Attorney Steve® Copyright Law Essentials - Copyright Section 411 Filings and what you need to know (case law examples).
If you or your company are sued in federal court for copyright infringement, and you learn there are potential issues regarding the validity of the copyright (for example, the alleged copyright holder intentionally violated a rule of registration) you can seek to have your District Court Judge serve an order on the Copyright office to see if the registration would have been approved, IF, the copyright office had knowledge of the alleged defect. If they copyright office says “No, we would not have granted the registration had we known of the defect, then, the copyright may be determined to be invalid, depriving the federal court of its jurisdiction to hear the case since a federal registration is required as a pre-requisite to filing a lawsuit. This blog discusses the “411 filing” that seeks to invalidate the Plaintiff's copyright.
How the process works
From the United States Copyright Office website:
Section 411(a) and 411(b) of the Copyright Act each define circumstances where the Register of Copyrights must be notified of civil copyright lawsuits so that he or she may participate in the case.
Section 411(a) provides that copyright claimants who were denied registration by the Copyright Office must inform the Register when they initiate a lawsuit so that the Register can become a party to the civil action with respect to the issue of registration of the copyright claim.
Section 411(b) provides that if a party in a copyright infringement lawsuit alleges that a certificate of registration issued by the Copyright Office contains knowingly inaccurate information, then a court shall ask the Register to advise the court whether if the Register knew of that inaccuracy, he or she would have refused registration.
Unicolors Inc. v. H&M Hennes & Mauritz, L.P., No. CV 16-02322-AB-SKx, 2021 U.S. Dist. LEXIS 160223, at *2-4 (C.D. Cal. Aug. 20, 2021)
In its opinion, the Ninth Circuit remanded "with instructions to submit an inquiry to the Register of Copyrights asking whether the known inaccuracies contained in the [No. VA 1-770-400] Registration application[,]" as described in the opinion, "if known to the Register of Copyrights, would have caused it to refuse registration." Unicolors, Inc., 959 F.3d at 1200. Following the Ninth Circuit's instruction, the Court referred two inquiries to the U.S. Copyright Office ("USCO"), (Dkt. No. 303, 305), requesting a response on or before June 18, 2021.
Now, Plaintiff files the instant Request which notifies this Court of the U.S. Supreme Court's grant of certiorari to resolve the proper standard under 17 U.S.C. § 411(b)(1)(A) for determining whether inaccurate information in a copyright registration was "included . . . with knowledge that it was inaccurate." The Supreme Court's grant is limited to Question 1 of Plaintiff's petition: "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?" Request at 1 (citing Request, Exh. 1). In light of this grant, Plaintiff requests that this Court continue the date by which a response is requested from the USCO to this Court's referral.
This Court finds that whether a response from the USCO is necessary depends on whether the Supreme Court finds that a referral to the USCO was appropriate under § 411 in the first instance. Thus, in exercise of this Court's discretion to manage its own affairs, the Court finds good cause to continue the response date until the Supreme Court decides this issue. Link v. Wabash R. Co., 370 U.S. 626, 630-31, 82 S. Ct. 1386, 8 L. Ed. 2d 734 (1962). Continuing the response date will not prejudice either party and it will more importantly conserve the resources of the USCO, the parties and this Court. Any risk of harm is outweighed by the interests of efficiency and judicial economy that will be served by continuing the response date.
Accordingly, Plaintiff's Request is GRANTED. The Court hereby CONTINUES the USCO response date to a to-be determined date after the Court notifies the USCO of the Supreme Court's decision. Depending on the decision, the Court may withdraw its referral to the USCO, advise the USCO of the new response date, or take other action as the Court deems appropriate and in line with any Ninth Circuit or Supreme Court instructions.
In order to permit the Court to monitor this action, the Court orders the parties to file periodic status reports. The first such report is to be filed on December 15, 2021. Successive reports shall be filed every 90 days thereafter. Each report must indicate on the face page the date on which the next report is due. The Court further ORDERS that within fourteen days of the Supreme Court's decision, the parties shall file a notice of the decision with the Court.
