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1 June 2020CopyrightRory O'Neill

Ninth Circuit weighs in behind H&M on fabric copyright appeal

A US federal appeals court has overturned a California fabric maker’s $780,000 copyright infringement win over Swedish fashion retailer  H&M.

In its  decision, issued Friday, May 29, the US Court of Appeals for the Ninth Circuit ruled that a lower court failed to properly consider potential inaccuracies in a copyright registration.

The dispute stems from a lawsuit brought by Los Angeles-based textiles company  Unicolors, which accused H&M of copying a design it first produced in 2011.

The US District Court for the Central District of California ruled in Unicolors’ favour, finding that H&M had deliberately copied the design on skirts and jackets it started selling in 2015.

H&M was ordered to pay out a total of $780,000 in damages and attorneys’ fees for wilfully infringing Unicolors’ IP. But the Swedish retailer has successfully challenged that verdict on the grounds that Unicolors’ copyright registration for the design shouldn’t have been issued in the first place.

Ruling on the appeal, the US Court of Appeals for the Ninth Circuit found that the lower California court had misinterpreted the law on copyrighting multiple works in a single registration.

The Swedish fashion brand had argued before the district court that Unicolors’ copyright registration (number VA 1-770-400) 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”.

The law on what exactly constitutes a “single unit” has never been clear, the Ninth Circuit acknowledged in its decision. In its earlier ruling, the district court held that single-unit registration requires merely that all works identified in the application be published on the same date.

But the Ninth Circuit has overridden this interpretation, 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. At a minimum, the confined works included in the ’400 Registration were initially made available only to individual, exclusive customers,” the decision read.

The case will now be sent back to the district court for further proceedings in line with the Ninth Circuit’s opinion.

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30 January 2020   Swedish fashion brand H&M has scored a victory in a 23-year-long trademark dispute with Adidas in the Netherlands over its use of a two-stripe design on sportswear.
Copyright
13 January 2021   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”.
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18 January 2021   California fashion brand Unicolors is suing UK retailer Boohoo for allegedly copying the design of a floral-patterned dress.