On June 1, 2021, the Supreme Court granted certiorari in the ongoing case of Unicolors v. H&M Hennes & Mauritz, L.P., No. 20-915.  With a nearly $1 million copyright verdict on the line, pattern manufacturer Unicolors, Inc.’s (“Unicolors”) fate is now at the Supreme Court to decide whether courts should refer copyright registration validity challenges to the Copyright Office where there is a known misrepresentation in the registration, but no evidence of intent to defraud.

 A copyright registration certificate is not valid if obtained by offering false information and that information, if known, would have resulted in the registration being denied. Under 17 U.S.C. §411(b)(2), where knowingly inaccurate information is included in an application for copyright registration, “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 the registration.” 

In its petition to the Supreme Court, Unicolors, Inc. (“Unicolors”) stated bad faith or fraudulent intent as the 11^th Circuit has required is a prerequisite to referring validity challenges to the Copyright Office.  Hennes & Mauritz, L.P.’s (“H&M”) position is, as the Ninth Circuit found here, that the plain language of the Copyright Act requires that when evidence of inaccurate information in the application becomes known, the court should ask the Copyright Office if it would have issued the copyright registration, regardless of intent to defraud by the applicant.

This dispute began in 2016 when Unicolors sued H&M for selling garments that infringed on a design it created in 2011.  It is a relatively common practice to file for a copyright registration of a collection of designs.  Here, however, the group registration Unicolors relied on included designs that were not public as of the claimed publication date. Some of the works included in the registration were “confined” — meaning that they were held from the general public during an exclusivity period — while others were non-confined and immediately available for public consumption.

A jury found the works were substantially similar. H&M filed for judgement as a matter of law arguing in part that the copyright registration was not valid because the thirty-one separate designs included in the registration were not published at the same time which precluded Unicolors from bringing suit under 17 U.S.C. § 411.  H&M’s motion was denied on the grounds that there was 1) no evidence of intent to defraud the Copyright Office, and 2) no evidence that the works were presented to different purchasers on different days.

H&M appealed this decision to the Ninth Circuit, which reversed and remanded to the district court.  The Ninth  Circuit noted that a collection of works can be registered as a single work if they are published in a “singular, bundled collection” to the general public. In this case, some designs were kept from the public during an exclusivity period and therefore published at different times.

Rather than using an intent to defraud standard, the Court found that Unicolors knew the registration was inaccurate as it was aware that some of the works were confined and offered to the public at different times.  The Ninth Circuit remanded to the district court to ask the Register of Copyrights whether this information would preclude registration. The Court emphasized that the validity of the registration is not an issue for the court in the first instance, but should be determined by asking the Register of Copyrights. 

In light of this pending case, copyright owners should check publication dates on any applications filed for collective works to ensure that they are accurate. If not all works will have the same publication dates, copyright owners should file separate applications. In instances where a registration inaccuracy is detected, copyright owners should determine if they can amend their registration or need to re-file.

The Supreme Court is expected to issue a decision by June of 2022.