The Court hereby submits the attached letter to Ms. Smith via U.S. mail (address: Library of Congress, 101 Independence Avenue, SE, Washington, D.C. 20540) and via email in accordance with 37 CFR 205.14. The Clerk of the Court is hereby directed to serve the General Counsel and Associate Register of Copyrights with a copy of this Order and the letter attached hereto via U.S. mail and email.
GIL JEON, Plaintiff, vs. BEN ANDERSON, ET AL., Defendants
On December 21, 2018, pursuant to 17 U.S.C. § 411(b)(2), the Court requested advice from the Acting Register of Copyrights (the “Acting Register”)1 by February 1, 2019, on the following questions (the “Request”): A) Would the Register of Copyrights have rejected Plaintiff's Registration No. VAu 1-292-317 for 2-dimensional artwork in its entirety if, at the time of the application, the Register of Copyrights had known that although Plaintiff had characterized the works as an unpublished collection, Plaintiff previously had published works PP-2641, PPFG-0001, PPBT-0001, SLND0001, PPMR-0001, and PWWB-0001? B) Would the Register of Copyrights have rejected Plaintiff's Registration No. VAu 1-292-321 for 2-dimensional artwork in its entirety if, at the time of the application, the Register of Copyrights had known that although Plaintiff had characterized the works as an unpublished collection, Plaintiff previously had published works BP-0042, BP-0051, BP-0078, BPLU-0001, BPRF-0001, BPMC-0001, BPHR-0001, BPG-0001, and BP0244?
After it received the applications, the Office had questions regarding the basis for registration.4 The Copyright Office examiner assigned to review the applications wrote Plaintiff to explain that while unpublished works may be filed in a single application, published works cannot be filed in a single application.5 Accordingly, the examiner asked Plaintiff to identify one work to register per application.6 The examiner also asked Plaintiff to clarify why he excluded “2-D artwork” in the applications.7 Plaintiff responded and asked the examiner to change the status of the works to “not published.”8 Plaintiff did not clarify why he excluded “2-D artwork” in the applications.
Based on Plaintiff's representations, the Office registered each collection as an unpublished collection with an effective date of registration (“EDR”)11 of August 11, 2017, and assigned registration numbers VAu 1-292-317 and VAu 1-292-321. The Office had no reason to question the representations provided by Plaintiff through correspondence and accepted them as true and accurate.12 After registering the collections, the Office sent Plaintiff a letter cautioning that the registrations extended only to the copyrightable works in Plaintiff's deposits.13 The Office also warned that the “scope of the registration[s] is limited to the extent that the applicant has satisfied applicable rules for filing as an unpublished collection” under 37 C.F.R. § 202.3(b)(4)(B).14 Finally, the Office advised that “[t]o the extent that a particular work has been improperly included within a collection . . . then the registration does not extend to that particular work.
An application for copyright registration must comply with the requirements of the Copyright Act set forth in 17 U.S.C. §§ 408(a), 409, and 410. Regulations governing applications for registration are codified in title 37 of the Code of the Federal Regulations at 37 C.F.R. §§ 202.1 to 202.21(2016). The principles that govern how the Office examines registration applications are found in the Compendium of U.S. Copyright Office Practices, Third Edition (“Compendium”).
In responding to the Court's questions, the Office applies the foregoing governing statutory and regulatory standards, and examining principles. Based on the foregoing governing statutory and regulatory standards, and its examining practices, had the Office been aware that the Works had been published prior to the date Plaintiff submitted its applications, the Office would have refused to register these works as part of an unpublished collection.
