Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.

A party seeking to invalidate a copyright registration under § 411(b) must demonstrate that (1) the registrant submitted a registration application containing inaccuracies, (2) the registrant knew that the application failed to comply with the requisite legal requirements, and (3) the inaccuracies in question were material to the registration decision by the Register of Copyrights. Roberts v. Gordy, 877 F.3d 1024, 1030 (11th Cir. 2017). A copyright registration certificate is relevant evidence of the validity of the copyright in question. United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). A remittitur must reflect the maximum amount sustainable by the proof. But where the method the jury used to calculate its award can be ascertained by a review of the verdict, the judge is responsible for preserving the jury’s findings to the greatest extent possible by using that method of calculation in determining the remittitur amount.

Unicolors sued H&M after H&M sold clothing (“the Xu Xue design”) resembling a print Unicolors copyrighted in 2011 with “the ‘400 Registration.” The ‘400 Registration was a single-unit registration copyrighting a collection of works. This case returned to the 9th Circuit on remand from the Supreme Court with instructions to determine whether the safe-harbor provision provided in 17 U.S.C. § 411(b) excused the inaccuracy in the ‘400 Registration. A party seeking to invalidate a copyright registration under § 411(b) must demonstrate that (1) the registrant submitted a registration application containing inaccuracies, (2) the registrant knew that the application failed to comply with the requisite legal requirements, and (3) the inaccuracies in question were material to the registration decision by the Register of Copyrights. Roberts v. Gordy, 877 F.3d 1024, 1030 (11th Cir. 2017). Although the ‘400 Registration contained an inaccuracy because it was a single-unit registration encompassing a collection of works, H&M did not establish that Unicolors knowingly failed to comply with the single unit requirement because the interpretation of that requirement was unsettled when the application was submitted. Therefore, the safe-harbor provision stated in § 411(b) excused the inaccuracy in the ‘400 Registration.

On appeal, H&M argued that the district court erred by excluding the registration of the Xue Xu design as “both irrelevant and prejudicial.” A copyright registration certificate is relevant evidence of the validity of the copyright in question. United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). While H&M was correct that the registration of the Xu Xue design was relevant, the district court did not abuse its discretion in excluding the evidence as prejudicial. Therefore, the error was harmless and did not warrant reversal. 

H&M also challenged the district court’s remittitur calculation, arguing the district court erred by impermissibly inflating Unicolors' post-remittitur damages after relying on the “maximum recovery rule.” A remittitur must reflect the maximum amount sustainable by the proof. But where the method the jury used to calculate its award can be ascertained by a review of the verdict, the judge is responsible for preserving the jury’s findings to the greatest extent possible by using that method of calculation in determining the remittitur amount. Therefore, the district court erred in its calculation because the amount could not be sustained using the jury’s findings of what Unicolors proved at trial. The Court ordered a correction on remand to award the proper remittitur.

Affirmed in part, vacated in part, and remanded with instructions.