether the certificate contains any inaccurate information, unless (A) the inaccurate information was included on the application copyright right registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.”  17 U.S.C. § 411(b)(1).  In cases alleging the certificate contains inaccurate information, “the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.”  Id. at § 411(b)(2).

Petitioner Unicolors created a fabric design in January 2011 and registered the design with the Copyright Office.  In 2017, a jury found respondent H&M infringed the petitioner’s copyright by selling garments with a similar design and awarded disgorgement and lost profits.  The district court denied H&M’s post-trial motion that the registration was invalid because of inaccuracies in the registration certificate. 

The Ninth Circuit reversed and remanded, holding that under § 411 the district court was required to request the Register of Copyrights to advise whether the inaccurate information was material.  Moreover, the Ninth Circuit, following its recent decision in Gold Value v. Sanctuary Clothing, 925 F.3d 1140 (9th Cir. 2019), cert. denied, 140 S. Ct. 1294 (Mar. 9, 2020), found that § 411(b)(1) does not require proof of fraud or bad faith in order to invalidate a registration.

On appeal, the petitioner argues that the Ninth Circuit erred by not reading § 411(b)(1) to require intent by the applicant to defraud the Copyright Office.  According to the petitioner, the statute intended to codify the doctrine of fraud on the Copyright Office, and not penalize copyright owners who made simple errors in their applications.  The Ninth Circuit’s decision, the petitioner argues, creates a split between the Ninth Circuit and the Federal Circuit, both of which do not require intent to defraud, and the Eleventh Circuit, which requires a showing of “intentional or purposeful concealment of relevant information” to render a registration invalid. 

The respondent argues the Ninth Circuit decision adheres to the statutory text.  Had Congress intended to codify the “intent to defraud,” that would have been made clear either in the statutory text or the legislative history, but it was not, according to the respondent.  Further, the respondent argues that the Eleventh Circuit decision is an outlier, has not been followed by other courts since Gold Value, and does not create a circuit split.  Accordingly, the respondent argues the Ninth Circuit’s decision should be affirmed.