ANDREW M. LIEB, Plaintiff, v. KORANGY PUBLISHING INC. (d/b/a THE REAL DEAL) Defendant
RESPONSE OF THE REGISTER OF COPYRIGHTS TO REQUEST PURSUANT TO 17 U.S.C. § 411(b)(2) On April 14, 2022, pursuant to 17 U.S.C. § 411(b)(2), the Court requested advice from the Register of Copyrights (“Register”) on whether the U.S. Copyright Office (“Copyright Office” or “Office”) would have refused registration had it known of Plaintiff Andrew M. Lieb's “failure to identify the previously published material upon which the HuffPost Article was based, i.e., the Dan's Papers Article.”1 The Register hereby submits her response. Based on the legal standards and examining practices set forth below, the Office would not have registered the article claimed in the TX0007932377 registration (the “HuffPost Article”) if it had known that the article was based on a virtually-identical, previously-published work (the “Dan's Papers Article”), which the applicant did not disclose to the Office. The Register notes that her conclusion regarding the TX0007932377 registration does not bar Plaintiff from filing a new application to register his original article, referred to by the Court as the Dan's Paper Article.
A derivative work is a work that is “based upon one or more preexisting works” or comprises “editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship.” For derivative works, the Copyright Act requires that an application for registration shall include “an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered.” Identifying the new or revised material the author has contributed to a work and any material that is not claimed “is essential to defining the claim that is being registered” and “ensures that the public record will be accurate.”
At the time that Plaintiff applied to register the HuffPost Article, COMPENDIUM II required an application for a derivative work to identify preexisting and new or revised material if the derivative work incorporated “substantial amounts of previously registered, previously published, or public domain material.” It defined “substantial” to mean that the preexisting material represents, “in relation to the work as a whole,” a “significant portion of the work.” When examining an application for registration of a derivative work, the Office reviews whether the work contains new authorship with a sufficient amount of original expression to satisfy the requirements for copyrightability. This is the same standard as that required for a copyright in any other work. The author must “contribute something more than a ‘merely trivial' variation.” Thus, “the key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the [preexisting] work in some meaningful way.”18 If granted, a registration for a derivative work covers only the new creative expression added by the author, not the expression in the preexisting work.19 Accordingly, the Office will register multiple versions of a published work, provided that each version contains a sufficient amount of copyrightable authorship that does not appear in the other versions, and if the applicant submits the requisite application, filing fee, and a deposit for each version.
Based on the foregoing governing statutory and regulatory standards, and its examining practices, had the Office been aware that the HuffPost Article, registration number TX0007932377, was based on a “virtually identical” previously published article, it would have refused to register the work. As discussed above, an applicant is generally required to identify any preexisting work or works that a derivative work is based on or incorporates and provide a general statement of the additional material covered by the copyright being registered.28 The guidance in COMPENDIUM II required an application for a derivative work to identify preexisting and new or revised material if the derivative work incorporated “substantial amounts of previously registered, previously published, or public domain material.
GOLD VALUE INTERNATIONAL TEXTILE, INC., Plaintiff, V. Case No. 2:16-cv-00339-JAK.-FFM SANCTUARY CLOTHING, LLC, et al., Defendants.
On March 24, 2017, pursuant to 17 U.S.C. § 41 l(b)(2), the Court requested advice from the Register of Copyrights ("Register") by May 1, 2017, on the following question (the "Request"): Would the Register of Copyrights have rejected Plaintiff's Registration No. VAu 1-151-509 for 2-dimensional artwork with respect to Design 1461? Thus, would it have done so if, at the time of the application, the Register of Copyrights had known that, although Plaintiff had characterized the work as an unpublished collection that included the 1461 Design, Plaintiff previously had published the 1461 Design when it sold to its customers fabric samples that used the 1461 Design, without limiting further distribution or sale by those customers? 1 The Register hereby submits her response.
Based on the foregoing governing statutory and regulatory standards, and its examining practices, had the Office been aware that the 1461 Design had been previously published, the Office would have refused registration of that work using the unpublished collections option because the work was registered as unpublished when in fact it had been published. The Office notes, however, that it is not unusual for the examiner to correspond with an applicant about factual assertions if the assertions appear to conflict with other information provided in the application materials.
