Posted on 8/10/2021 4:22:09 AM By Francyn Brown

On June 1, 2021, the Supreme Court agreed to hear a copyright dispute between fashion giant H&M and pattern-making company Unicolors over one of Unicolors’ fabric artwork designs. After 5 years of litigation and a jury verdict of $1M in Unicolors’ favor, the dispute makes its way to the high court for the Justices to address whether an inaccuracy in Unicolors’ copyright application invalidates the copyright registration relied upon for the lawsuit.
 
Determining the validity of Unicolors’ copyright registration is crucial because a copyright owner typically cannot initiate a lawsuit without one.[1] This principle is undisputed by both of the parties. What is disputed is the correct standard that should be applied by the fact finder to determine whether or not the copyright registration should be invalidated. The parties’ positions are supported by the respective sides of a circuit split on the interpretation of the Copyright Act. The parties invoke the supporting side of a circuit split on the interpretation of the Copyright Act.
 
The Copyright Act provides that a copyright registration is valid, “regardless of whether the certificate contains any inaccurate information, unless— (A) the inaccurate information was included on the application for copyright 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)(A)-(B) (emphasis added). The circuit split centers on whether the “knowledge that it was inaccurate” language requires a finding that the copyright owner intended to defraud the copyright office by the misstatement on the application. The 11th Circuit held in Roberts v. Gordy that § 411(b)(1) requires a showing of “intentional or purposeful concealment of relevant information” to render a registration invalid.[2] Practically, this means that the fact finder in the district court first needs to find fraud before the Copyright Office can weigh in on the validity of the registration and where no fraud is established, the registration remains valid without deference to the Copyright Office. While the 9th Circuit has recently clarified that there is no such intent-to-defraud requirement.[3] This means that once the district court merely determines that there was a misstatement in the application that the copyright owner knew about, regardless of fraudulent intent, then the district court must request input by the Copyright Office on the validity of the registration.
 
Here, the 9th Circuit held that since Unicolors admitted to having knowledge of an inaccuracy in its copyright application, the district court should have immediately “request[ed] the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register . . . to refuse registration.”[4] The 9th Circuit found error in the district court’s determination that the required (allegedly) fraudulent intent by Unicolors was not established by H&M during trial and that it did not need to be reevaluated by the Copyright Office.[5] The 9th Circuit reversed the district court’s decision on these grounds.
 
Now, the Supreme Court has granted cert to resolve the circuit split between the 9th Circuit and the 11th Circuit’s interpretations on whether or not fraud is required to be established prior to invalidating a copyright registration.
 
So, what do you think? Will the Supreme Court agree with Unicolors and the 11th circuit or H&M and the 9th Circuit?
 
If you need help applying for copyright registration, please contact us today!
 
[1] 17 U.S.C. § 411(a).
[2] 877 F.3d 1024, 1029 (11th Cir. 2017) (citation omitted).
[3] See Gold Value Int'l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140, 1147 (9th Cir. 2019).
[4] 17 U.S.C. § 411(b)(2).
[5] Unicolors, Inc. v. H&M Hennes & Mauritz, Ltd. P'ship, 959 F.3d 1194, 1200 (9th Cir. 2020).
Copyright, "Intellectual Property"