UNICOLORS, INC. V. H&M HENNES & MAURITZ, LP
52 F.4th 1054
9th Cir.2022Background
- Unicolors registered a 2011 collection (’400 Registration) covering 31 designs including EH101; the registration listed a single publication date though some works were "confined" (limited, not publicly distributed).
- H&M began selling garments in 2015 bearing the Xue Xu design; Unicolors sued for copyright infringement alleging Xue Xu copied EH101.
- A jury found Unicolors’s copyright valid, found infringement and willfulness, and awarded $817,920 in disgorged profits plus $28,800 in lost profits; the district court conditionally granted remittitur and awarded fees after Unicolors initially accepted a reduced amount.
- The Supreme Court held § 411(b)(1) excuses inaccuracies in a registration for mistakes of either fact or law (Unicolors v. H&M, 142 S. Ct. 941 (2022)) and vacated the Ninth Circuit’s prior decision, so this panel reconsidered validity of the ’400 Registration on remand.
- On remand the Ninth Circuit (this opinion) held the ’400 Registration contained inaccuracies but was protected by § 411(b) because Unicolors lacked knowledge (including legal knowledge) that the application violated the single-unit rule; thus the copyright is valid.
- The court affirmed most trial rulings (evidentiary rulings, RJMOL denial, willfulness, and fees) but reduced the remittitur to $116,975.23 and ordered that a new trial be granted limited to damages if Unicolors rejects that amount.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of ’400 Registration under § 411(b) (knowledge/materiality) | Unicolors: inaccuracies existed but were innocent; lacked knowledge of legal noncompliance so safe-harbor applies | H&M: registrant knew it mixed confined and public works and thus knew the application was inaccurate and should be invalidated | Registration invalidity requires (1) inaccuracy, (2) registrant knowledge of legal/factual noncompliance, and (3) materiality; court found inaccuracy but affirmed district court’s factual finding that Unicolors lacked requisite knowledge, so registration stands under § 411(b) |
| Admissibility of Unicolors president Pazirandeh’s testimony (claimed undesignated expert) | Unicolors: testimony was lay fact/witness perception, not expert opinion | H&M: statements constituted expert opinions improperly offered without designation | H&M forfeited the claim by not objecting/striking at trial; preserved pretrial limits did not excuse the need to object during testimony; no reversal |
| Exclusion of H&M’s late-designated experts (Robin Lake on similarity; Justin Lewis on damages) | H&M: late disclosure was substantially justified and harmless given trial developments | Unicolors: disclosure untimely, prejudice warranted exclusion under Rules 26/37 | Court affirmed exclusion: experts were untimely rebuttal designations with no timely-opinion to rebut; H&M forfeited opportunities to seek admission during trial; exclusion not an abuse of discretion |
| Jury instructions re: DOMO’s Chinese copyright / presumptive validity | H&M: Chinese registration entitles Xue Xu to presumption of originality and required jury instruction on burdens and presumption | Unicolors: Berne requires equal treatment but U.S. law governs infringement; H&M failed to present foundational evidence linking DOMO registration to H&M garments | Court held the requested evidentiary-burden instruction was duplicative; any failure to instruct on presumptive validity was harmless because H&M failed to present foundational linkage evidence |
| Admission of DOMO’s U.S. copyright registration (late) | H&M: U.S. registration relevant to show Xue Xu’s originality and independence | Unicolors: late production was prejudicial and strategic; admit would unfairly surprise plaintiff | District court did not abuse discretion excluding the certificate under Rule 403 (prejudice & tactical late procurement); any error harmless given the weak probative value and existing evidence of similarity |
| Admission of previously unproduced black-and-white garment exemplar | Unicolors: exemplar designated/produced; admissible | H&M: late-produced and materially different from produced color exemplar | H&M forfeited challenge by failing to object at trial; no reversal |
| Sufficiency of evidence on copying/striking similarity and willfulness (RJMOL) | Unicolors: objective and subjective similarity (extrinsic/intrinsic) and evidence of access support jury verdict; continued sales after notice support willfulness | H&M: no evidence of access; existence of DOMO registration undermines copying/willfulness | Court found ample evidence of striking similarity supporting an inference of copying; willfulness supported by conduct (continued sales after suit); RJMOL denial affirmed |
| Remittitur calculation and scope of new trial | Unicolors: district court remittitur was appropriate; plaintiffs accepted earlier remittitur | H&M: district court inflated post-remittitur damages by using average gross sales price and including international sales | Court held district court abused discretion on disgorgement calculation; remitted disgorgement to $98,441.23 plus $18,534 lost profits = $116,975.23; ordered damages-only new trial if Unicolors rejects |
| Award of attorneys’ fees | Unicolors: prevailing party entitled to fees given willfulness and defendant’s litigation conduct | H&M: fees unwarranted given outcome and defenses | District court did not abuse discretion awarding fees; H&M litigated unreasonable claims (e.g., repeatedly relying on Chinese registration without proving link at trial) |
Key Cases Cited
- Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022) (Supreme Court: § 411(b) excuses inaccuracies caused by mistakes of fact or law)
- Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140 (9th Cir. 2019) (prior Ninth Circuit view on § 411(b) knowledge of law vs fact, abrogated here)
- DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616 (7th Cir. 2013) (discusses analysis of § 411(b) and counsel of caution re: Register referral)
- Roberts v. Gordy, 877 F.3d 1024 (11th Cir. 2017) (materiality inquiry via request to Register of Copyrights under § 411(b)(2))
- Urantia Found. v. Maaherra, 114 F.3d 955 (9th Cir. 1997) (fraud-on-the-Copyright-Office doctrine and protection for inadvertent mistakes)
- Urban Outfitters, Inc. v. ???, 853 F.3d 980 (9th Cir. 2017) (discusses striking similarity and inference of copying)
- Oracle Corp. v. SAP AG, 765 F.3d 1081 (9th Cir. 2014) (remittitur must reflect maximum amount sustainable by the proof)
- Dimick v. Schiedt, 293 U.S. 474 (1935) (remittitur purpose: preserve jury verdict while removing excess)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (discretionary nature of attorney’s fees in copyright cases)
- Skidmore ex rel. Randy Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020) (en banc) (review of jury instructions and harmlessness standard)