Accordingly, if the Office becomes aware of an error at the time of application, such as whether the work was published, or has questions about facts asserted in the application, it provides the applicant an opportunity to correct the error or verify the facts within a specified period of time. If the applicant responds in a timely fashion to the satisfaction of the Office, the Office can proceed with the registration. The Register's response herein is thus premised on the fact that the error identified in the Court's question was not timely corrected through such a process.
STARBUZZ TOBACCO, INC., Plaintiff, vs. GOLD STAR TOBACCO, INC. ET AL., Defendants - RESPONSE OF THE REGISTER OF COPYRIGHTS TO REQUEST PURSUANT TO 17 U.S.C. § 411(b)(2)
On July 3, 2019, pursuant to 17 U.S.C. § 411(b)(2), the Court requested advice from the Register of Copyrights (the “Register”) by August 5, 2019, on the following questions (the “Request”): 1) Would the Register of Copyrights have refused Starbuzz's Copyright Registration No. VAu 1-313-168 for twodimensional artwork, registered on April 4, 2018, if the Register of Copyrights had known that:
Although Starbuzz did not identify the work as being a derivative work, Starbuzz knew that:
(i) GOLD STAR® word trademark(s), and (ii) GOLD STAR® logo trademark(s), which are owned by a third party, preexisted it?
(b) although Starbuzz did not identify the work as being a derivative work, Starbuzz had received authorization from the third party who owned the GOLD STAR® word and logo trademarks to create the Design incorporating those trademarks?
If the Register of Copyrights opines that it would have refused Starbuzz's Copyright Registration No. VAu 1-313-168, would the Register of Copyrights accept a supplementary registration by Starbuzz pursuant to §§ 1802.2; 1802.6(J) of the Compendium despite: a) Starbuzz failing to disclose the preexisting GOLD STAR® word trademark(s) and GOLD STAR® logo trademarks? b) Starbuzz failing to disclose the preexisting Canadian trademark?1 The Register hereby submits her response.
The Copyright Office will register a claim in a derivative work where the deposit material contains new authorship with a sufficient amount of original expression.10 In the case of derivative works, the “new authorship that the author contributed to the derivative work may be registered, provided that it contains a sufficient amount of original expression, meaning that the derivative work must be independently created and it must possess more than a modicum of creativity.”
The amount of creativity required for a derivative work is the same as that required for a copyright in any other work. The author must have “contributed something more than a ‘merely trivial' variation.”
Thus, “the key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the [preexisting] work in some meaningful way.”
A claim to register a derivative work that adds only non-copyrightable elements, such as mere coloring to a preexisting work is not entitled to copyright registration.
Ultimately, whatever the addition is, it must be independently protectable in order for the derivative work to be registered. A registration for a derivative work covers only the new creative expression added by the author, not the expression in the preexisting work.
The Copyright Office's regulations require applicants to make “[a] declaration . . . that the information provided within the application is correct to the best of [the applicant's] knowledge.”
Generally, the Office “accepts the facts stated in the registration materials, unless they are contradicted by information provided elsewhere in the registration materials or in the Office's records.”
The Office “generally does not compare deposit copy(ies) to determine whether the work for which registration is sought is substantially similar to another work.” In responding to the Court's questions, the Office applies the foregoing governing statutory and regulatory standards and examining principles. The Office notes that it is not unusual for an examiner to correspond with an applicant about factual assertions if the assertions appear to conflict with other information provided in the application materials. Accordingly, if the Office becomes aware of an error at the time of application, such as the omission of the statement regarding preexisting material or a date of creation that is inconsistent with a deposit, or has questions about facts asserted in the application, it provides the applicant an opportunity to correct the error or verify the facts within a specified period of time. If the applicant responds in a timely fashion to the satisfaction of the Office, the Office can proceed with the registration.
The Register's response herein is thus premised on the fact that any errors identified were not timely corrected through such a process Based on the foregoing statutory and regulatory standards, and its examining practices, the Register responds to the Court's questions as follows:
1) Had the Office been aware that the Starbuzz Work registered under VAu 1-313-168 was based on preexisting artwork owned by a third party, the Office would have refused to register the claim because the application failed to identify that preexisting artwork.
