13 January 2021Copyright

Unicolors seeks SCOTUS review of H&M copyright case

Fashion company Unicolors has asked the US Supreme Court to weigh in on its copyright dispute with H&M, which Unicolors described as a “wilful copyright infringer”.

Unicolors filed the petition for a writ of certiorari on January 4, and it was placed on the docket on January 8.

According to Los Angeles-based Unicolors, H&M had copied a design that Unicolors first produced in 2011 (copyright registration number VA 1-770-400) and featured that design on skirts and jackets sold from 2015.

In 2018, the US District Court for the Central District of California found in favour of Unicolors and ordered H&M to pay $780,000 in damages and attorneys’ fees for wilful copyright infringement.

H&M appealed against this decision, arguing that Unicolors’ copyright registration for the asserted design should not have been granted in the first place. The retailer claimed that Unicolors’ copyright registration was inaccurate because it covered 31 unrelated designs.

Under US copyright law, parties can register multiple works together and pay a single filing fee if the works form a “single unit”. Here, the district court had held that single-unit registration requires that all works identified in the application be published on the same date, which Unicolors had done.

However, in May 2020 the US Court of Appeals for the Ninth Circuit overturned this decision, instead ruling that a “single unit” should be taken to mean a “collection of works in a singular, bundled collection”.

“It is an inaccuracy for a registrant like Unicolors to register a collection of works (such as the works identified in the ‘400 registration) as a single-unit publication when the works were not initially published as a singular, bundled collection,” the Ninth Circuit said.

The Ninth Circuit upheld H&M’s appeal against the lower court’s ruling and, in August 2020, denied Unicolors’ petition for a rehearing en banc.

Last week, Unicolors filed a petition for a writ of certiorari at the Supreme Court, claiming that the Ninth Circuit’s decision “is ripe for review”.

Unicolors said that its copyright registration included a group of self-contained works that were first offered for sale concurrently, though not as a bundle, and that no court had ever before specified a “’bundling’ requirement”.

The petition referred to the lack of uniformity between the courts in different circuits in relation to the application of 17 USC § 411(b), which covers the requirements for the invalidation of copyright. It asked the Supreme Court to “resolve the circuit division and to provide clarity” in this area.

Unicolors claimed that the statute should be interpreted as allowing the invalidation of copyright where there has been fraud or bad faith. Unicolors noted that other courts, including the US Court of Appeals for the Eleventh Circuit, interpret the law in this way.

However, the Ninth Circuit “misinterpreted” the law to find that an inaccuracy in the copyright registration document is sufficient to allow invalidation, Unicolors said, even if no fraud or bad faith existed.

The Ninth Circuit’s determination on this allegedly departed from “administrative and legislative history, as well as the leading copyright treatise,” all of which necessitate that fraud or bad faith is a requirement of invalidation under the statute.

Unicolors said that guidance from the Supreme Court is “necessary” to provide clarity in this area, as the Ninth Circuit’s decision to vacate judgment against a “wilful copyright infringer based on an immaterial and good-faith technical error in its copyright registration contravened established law”.

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More on this story

1 June 2020   A US federal appeals court has overturned a California fabric maker’s $780,000 copyright infringement win over Swedish fashion retailer H&M.
18 January 2021   California fashion brand Unicolors is suing UK retailer Boohoo for allegedly copying the design of a floral-patterned dress.
2 June 2021   The US Supreme Court has agreed to review a copyright dispute between fabric designer Unicolors and retailer H&M, during which it will assess a pressing question of whether inaccuracies can invalidate copyright registrations.