by Dennis Crouch
The Supreme Court has granted certiorari in the procedural copyright case of Unicolors, Inc. v. H&M Hennes & Mauritz. Anyone who has registered copyrights know that the Copyright Office has a set of seemingly arcane and odd rules that often arise when registering a collection or series of works. A copyright owner that fits within the rules can save quite a bit on copyright office fees. In this case, the copyright owner seemingly lied to get a lower fee. In particular, during January 2011 Unicolors created 31 different fabric designs. It published 22 of those together as a collection, but the other 9 were not published by Unicolors. It then submitted all 31 to the copyright office and indicated that they had all been first published as a bundle. This saved them a few hundred dollars in governmental fees. Although I do not know, I believe that many copyright holders have taken similar steps.
Later Unicolors sued H&M for copyright infringement and H&M was found liable. H&M had unsuccessfully asked the district court to invalidate the copyright registration based upon inaccuracies in the registration. On appeal, the Ninth Circuit reversed — ordering the district court to refer the case to the Copyright Office under 17 U.S.C. § 411(b). Section 411(b) begins with a statement that a copyright registration is generally valid as a precursor to enforcement except where the registrant knowingly included “inaccurate information” that “would have caused the Register of Copyrights to refuse the registration.” A district court faced with this situation is instructed by the code to refer the case to the Copyright Office for advice.
In 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 caused the Register of Copyrights to refuse registration.
17 U.S.C. § 411(b)(2).
But, as noted above, what have here is a relatively minor, but still knowing inaccuracy in the registration. And the question for the Supreme Court is basically whether the statutory statement requiring referral “in any case in which inaccurate information” is submitted to the copyright office include some implicit materiality standard? Here is roughly the question presented:
Whether 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?