On June 01, 2021, the Supreme Court of the United States granted certiorari for a matter of first impression and to review a circuit split regarding Copyright Law. The petition was granted for the Unicolors, Inc. v. H&M Hennes & Mauritz, LP Lawsuit and the Supreme Court will hear argument next term as to whether the Ninth Circuit erred when it broke with its own prior precedent, precedent of other circuits, and of the United States Copyright Office.
In 2015, Unicolors, Inc. sued Swedish Fast Fashion Giant, well known as globally under the H&M brand name, for alleged copyright infringement of their 2011 clothing collection. Los Angeles based fabric designer, Unicolors, had been granted copyright protection for a published collection of thirty-one different fabric designs. The Copyright Office allows , separate and independent contributions to be assembled into a collective work for the purpose of registration, as long as the individual works have not been previously published or registered, the same party owns all works, and each work is sufficiently original. The Copyright Office’s fees for a collective work application are notably lower than filing an individual application for each work.s.
In the Central District of California, the Courtfound H&M guilty of copyright infringement, a decision which H&M quickly appealed to the Ninth Circuit Court of Appeals.. In the first Appeal, H&M argued that Unicolors’ registration was invalid because they knowingly applied for the copyright protection with the false information that the individual works were not all published at the same time. The Ninth Circuit reversed the District Court’s judgment of over $800,000.00 in damages and remanded the case for further proceedings. In its decision, the Ninth Circuit held that 17 U.S.C. Section 411 required referral to the United States Copyright Office even where there is no indication of fraud determining that the Central District of California had erred in requiring H&M to prove that Unicolors intentionally falsified their copyright application, despite evidnce that individual patterns had been sold to customers at different times.
Unicolors petitioned the Supreme Court to take up the following questions: (1) Did the Ninth Circuit err in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. § 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? and (2) Did the Ninth Circuit misapply the publication standard by both applying Copyright Office requirements that were not in place at the time of registration and analyzing publication as of the date of registration as opposed to the later registration application date, and, if so, did the evidence support referral to the Copyright Office? The Supreme Court of the United States has accepted the Plaintiff’s petition; however, they have limited the writ of certiorari to Question 1. The Supreme Court will not be addressing the question regarding publication standards but we will be looking to see what comes down from the Court in the October 2021 term regarding referral to the Copyright Office on questions of registrations that may be fraudulent.