The Office would have refused registration even if the work made for hire author received authorization from the third party to incorporate the preexisting artwork.
Another Unicolors case
This case noted:
A “certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c)). Inaccuracies in the application do not necessarily invalidate a copyright registration. 17 U.S.C. § 411(b)(1). Rather, a copyright registration is only invalid if:
(1) the inaccurate information was included in the application for copyright registration with knowledge that it was inaccurate,
(2) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse the registration. Id. There need not be a showing of fraud to invalidate a registration pursuant to § 411(b), but only that the claimant included inaccurate information on the application “with knowledge that it was inaccurate.” Gold Value Int'l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140, 1147 (9th Cir. 2019), cert. denied, 140 S. Ct. 1294 (2020).
SERGE BUENO, Plaintiff, vs. IGAL BENHAMOU, et al., Defendants. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, CASE NO.: 2:21-cv-04595-JVS.
“In any case in which inaccurate information . . . 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.” 17 U.S.C. § 411(b)(2). Bueno alleges that Defendants infringed upon his copyrights in the Photographs by using them without his authorization. Compl., ¶¶ 24–33, 54–58. While Defendants concede that Bueno has a copyright registration for the Photographs, they argue that the registration is invalid because Bueno knowingly provided inaccurate information in the registration application, and that if the Register of Copyrights had known of the inaccuracy, registration would have been refused. Mot., Dkt. 32-1, at 7–11.
For these reasons, the Court finds that Bueno knew the information he provided on his Application as to Blue-Lit Walkway and JUNGL Interior was inaccurate or, at the least had no reasonable, plausible, or good faith basis to believe the information was correct. Accordingly, the Court requests the Register of Copyrights to advise the Court whether the following inaccurate information, if known, would have caused the Register of Copyrights to refuse registration:
1. At the time the Application was submitted, Blue-Lit Walkway had been published by Nortier.
2. Rosenberg, not Bueno, took the photograph JUNGL Interior and never transferred any rights in the photograph to Bueno.
3. Nortier, not Bueno, took the photograph Blue-Lit Walkway and had not transferred any rights in the photograph to Bueno at the time the Application was submitted.
The Clerk of Court shall send this Request to the Register of Copyrights, including as an exhibit the final court order for this motion.
Thus, in accordance with section 411(b)(2), the Court requested that the Register advise on “whether the Copyright Office would have refused registration had it known that at the time it was submitted,
(1) Blue-Lit Walkway had been previously published;
(2) Bueno did not author or hold any rights to Blue-Lit Walkway;
(3) Bueno did not author or hold any rights to JUNGL Interior.
The Copyright Act provides that “the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim” if it provides a deposit, application, and fee. An application for registration must include “the name of the copyright claimant,” “the name . . . of the author or authors,” and “if the copyright claimant is not the author, a brief statement of how the claimant obtained ownership of the copyright.”
Copyright Office regulations define a proper claimant as either the “author of a work” or “[a] person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.” When completing the “author” field of the application, the applicant should “only provide the name(s) of the author(s) who created the copyrightable material that the applicant intends to register.” Before the Office issues a copyright registration, it resolves several “essential issues,” including whether the correct author has been named and whether the claimant appears to have the right to claim copyright under the relevant requirements. If the registration specialist examining the application determines that “[t]he applicant is not authorized to register a claim in the work” or that “[t]he claimant named in the application is not a proper copyright claimant,” the Office “will refuse to register” the claim. Additionally, COMPENDIUM (THIRD) explains that only certain parties, including “[t]he author of the work[,] [t]he owner of all the exclusive rights in the work[,] [t]he owner of one or more—but less than all—of the exclusive rights in the work[,] or [a] duly authorized agent of any of the foregoing parties,” may submit an application to the Office.
