In order to enforce copyright protection, US copyright law imposes a registration requirement for US works; in some cases, several works can be grouped together in a single registration to reduce the costs imposed upon the registrant. What happens when the works in such a registration were not published on the same day? Last week, the 9th Circuit Court of Appeals clarified the rule for treating several works as a “single unit of publication” for registration purposes in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.; the Court ruled that the works comprising such a registration must have first been made available to the public as a “singular, bundled collection.”
Background – Registration
Although the US joined the Berne Convention in 1989, this country took a restrictive approach to implementation. The Article 5(2) protection of the absence of formalities applies only to non-US works that originate from Berne member nations. US works and works originating from non-Berne member nations are subject to requirements of deposit and registration before enforcing copyright protections for a given work.
The registration requirement includes payment of a fee, determined by factors such as the type of work or works to be registered and the type of author. In order to reduce the cost of registration, several works may be registered through a single application – subject to a single fee – if the collection of works qualifies as a “single unit of publication.” The collection of works must satisfy six narrow criteria to be eligible for such a registration:
- All of the copyrightable elements are recognizable as self-contained works.
- All of the works claimed in the application are first published as a single unit on the same date.
- The copyright claimant for all of the works claimed in the unit is the same.
- The unit, and all of the works within the unit, is distributed in a physical format.
- The unit contains an actual physical copy or phonorecord of all the works.
- The unit is distributed to the general public.
Background – District Court
Unicolors produces graphic designs to be reproduced on textiles and fabrics. The company markets those designs to clothing manufacturers; although some designs are marketed publicly, others are created specifically for and marketed exclusively to a single customer for at least a few months. The latter are known as “confined” works. Publicly marketed works are displayed in the Unicolors showroom, while confined works are withheld from the showroom until after the exclusivity period; the confined works are shown only to Unicolors salespeople and the exclusive customer.
This case concerned the EH101 design (pictured left), which was registered in 2011. The design was registered as part of a collection of 31 designs registered as a “single unit of publication” registration. The President of Unicolors indicated that the company opted for a single registration, rather than individual registrations for each design “for saving money.” The collection consisted both of confined works and publicly-available works – all designed in January of 2011; the design at issue was publicly available, as indicated by the “EH” prefix in accordance with Unicolors’ naming convention.
In 2015, H&M, a company that operates a large chain of clothing stores, began selling jackets and skirts bearing a graphic design, “Xue Xu.” The following year, Unicolors filed suit against H&M, alleging copyright infringement of the EH101 design. A jury found for Unicolors, awarding $817,920 in disgorged profits and $28,800 in lost profits for wilful copyright infringement. Unhappy with this decision, H&M moved for judgment as a matter of law, and alternatively, for a new trial; the company alleged that Unicolors’ “single unit of publication” registration was invalid because the designs registered were not published on the stated publication date.
Rather than granting H&M’s motions, the district court remitted the damages to $266,209.33, and entered a judgment against H&M. The district court ruled that Unicolors’ registration was valid, because Unicolors lacked an intent to defraud the Copyright Office and that the designs comprising a single unit of publication need not be published on the publication date, but merely “concurrently.” Subsequently, H&M moved for attorney’s fees and costs, which the district court granted “in the amounts of $508,709.20 and $5,856.27, respectively.” H&M appealed to the 9th Circuit Court of appeals regarding the validity of Unicolors’ copyright registration and the award of attorney’s fees.
9th Circuit Decision
Considering first the appeal of the judgment for Unicolors, the 9th Circuit addressed the role of copyright registrations in copyright infringement actions. A registration (or refusal of registration) is a prerequisite to bring a suit alleging copyright infringement. The Court noted that mere receipt of a registration ordinarily suffices, unless registered by the knowing inclusion of inaccurate information which, “if known by the Register of Copyrights, would have caused it to deny registration.” When inaccurate information is knowingly included, Section 411 of the Copyright Act calls for the court to request the advice of the Register of Copyrights regarding the materiality of the inaccuracy.
Citing to Section 411 of the Copyright Act, the 9th Circuit derived a three part test which, if satisfied, triggers the court’s requirement to seek the advice of the Register of Copyrights regarding “whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.”
[O]nce a defendant alleges that (1) a plaintiff’s certificate of registration contains inaccurate information; (2) ‘the inaccurate information was included on the application for copyright registration’; and (3) the inaccurate information was included on the application ‘with knowledge that it was inaccurate,’ a district court is then required to submit a request to the Register of Copyrights … courts may not consider in the first instance whether the Register of Copyrights would have refused registration due to the inclusion of known inaccuracies in a registration application.
The district court did not request the advice of the Register of Copyrights, instead ruling that the designation of “single unit of publication” was not a known inaccuracy sufficient to deny registration. The district court based its ruling on two determinations: (1) Unicolors lacked an intent to defraud the Copyright Office, and (2) that it was not inaccurate to designate these designs as a single unit of publication, although the designs were first made available to the public on a different date than publication date indicated on the registration. Instead, the district court required H&M to show that the works were not published on the same day, regardless if the publication date differs from the dated indicated on the registration; H&M could not meet this burden.
On appeal, the 9th Circuit rejected the notion that intent to defraud the Copyright Office is required to be “knowingly” including inaccurate information in an application. Rather than indicating a culpable state of mind or requiring a knowledge of the law, knowing merely refers to the awareness of a factual inaccuracy. There is no requirement of an intent to defraud the Copyright Office.
Lastly, 9th Circuit ruled that a “single unit of publication” for registration purposes refers to a collection of works that are first published as a “singular, bundled unit.” Rather than considering the date of publication, the 9th Circuit definition refers to the relationship of the amalgamated works forming the unit. The “single unit of publication” registration is reserved for the unification of separate works that could be self-contained. Considering that some of Unicolors’ works are confined and remain exclusive to one customer, while others are made available to the general public, a collection of the two does not satisfy the definition of a “single unit of publication.”
Because Unicolor admits to knowing that some of the works in the registration were confined works, while others were generally available, Unicolors knew that the designation of “single unit of publication” was an inaccuracy in the application. Thus, the registration contains known inaccuracies, and the district court must seek advice from the Register of Copyrights regarding the materiality of the inaccuracies. The 9th Circuit reversed the lower ruling and remanded for such a proceeding.
Comment
As far as this Kat is concerned, the 9th Circuit provided a more appropriate standard for the “single unit of publication” designation. Although the statute requires “concurrent” publication, concurrence is more aptly applied to the nature of publication than simply to the date of publication. First, the term “single unit” indicates the unification of independent works, rather than mere temporal concurrence of the works. Second, the Copyright Office criteria require that “[a]ll of the works claimed in the application are first published as a single unit on the same date.” Were the statutory intent to create a mechanism to register works that were merely published on the same date, the mechanism would stand alone, rather than arise as one criteria of many for “single unit of publication” registrations.
