Unicolors, Inc. v. H&M Hennes & Mauritz, Lp
959 F.3d 1194
9th Cir.2020Background
- Unicolors created a textile artwork called EH101 in January 2011 and filed a single-unit copyright registration (No. VA 1-770-400) in February 2011 covering 31 designs with a January 15, 2011 date of first publication.
- The registration included both non-confined designs (publicly shown/sold) and at least nine "confined" designs that Unicolors marketed exclusively to individual customers and did not place in its public showroom during the exclusivity period.
- In 2015 H&M sold garments bearing a design called Xue Xu; Unicolors sued for copyright infringement, and a jury found infringement, willfulness, and awarded damages (later reduced by remittitur).
- H&M challenged the validity of the ’400 Registration on appeal, arguing the single-unit registration was inaccurate because the works were not first published as a bundled unit (due to the confined designs being published separately).
- The district court denied H&M judgment as a matter of law (and required an intent-to-defraud showing to invalidate registration) but the Ninth Circuit reversed those aspects and remanded with instructions to seek the Register of Copyrights’ advice under 17 U.S.C. § 411(b)(2).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of single-unit registration ("single unit of publication") | Unicolors: the works shared the same first-publication date and the collection qualifies for single-unit registration; presentation to sales staff and showroom placement sufficed. | H&M: inclusion of "confined" works first published separately to exclusive customers means the collection was not first published as a singular, bundled unit, so the application contained inaccurate information. | A single-unit registration requires that the individual works were first published together as a singular, bundled unit; registering works that were initially published separately (e.g., confined designs) is inaccurate. |
| Intent-to-defraud requirement to invalidate registration | Unicolors/district court: invalidation requires proof of intent to defraud the Copyright Office. | H&M: intent to defraud is not required; knowledge that the application included inaccurate information is sufficient under § 411(b). | The Ninth Circuit (following Gold Value) rejects an intent-to-defraud requirement; knowledge that the information was inaccurate is the relevant inquiry. |
| Court procedure under 17 U.S.C. § 411(b)(2) when inaccuracies are alleged | Unicolors: (implicitly) no further Register inquiry required because district court found no fraud. | H&M: district court must request the Register of Copyrights to advise whether the inaccuracies, if known, would have caused refusal of registration. | The district court erred by not making the statutorily required request to the Register; case is remanded for the court to submit the § 411(b)(2) inquiry. |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright infringement requires valid copyright and copying)
- Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140 (no intent-to-defraud requirement; knowledge suffices under § 411)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (registration requirement is a precondition to suit, not substantive copyright protection)
- Fort Bend Cty. v. Davis, 139 S. Ct. 1843 (claim‑processing rules can be mandatory and must be enforced if properly raised)
- Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038 (Compendium of Copyright Office Practices entitled to Skidmore deference)
- Am. Vitagraph, Inc. v. Levy, 659 F.2d 1023 (publication occurs when a work is made available to the general public)