On November 8, 2021, the United States Supreme Court will hear a case to determine the scope of 17 U.S.C. §411, which prevents the filing of a lawsuit for copyright infringement without a valid copyright. The Court will also consider the meaning of the Copyright Act’s publication standard, deciding whether separate sales constitute separate publications.

17 U.S.C. § 411(b) states that a copyright certificate of registration is satisfactory under the Copyright Act, “regardless of whether the certificate contains any inaccurate information,” unless (1) the applicant included the information with knowledge of its inaccuracy, and (2) the inaccuracy, if known, would have caused the Register of Copyrights to refuse the registration. Part (b)(1) of the statute came from The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO IP Act of 2008, H.R. 4279, S. 325,  Pub.L. 110–403) commonly referred to as the “PRO IP Act,” an amendment to the Copyright Act which clarified that knowledge of inaccuracies in a copyright application can make it invalid.

Unicolors filed suit in the U.S. District Court for the Central District of California in 2016, claiming H&M infringed its copyright by selling two clothing items made from Unicolors’ copyrighted fabric design. Unicolors, Inc. v. H&M Hennes & Mauritz, LP 2:2016-cv-02322 (C.D.Cal.). The District Court ruled in favor of Unicolors, holding that H&M must show that Unicolors intended to deceive the Copyright Office in its copyright application which supported the infringement suit. H&M appealed, claiming the court erred in its decision because the relevant Unicolors copyright was invalid. The basis for H&M’s argument lies in the assertion that Unicolors’ copyright registration contained false information – namely, 31 designs included in the single-unit registration were not published at the same time, although Unicolors claims that they were. This distinction is important because if the designs were published together, they could be an appropriate “single unit” for a collective copyright application and registration under the Copyright Act’s publication standard. However, H&M argues that Unicolors sold a number of the patterns at different times, therefore making the single-unit registration invalid.

In May, 2020, the Ninth Circuit Court of Appeals reversed the District Court’s decision, determining that the lower court erred by requiring H&M to show an intent to defraud the Copyright Office. See Unicolors, Inc. v. H&M Hennes & Mauritz, LP, 959 F. 3d 1194 (9th Cir. 2020). The Ninth Circuit stated that just the “knowing” inclusion of inaccurate information in a copyright application can invalidate a registration, and a showing of intent is not required. The Ninth Circuit also reversed the lower court on the single publication issue, holding that a collection of works does not qualify as a single unit of publication unless all individual works of the collection were first published as a singular, bundled collection.

The Ninth Circuit remanded the case to the District Court to determine whether the inaccuracies in Unicolors’ application in fact made the registration invalid. Under 17 U.S.C. § 411(b)(2), “[i]n any case in which inaccurate information… is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have cause the Register of Copyrights to refuse registration.”

Unicolors filed a petition of certiorari on January 4, 2021, asserting the “case is ripe for review because it is a matter of first impression for this Court and involves a clear intra-circuit conflict in the application of a federal statute.” Unicolors argues that the PRO-IP Act has been interpreted to have a fraud standard in courts across the United States, and that this question has created a split between the Eleventh and Ninth Circuits. Unicolors also argues that the Ninth Circuit misapplied the publication standard for copyright applications when it determined that a single-unit registration requires a group of works to be “offered for sale as part of a ‘bundled collection.’” Unicolors claims that the publication date and sale date are different, and that “[c]opyrighted works can therefore first be published together without ever being sold.” Petition for Writ of Certiorari, Unicolors, 2:2016-cv-02322 (C.D.Cal.) (citing Am. Vitagraph, Inc. v. Levy 659 F.2d 1023, 1027 (9th Cir. 1981)).

In sum, Unicolors brings the following questions before the Court: “(1) Did the Ninth Circuit err in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration?” And “(2) Did the Ninth Circuit misapply the publication standard by both applying Copyright Office requirements that were not in place at the time of registration and analyzing publication as of the date of registration as opposed to the later registration application date, and, if so, did the evidence support referral to the Copyright Office?” Petition for Writ of Certiorari, Unicolors, 2:2016-cv-02322 (C.D.Cal.).

The decision should resolve the circuit split on the knowledge standard enumerated under the PRO IP Act and clarify the Copyright Act’s publication standard. Copyright applications on their face can appear relatively straightforward to complete. Whatever the outcome, this case underscores the need for care and precision in filing such applications. Lutzker & Lutzker is available to assist with your copyright registrations and will keep you updated on the Supreme Court case. Stay tuned.