17 Jul Registration and Infringement Under the Copyright Act
Complications involving copyright law and registration, coupled with the fact that the law’s treatment of copyright formalities lacks consistency, can often lead to litigation. There is no question that businesses should hire experienced counsel to assist them when it comes to the copyright registration application process, and one recent Ninth Circuit opinion (which covers California) highlights why failing to do so can make for serious tragedies later on.
The case, Unicolors, Inc. v. H&M Hennes & Mauritz, LP, involved a copyright infringement action brought by Unicolors Inc. against H&M, alleging that H&M stole a design created by Unicolors in 2011 and printed it on the company’s clothing in 2015. At the lower court level, a jury found in favor of Unicolors based on the similarities between the two works. However, on appeal, the Ninth Circuit first had to decide whether Unicolors had a valid copyright registration for the 2011 design before examining whether there were similarities between the products because, in order to establish infringement, a party must first prove that they had ownership of a valid copyright (as provided via a registration certificate from the Register of Copyrights) and second that the defendant copied constituent elements of the work that are original (note that while registration is a requirement to file an action for copyright infringement, it is not required for copyright protection). In addition, if the registrant includes inaccurate information on their registration application, the copyright registration requirement is not considered to be satisfied under the law.
While Unicolors had applied for and obtained a copyright registration, their registration was for a single unit registration of 31 different designs in one single registration. The company chose to do one registration of many different designs instead of 31 different registrations for each separate design in order to save money. As a result, H&M, alleged that inaccurate information was included in Unicolors’ copyright application; specifically, that Unicolors used a single copyright registration to register 31 separate works, attempting to register a collection of works as a single unit even though those works were not “published,” or made available to the public, which is required in order to legally obtain that kind of registration.
The Ninth Circuit’s Decision Highlights Why Businesses Need Copyright Attorneys in Filing for Registration
When a defendant makes a claim the plaintiff included inaccurate information in its copyright application, the court is automatically required to request an opinion from the Register of Copyrights as to whether it would have refused registration had it known of the inaccurate information. The Ninth Circuit also pointed out the following important opinions its own previous copyright decisions, including that:
- Inaccuracies do not invalidate a copyright;
- An intent to defraud the copyright office by making misstatements in one’s application is not required for registration invalidation; and
- While a party may register a collection of published works as a single work in order to save money on filing fees, the works must have been “included in a single unit of publication” to do so, where “publication “essentially means making copies of the work available to the general public.
This is where Unicolors should have worked with a copyright law attorney during its application process, as doing so likely would have prevented the current legal predicament that the company found itself in. Had the company worked with a copyright attorney, they would have realized that they had an option to properly register their designs while also saving money by registering the designs in a single “unpublished collection“ registration. Instead, the company effectively listed its design as having been published when it was in fact unpublished.
Because the district court needed to make a request from the Register of Copyrights regarding whether it would have refused registration had it known of these inaccuracies, the case was remanded in order to complete this requirement.
Contact Our California and New York Copyright and Trademark Litigation Attorneys with Any Questions
Like other copyright infringement cases, the mistakes made by Unicolors, Inc. highlight why it is so important for companies to work with licensed intellectual property litigators who have specific experience in copyright infringement litigation so that they know exactly what needs to be done during the registration process in order to prevent litigation later on. To learn more about the copyright legal services our experienced California and New York attorneys provide, contact our office today.