Gold Value Int'l v. Sanctuary Clothing, LLC
925 F.3d 1140
9th Cir.2019Background
- Fiesta (Gold Value Int’l Textile) designs and sells fabric; registered a 33-design collection (including Design 1461) as an unpublished collection on Oct. 24, 2013 (Registration ‘509).
- Prior to registration, Fiesta sold ~190 yards of fabric with the 1461 design (beginning March 12, 2013) as samples to customers; Fiesta’s president certified the collection was unpublished.
- Fiesta sued Sanctuary and retailers for copyright infringement based on the ‘509 registration; Sanctuary counterclaimed seeking invalidation of the registration.
- District court found the 1461 design had been published before registration, that Fiesta knew of the sales, and thus the ‘509 application contained a knowing inaccuracy; the court asked the Register whether the Office would have refused registration if aware of the error.
- The Register said the Office would have refused registration of a published work as an unpublished collection if the error had not been timely corrected; district court declared the ‘509 registration invalid as to 1461 and granted summary judgment for defendants, plus attorney’s fees.
- Fiesta later obtained a separate registration for 1461 (Registration ‘252) and filed a separate suit; that registration and separate suit were not before this appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the application contained inaccurate information | The collection was properly unpublished; omission of a publication date was a correctable mistake | 1461 was sold pre-registration, so including it in an unpublished collection was inaccurate | The registration was inaccurate because 1461 was published before registration |
| Whether Fiesta knew the information was inaccurate when applying | Fiesta believed sampling did not constitute legal publication (ignorance of law) | Fiesta admitted it sold samples before applying and thus knew the factual predicate | Knowledge requirement met: inclusion was made with knowledge of the inaccuracy (no fraud required) |
| Whether the inaccuracy would have caused the Register to refuse registration | Even if published, the Register could have allowed correction or supplementary registration | The Office would not register a published work as part of an unpublished collection and would have refused absent timely correction | §411(b)(1)(B) satisfied; Register would have refused, so registration invalid as to 1461 |
| Whether defendants are entitled to attorney’s fees | Fees are inappropriate because plaintiff may vindicate rights via later registration | Defendants prevailed and warrant fees to compensate/deter claims based on invalid registrations | Fee award affirmed: defendants prevailing parties; district court did not abuse discretion |
Key Cases Cited
- L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir.) (inadvertent registration errors may be excused; supplementary registration can cure some mistakes)
- Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir.) (good-faith mistakes in applications do not invalidate registrations)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (U.S.) (registration is generally a prerequisite to suit)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (U.S.) (factors for awarding attorney’s fees under the Copyright Act)
- Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598 (U.S.) (definition of "prevailing party")
- Syntek Semiconductor Co. v. Microchip Tech. Inc., 307 F.3d 775 (9th Cir.) (primary jurisdiction of Copyright Office over certain registration defects)