SCOTUS to Decide 17 U.S.C. § 411 Referral Questions


In 2016, Unicolors, Inc., sued H&M for selling clothing that infringed a Unicolor design. The group registration that Unicolors relied on included designs that had not been published as of the publication date set forth on the registrations. A copyright registration certificate is invalid if the registrant obtained it via the submission of false information that, if known to be false, would have resulted in a refusal to register. 17 U.S.C. §411(b)(2) requires that “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 the registration.”

H&M argued that the registration was not valid because not every design had been published as of the listed publication date. If the registration was invalid, H&M reasoned, then Unicolors was precluded from bringing suit. However, the court did not request an advisory opinion from the Copyright Office because there was no evidence of an intent to defraud—just evidence of a misunderstanding of the technicalities of Copyright law. A jury ultimately found for Unicolors (and awarded it nearly $1 million in damages), and H&M appealed the lower court’s ruling regarding the registration.

The Ninth Circuit concluded that the registration contained known inaccuracies (but no indicia of fraud) and reversed the district court’s judgment on the issue. The remand instructions required the district court to inquire with the Register of Copyrights on the issue and enter judgment for H&M if the Register of Copyrights indicates that the registration would have been refused.

The Supreme Court of the United States accepted review of the matter and will decide the question presented:

Whether the 9th Circuit erred in holding that 17 U.S.C. §411 required referral to the Copyright Office when there is no indication of fraud or material error related to the work at issue in the copyright registration?

While the practical impact of this case is undetermined, a copyright registration’s validity is vital to a copyright registrant’s ability to initiate a lawsuit. Now is a good time for copyright holders to audit their collective work registrations to determine whether all of the works have the same publication dates. If they do not, it may be necessary to file separate (and new) applications.

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.


About the Author: Louis T. Perry

Lou Perry represents clients in intellectual property litigation. A member of the firm’s trademark, copyright, advertising and media practice, Lou serves as trial counsel for clients in federal and state courts and the Trademark Trial and Appeal Board.

©2024 Faegre Drinker Biddle & Reath LLP | All Rights Reserved | Attorney Advertising.
Privacy Policy