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

“Did the Ninth Circuit err * * * in holding that 17 USC § 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.”

Petitioner and Respondent became involved in a dispute over a textile design that Petitioner had copyrighted.  Petitioner filed suit in the Central District of California, where a jury found Respondent liable for willful infringement. On appeal to the Ninth Circuit, Respondent argued that the dispute should be referred to the Register of Copyrights under 17 USC § 411(b)(2).  The Ninth Circuit reversed, holding that the trial court was required to refer the matter to the Copyright Office without inquiring whether there is a sufficient basis for the office to refuse registration. The question before the Court asks whether “the Ninth Circuit err[ed] * * * in holding that 17 USC § 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.” Petitioner argues that the text of 17 USC § 411(b)(1)(A) requires that a challenger to copyright registration must show that the applicant knowingly provided inaccurate information to the Copyright Office. Petitioner further argues that the Prioritizing Resources and Organization for Intellectual Property Act of 2008 “codif[ied] the doctrine of fraud on the copyright office” in § 411(b). The doctrine was understood to mean that an inadvertent factual or legal mistake was insufficient to invalidate a copyright registration. Petitioner argues that Congress intended to adopt the doctrine whole cloth. Petitioner also contends that good-faith mistakes of law are always a defense when a statute requires “knowledge” of a circumstance and that mistakes are common on copyright application such that the Ninth Circuit’s rule invites “mischief” and creates “perverse incentives.”