The second and third parts of the Court's question ask whether the Register would have refused registration if she had known that “Bueno did not author or hold any rights to Blue-Lit Walkway . . . [and] JUNGL Interior” at the time the May 21, 2021 application was submitted. The Office addresses the Court's question in regards to each application below. First, had the registration specialist been aware that:
“Bueno did not author or hold any rights” to Blue-Lit Walkway and JUNGL Interior at the time he submitted the May 21, 2021 application, she would have asked him how he qualified to submit an application to register the copyright claim. As noted above, the only parties who are eligible to file an application for copyright registration are the author of the work, the owner of all or any exclusive right in the work, or an agent of the foregoing parties.
At the time Mr. Bueno submitted the May 21, 2021 application, it does not appear that he met the eligibility criteria to file an application to register a claim in either Blue-Lit Walkway or JUNGL Interior. According to the Court, Mr. Bueno did not author or, as of May 21, 2021, hold any exclusive right in Blue-Lit Walkway or JUNGL Interior. Nor was he an agent for any of the parties eligible to submit a copyright claim in the works. Had the registration specialist known that information, she would have asked Mr. Bueno whether he authored or owned exclusive rights in any of the remaining thirty photographs included in his group application. Upon confirmation that he lacked any authorship and/or copyright ownership, she would have excluded Blue-Lit Walkway, JUNGL Interior, and any other photographs for which he was not eligible to submit a claim, and included only the photographs for which he was eligible, if any. If, at the time of the May 21, 2021 application, Mr. Bueno was not eligible to obtain a registration for any of the photographs submitted for registration, the Office would have refused the entire registration.
Therefore, had the registration specialist known that Mr. Bueno did not become the copyright owner of Blue-Lit Walkway until November 20, 2021, and did not author or hold any rights to JUNGL Interior, she would have proceeded to approve the December 7, 2021 application for supplementary registration, which appears to correctly augment the original basic registration.
- Bueno v. Benhamou, No. 2:21-cv-04595 (C.D. Cal. June 30, 2022)
- Fashion Avenue Sweater Knits, LLC v. Poof Apparel Corp., No. 2:19-cv-06302-CJC-JEM (C.D. Cal. Feb. 8, 2021)
- Design Tech Homes, Ltd. v. RVision Homes, Ltd., No. H-18-4268 (S.D. Tex. Aug. 29, 2019)
- Starbuzz Tobacco v. Gold Star Tobacco No. 8-19-cv-00408-JVS-DFM (C.D. Cal. Aug. 5, 2019)
- Urban Textile, Inc., v. Fashion Avenue Knits, Inc., No. 16-cv-06786 (C.D. Cal. Dec. 29, 2017)
- SellPoolSuppliesOnline.com, LLC, v. Ugly Pools Arizona, Inc., No. CV-15-01856-PHX-BSB (D. Ariz. Sept. 8, 2017)
- Unicolors Inc. v. Burlington Stores Inc., No. 2-15-cv-03866 (C.D. Cal. Mar. 8, 2016)
Sample Request to Court to seek Copyright office determination
In accordance with the Ninth Circuit's order dated May 29, 2020 and the Mandate issued August 17, 2020, H & M Hennes & Mauritz LP (“H&M NY”) hereby respectfully requests the Court to submit the [Proposed] Request to the Register of Copyrights pursuant to 17 U.S.C. § 411 (b)(2) (“Request”) in connection with
Unicolors, Inc. (“Unicolors”) Copyright Registration No. VA 1-700-400 (“the ‘400 Registration”), along with a copy of this filing and a copy of the Ninth Circuit's May 29, 2020 order. Dkt 298 & Dkt 297, Unicolors, Inc. v. H&M Hennes & Mauriiz LP, 959 F3d 1194 (9th Cir. 2020) (“Order”).
Specifically, H&M NY asks the Court to “request the Register of Copyrights to advise the court whether the inaccurate information [contained in the ‘400 Registration], if known, would have caused the Register to refuse registration.” Order, 959 F.3d at 1200.
