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Two Turntables, No Microphone: Using Technical Diagram Is Not Copyright Infringement

by | Dec 10, 2020 |

The US Court of Appeals for the Sixth Circuit affirmed a district court’s summary judgment grant with respect to a copyright infringement claim related to technical drawings, and reversed the court’s summary judgment grant related to software source code. RJ Control Consultants, Inc. et al. v. Multiject, LLC, et al., Case No. 20-1009 (6th Cir. Nov. 23, 2020) (Donald, J.)

In 2008, Paul Rogers, through his company RJ Control Consultants (RJC), entered into an oral agreement with his friend Jack Elder, through Elder’s company Multiject. Rogers agreed to develop a rotary turntable control system (not for music, but to control a molding system) for Elder, calling the product “Design 3.”

In 2014, Elder asked Rogers for copies of Design 3’s technical diagrams as well as the software source code “in case something happened” to Rogers. Rogers provided the information to Elder, believing that Elder would not improperly use or disclose the information to others. Three days later, Elder informed Roger that he no longer needed Roger’s services and would instead use RSW Technologies for the assembly and wiring of the system. Elder claimed that he was increasingly concerned with Roger’s pricing and decided to switch out Rogers and RJC for RSW. Multiject and RSW used Design 3, both the technical drawings and the source code, in the assembly and wiring of identical new systems.

In 2016, Rogers obtained two copyright registrations, one for the technical diagrams and one for the source code. RJC filed a complaint for several federal and state law claims, including copyright infringement. Multiject and RSW filed motions for summary judgment on all claims, including dismissal of the copyright claims, which the district court granted. RJC appealed.

Multiject and RSW argued that copyright protection did not extend to the software at issue because the software embodied a procedure, a system and a method of operating an injection molding machine, and that is not eligible for copyright protection. They also argued that the use of copyrighted technical drawings to produce a control system did not constitute copyright infringement of the technical drawings for the same reasons that making a recipe out of a copyrighted cookbook does not constitute copyright infringement of the cookbook. Multiject and RSW asserted that to the extent Rogers sought to protect the “use” of his technical drawings to create something else, he should have sought protection under patent law—not copyright law.

The Sixth Circuit agreed. Because the source code and technical diagrams were registered, the validity of the copyrights was not contested. The Court first considered whether physical copying to reproduce the system contained in the drawings was copyright infringement. The Court noted that whether the drawings were themselves reproduced was a separate question from whether the drawings were used to create the system portrayed in that drawing. The Court found that the “manufacture of the control system from the copyrighted technical drawing was not copyright infringement because the recreation of a control system by using a copyrighted technical drawing is not ‘copying’ for [...]

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By the Book: Unauthorized Material Doesn’t Forfeit Training Guide’s Copyright Protection

by | Oct 8, 2020 |

The US Court of Appeals for the Sixth Circuit affirmed a jury verdict in favor of a copyright owner in a lawsuit alleging infringement of the copyright in a home-services training manual, finding that the jury was correctly instructed that a work’s incorporation of some copyrighted content does not invalidate the copyright in the work’s original parts. Hiller LLC v. Success Grp. Int’l Learning Alliance LLC, Case No. 19-6115 (6th Cir. Sept. 23, 2020) (Suhrheinrich, J.).

Hiller is a home-services company providing HVAC services. Hiller was a paying member of Success Group International, which offered customer service training to home services companies. Success Group conducted training courses using manuals copyrighted by its owner, Clockwork Home Services. Hiller sent its employees to Success Group’s courses and had access to the manuals. Clockwork later sold Success Group to another company, but retained ownership of the copyrights in the manuals and granted a perpetual license for use of the manuals in Success Group’s training business.

Hiller later hired a contractor to create a more interactive training guide for its technicians as a replacement for the manuals. To create the guide, the contractor conducted a two-day workshop with Hiller employees and representatives from Success Group. The workshop included a series of interactive brainstorming sessions. One of the manuals was referred to during the workshop. Ultimately the new guide incorporated some content generated at the design workshop. Other “gap-filling” content was taken directly from the manuals. The contractor also added other original content. The contractor assigned its copyright in the guide to Hiller.

The Success Group subsequently conducted a training class using a workbook that closely resembled the guide. Hiller ended its Success Group membership and sued Success Group for copyright infringement for its use of the workbook. Clockwork intervened, alleging that it owned the guide and seeking declaratory relief invalidating Hiller’s copyright in the guide. Following a seven-day trial, a jury concluded that Hiller had a valid copyright in the guide and that the Success Group workbook copied protected elements of the guide. Clockwork moved for a judgment notwithstanding the verdict, which the district court denied. Success Group ultimately settled with Hiller. Clockwork appealed.

The Sixth Circuit affirmed. First, the Court found that sufficient evidence supported the jury’s verdict that Hiller owned a copyright in the guide. The Court rejected Clockwork’s two-pronged argument that the guide lacked independently created material (required to meet the Copyright Act’s originality requirement) and that Hiller should lose its copyright because the guide contained content taken from the manuals. Based on its selection and organization, the guide contained enough originality created independently by or on behalf of Hiller (through Hiller’s contractor) to meet the originality threshold for copyright protection. The original material included information and graphical depictions selected and organized at the design workshop. The Court also rejected Clockwork’s argument that Hiller should lose copyright protection because the guide was based on Clockwork’s “copyrighted system.” Copyright protection does not preclude others from copying or using the underlying ideas contained [...]

