Earlier this month, the Supreme Court granted Unicolors' request for review of the Ninth Circuit’s decision in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. (9th Circ. 2020). According to Unicolors, the Ninth Circuit’s decision, which considered the validity of Unicolors’ copyright registration for a group of works (see recap here), broke with its own precedent, and that of other circuits, by removing the intent-to-defraud requirement for copyright registration invalidation. H&M argues, however, that a showing of intent-to-defraud is not required to invalidate a copyright registration under 17 U.S.C. § 411 of the Copyright Act. Section 411(b)(2) states:
In any case in which inaccurate information [was included on the application for copyright registration with knowledge that it was inaccurate]…is alleged, 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.
The high court’s decision is expected to bring clarity to the issue of whether § 411 challenges to copyright registrations for including known inaccuracies require evidence of intent to defraud before referral to the Copyright Office.
In the meantime, copyright owners wishing to enforce their copyrights would be wise to double check the accuracy of the information listed in their copyright registrations before bringing suit, and consider whether any discovered errors in the registration may be corrected by obtaining a Supplementary Registration, or warrant obtaining a new copyright registration. Parties accused of copyright infringement may likewise want to verify the accuracy of information listed in asserted copyright registrations to consider whether their defensive strategy can incorporate an offensive copyright invalidation suit—at least in the courts in the Ninth Circuit.
This article appeared in the June 2021 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.