The Ninth Circuit held that the undisputed evidence adduced at trial showed that Unicolors registered a collection of thirty-one designs “as a single work” with its ‘400 Registration. Id. at 1198-1200. The Ninth Circuit also held the undisputed evidence demonstrates that these designs were not all “initially published as a singular, bundled collection,” in violation of 37 C.F.R. § 202.3(b)(4). As recognized in the Order, to register such a collection of published works as a “single work,” the works must have been “included in a single unit of publication.” Order, 959 F.3d at 1198-99.
The Ninth Circuit further held that the undisputed evidence at trial shows that Unicolors “included the inaccurate information ‘with knowledge that it was inaccurate.'” Id. at 1200 citing 17 U.S.C. 411(b)(1)(A). Accordingly, as directed by the Ninth Circuit, H&M NY respectfully requests that Court submit the Request to the Copyright Register pursuant to 17 U.S.C. § 411 (b)(2).
In practice, once 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 “to advise the court whether the inaccurate information, if known, would have caused [it] to refuse registration.” Id. § 411(b)(1)–(2).
In other words, 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.
Here was the request submitted to the Court during this case:
REQUEST TO THE REGISTER OF COPYRIGHTS PURSUANT 17 U.S.C. § 411(B)(2)
Unicolors, Inc. (“Unicolors”) brought this action for copyright infringement against defendant, H & M Hennes & Mauritz LP (“H&M NY”). The Complaint alleges that Unicolors created and owns a valid copyright in a two-dimensional textile design, which is titled EH101 (“EH101 Design”). Unicolors contends that EH101 is registered as a part of a collection of published works under Copyright Registration No. VA 1- 770-400 (“the ‘400 Registration”) that were all initially first published together on Saturday, January 15, 2011. In response to the claims, H & M NY challenged the validity of the ‘400 Registration. H&M NY contends that Unicolors knowingly submitted inaccurate information when Unicolors filed its application for the ‘400 Registration. Based on this premise, H&M NY argues that, but for the submission of this information, the Register of Copyrights would have refused registration. In a related order, the United States Court of Appeals for the Ninth Circuit has determined that Unicolors knowingly submitted inaccurate information in connection with its application for the ‘400 Registration (“Ninth Circuit Order”), attached hereto as Exhibit 1.
Specifically, the Ninth Circuit Order held that the thirty-one designs covered by the ‘400 Registration did not qualify as “single unit of publication” because all of the individual works of the collection “were not initially published as a singular, bundled unit. Unicolors, Inc. v. H&M Hennes & Maurtitz LP, 959 F.3d 1194, 1200 (9th Cir. 2020) (“Order”).
The Ninth Circuit's Order further concluded that the ‘400 Registration contained both “confined” works and regular works, in violation of 37 C.F.R. § 202.3(b)(4). Id. This is apparent from the face of the ‘400 Registration once Unicolors' naming protocol is understood. The name of twenty-two of the works in the ‘400 Registration, like EH101, have the prefix “EH;” the other nine works were named with the prefix “CEH.” Id. at 1196. Unicolors testified at trial that the “EH” designation stands for January 2011” and “CEH” “means a work was designed in January 2011 but was a confined work.” Id.
A confined work is one that Unicolors “made available only to individual, exclusive customers” and thus not initially published concurrently with the other twenty-two designs. Id. at 1200. Accordingly, all thirty-one designs in the collection were not first published together as a singular bundled unit on January 15, 2011. Id.
In light of the findings in the Ninth Circuit Order, pursuant to 17 U.S.C. § 411(b)(2), the Court requests a response by the Register of Copyrights to the following inquiry: Would the Register of Copyrights have rejected Unicolors' Registration No. VA-1-770-400 for 2-dimensional artwork (“the ‘400 Application”) if it had known that Unicolors included known inaccuracies for the dates of first publication in an attempt to save application fees? Specifically, would the Register of Copyrights have rejected the “400 Application if, at the time of the application, the Register of Copyrights had known that, although Plaintiff stated that all thirty-one works were first published on January 15, 2011, at least nine of the thirty-one works were not first published on that date.
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