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

Ninth Circuit holds that district courts must ask Register of Copyrights to advise whether inaccurate information in copyright application would have precluded registration, and that works included in “single-unit registration” must be published as singular, bundled unit. 

Unicolors, Inc., which creates designs for use on textiles and garments, sued H&M Hennes & Mauritz L.P. for selling garments that infringe one of Unicolors’ designs. After a jury verdict in favor of Unicolors, H&M appealed, arguing that Unicolors did not have a valid copyright registration for the design, which is a prerequisite for filing an infringement action. H&M argued that Unicolors’ registration was invalid because it included knowingly false information—specifically, that Unicolors had registered 31 separate designs as part of a single-unit registration in order to avoid paying multiple filing fees, even though some of those designs were published at different times to different customers. The Ninth Circuit first held that whenever a defendant alleges that a plaintiff’s registration contains inaccurate information that the plaintiff knowingly included in its application, Section 411(b)(2) of the Copyright Act requires district courts to ask the Register of Copyrights whether registration would have been refused if the Copyright Office had known the information was inaccurate. The Ninth Circuit noted that it had recently clarified that there is no intent-to-defraud requirement for registration invalidation. Knowingly including inaccurate information is enough to warrant invalidation. Turning to the challenge to Unicolors' registration at hand, the Ninth Circuit held that a collection of works may be registered under a single-unit registration only when the works were first published in a singular, bundled unit. Because Unicolors’ president testified that some of the designs included in the single-unit registration were published to different customers at different times, the court held that Unicolors’ registration contained known inaccuracies. But because the district court had not asked the Register of Copyrights to advise whether the inaccurate information would have precluded registration, the Ninth Circuit remanded the case for the district court to do so.

Summary prepared by Tal Dickstein and Lisa Rubin