Supreme Court To Hear Case Regarding When Providing Inaccurate Copyright Registration Information Affects A Registration's Validity

• Published date: 18 August 2021
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Haug Partners
• Author: Ms Laura Chubb

The Supreme Court has granted a petition for writ of certiorari in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. to determine whether invalidation of copyright registrations under Section 411(b) of the Copyright Act has an intent-to-defraud the Copyright Office requirement.¹ A valid copyright registration is a prerequisite to bringing an infringement suit in federal court. Bona fide errors on copyright registration applications are typically little cause for concern of invalidation, however, because sound policy dictates that 'intellectual property thieves' be barred from invalidating a registration solely because a checkbox was incorrectly marked on the application.² Indeed, Section 411(b) prescribes that a registration certificate is valid even with inaccurate information unless (i) the applicant had knowledge of the inaccuracy and (ii) that inaccuracy, if known, would have caused the Register of Copyrights to refuse registration.³ Further, when inaccuracy of a registration is alleged under Section 411(b), the court shall request that the Copyright Office advise on the issue of refusal.⁴ However, such a defense to invalidate a registration for inaccurate information is rarely brought because the registration certificate alone is usually sufficient to demonstrate validity.⁵ There is little doubt that Unicolors, fresh off of a victory in the Central District of California, was surprised when the Ninth Circuit reversed and remanded the case back to the district court to determine whether the Copyright Office would have refused its registration application for a collective work of fabric designs had it known of the inaccuracies alleged by H&M.⁶

Under the Copyright Act, authors of copyrightable works can utilize the collective work registration to save on costs because only one filing fee is paid for the protection of many different works published together. However, Copyright Office regulations prescribe that applicants of published works may only take advantage of a collective work registration for "all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same[.]".⁷ "Publication" is defined as the initial "distribution" or "offering to distribute" the work to the public by sale or other transfer of ownership.⁸

In 2011, Unicolors registered the design at issue as part of a single collective work registration consisting of thirty-one...