On June 1, 2021, the U.S. Supreme Court granted certiorari in Unicolors, Inc. v. H&M Hennes & Mauritz, LP. The Court agreed to resolve whether 17 U.S.C. § 411(b) requires a district court to refer a matter to the Copyright Office where there is a claim the copyright registration holder made a knowing misrepresentation to the Copyright office in obtaining the registration, but there is no indicia of fraud or material error by the copyright holder. H&M has asked the Court to interpret the statute as requiring referral merely upon a showing of knowing misrepresentation in the subject copyright registration, without requiring any proof of intent to defraud.
Unicolors, Inc. is a fabric designer. In February of 2011, Unicolors applied for a group Copyright Application, seeking to register a bundled collection of 31 designs (a practice used to reduce copyright registration fees). The group application indicated that all 31 designs were concurrently first published as a collection on January 15, 2011. Unicolors obtained a copyright registration for the 31 designs. However, nine of these designs were designated as “confined” (i.e., dedicated solely to one customer) and had not been published with the others on January 15, 2011. Therefore, Unicolors’ statement to the Copyright Office about the publication date was inaccurate.
In April of 2016, Unicolors sued H&M alleging copyright infringement on one of the non-confined designs. After a jury trial, H&M was found to have infringed Unicolor’s copyright. However, the Ninth Circuit overturned the verdict on the basis that the case should have been referred to the Copyright Office in light of the knowingly inaccurate statement about the publication date.
Specifically, 17 U.S.C. §411(b)(2) provides that where knowingly inaccurate information is included in an application for copyright registration, “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.” There is currently a circuit split as to what the knowingly inaccurate standard requires: the 9th Circuit does not require a showing of “intent-to-defraud” the Copyright Office while the 11th Circuit requires a showing of “intentional or purposeful concealment of relevant information” or “fraud on the Copyright Office.” It appears the Supreme Court will resolve the circuit split and determine whether referral to the Copyright Office is required in the absence of an indicia of fraud. This case is important to follow because it may broaden the pathway for invalidating copyrights where the applicant made a knowingly inaccurate statement to the Copyright Office.