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?
It seems like the question presented is a bit disingenuous. The facts described in your post (and indeed, the title) make clear that there was a fraud – the registrant lied as to whether all of the works were published together in a collection. A less deceptive question would be whether there is a de minimus standard for fraud on the Copyright Office. But that wouldn’t sound nearly as good.
Is there even a “toehold” to which to cling to for some type of “de minimus” fraud on the copyright office?
What colorable legal argument are you suggesting?
No, I think that the question was phased as it was because the concept of de minimus fraud couldn’t pass the red face test.
So, you are agreeing with me as I push back on your original post….
Neither here nor there, but after remittitur, Uni’s damages were around $266k, while its attorneys’ fees award was over $507k.
I have zero tolerance for such malfeasance – as petty as it may be.
I do wonder if there was legal counsel involved (can you say ethical violation?)
In Unicolors’ defense somewhat, this seems like more a mistake of legal interpretation than an obvious factual misrepresentation.
The petition notes that often registrations are submitted by non-lawyers, who may lack the ability to parse all the legal requirements. But it never says outright that Uni wasn’t using counsel for the registration at issue. It seems like a sympathetic point to bring up were it true, so maybe Uni was using counsel. Searching the Office yields numerous registrations for Uni, which makes me think it uses counsel and/or at least has some kind of formal system in place. If so, maybe it doesn’t get the benefit of the doubt even on legal questions after all, since it should know better as a repeat player.
Wondering why the Supremes took cert on this, I noted in the Petition’s “REASONS FOR GRANTING THE PETITION” the strong assertions that:
“The Ninth Circuit’s misinterpretation of 17 U.S.C. § 411(b) contravenes legislative and administrative guidance and … widened a dire circuit division that must be addressed.”
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