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“Can’t Hold Us” Liable: Macklemore & Ryan Lewis Win Affirmance in Copyright Suit

by | Oct 8, 2020 |

The US Court of Appeals for the Fifth Circuit affirmed a grant of summary judgment on the issue of copyright infringement and an award of attorneys’ fees against the plaintiff under the Copyright Act. Although the Court noted that it lacked jurisdiction to review sanctions against the plaintiff’s attorney, it observed that counsel went beyond “vigorous representation.” Batiste v. Lewis, Case Nos. 19-30400, -30889 (5th Cir. Sept. 22, 2020) (Clement, J.).

Batiste, a local musician, sued Macklemore & Ryan Lewis, an internationally famous hip-hop duo, for copyright infringement. Batiste alleged that the duo sampled his songs without authorization. As support, Batiste submitted the expert report of a musicologist, Milton, but Milton later admitted that Batiste had conducted the analysis and written the report, and that Milton did not even have access to the necessary software. The district court excluded the report, which Batiste then sought leave to resubmit in his own name. The district court denied leave because Batiste had not disclosed himself as an expert and because the new report was untimely. The district court subsequently granted the defendants’ motion for summary judgment, finding that Batiste had failed to submit sufficient evidence of Macklemore and Lewis’s alleged access to Batiste’s work or of probative similarity between Macklemore and Lewis’s works and Batiste’s. The district court then awarded fees to Macklemore and Lewis under the Copyright Act (17 USC § 505) and made Batiste’s attorney (Hayes) jointly and severally liable for the fees award as a sanction under 28 USC § 1987. Batiste appealed.

Addressing the district court’s summary judgment of no infringement, the Fifth Circuit considered Batiste’s proofs as to access and similarity.

Batiste tried to prove access through “widespread dissemination” and “chain of events” theories. The Court held that Batiste’s evidence of widespread dissemination was insufficient because it only established “quite limited” dissemination of Batiste’s music. Batiste’s chain of events theory—under which Macklemore and Lewis allegedly accessed Batiste’s work by playing a concert at a venue near a record store that sold Batiste’s music—raised only a “bare possibility” of access and was therefore also insufficient.

On the issue of similarity, the Court explained that because of Batiste’s failure to show access, he needed to show “striking similarity” to withstand summary judgment. The Court rejected Batiste’s argument that “overwhelming evidence of access” obviated any need for him to show similarity. The Court compared the allegedly infringing songs to Batiste’s and found them insufficiently similar for a jury to find striking similarity. The Court also rejected Batiste’s invitation to adopt the US Court of Appeals for the Sixth Circuit’s ruling in Bridgeport, which held a showing of similarity unnecessary in some circumstances. The Fifth Circuit noted that Bridgeport has been widely criticized, and pointed out that Bridgeport considered the issue of substantial similarity (which dictates whether factual copying, once established, is legally actionable), whereas the issue in this case was probative similarity (which raises an inference of factual copying).

Batiste challenged the award of attorneys’ fees as erroneous absent a [...]

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Jersey Boys Don’t Cry: No Copyright Protection for Facts “Based on a True Story”

by | Sep 16, 2020 |

The US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of judgment as a matter of law finding that the musical Jersey Boys did not infringe a copyright held in an autobiography of band member Tommy DeVito. Donna Corbello v. Frankie Valli, et al., Case No. 17-16337 (9th Cir. Sept. 8, 2020) (Berzon, J.).

In the 1990s, Rex Woodard ghostwrote an autobiography of Tommy DeVito, one of the original members of the 1950s quartet the Four Seasons. Woodard and DeVito agreed to split the profits equally. However, shortly after finishing the book, and before finding a publisher, Woodard died. Donna Corbello, Woodard’s widow, became the successor-in-interest to the book, and she continued the search for a publisher. Almost 15 years later, Corbello still had not published the book.

DeVito’s autobiography reads as a straightforward historical account of the Four Seasons. At the beginning of the book, DeVito, as the narrator, describes his autobiography as a “complete and truthful chronicle of the Four Seasons,” and he promises not to let “bitterness taint the true story.” Corbello also sent letters to potential publishers emphasizing that the book provided a “behind-the-scenes” look at the Four Seasons. In all accounts, the book is a non-fiction, historical chronicle of events of the Four Seasons.

In 2005, the musical Jersey Boys debuted on Broadway. Jersey Boys also depicts the history of the Four Seasons from its origins in New Jersey to its induction into the Rock and Roll Hall of Fame in 1990. DeVito admitted to working with people involved in developing Jersey Boys and sharing the book with the individuals researching the history of the band.

In 2007, Corbello sued DeVito and 14 defendants, including the band members and the writers, directors and producers of Jersey Boys. The complaint included 20 causes of action, including various forms of copyright infringement. The district court granted summary judgment in favor of the defendants on most of the claims. Corbello appealed. The Ninth Circuit reversed the district court’s grant of summary judgment in favor of defendants, vacated its assessment of costs against Corbello, and remanded for further proceedings.

On remand, the case proceeded to a jury trial where the jury found that the musical infringed the book and that use of the book was not fair use. After the verdict, the district court granted the defendant’s motion for judgment as a matter of law, concluding that any infringement was fair use. Corbello appealed.

On appeal, the central disagreements were whether the musical was substantially similar to the book and whether the defendants copied any protectable portions of the book. The Ninth Circuit analyzed the similarities under the extrinsic test for substantial similarity. The appellate court found that each of the similarities failed because they involved only non-protectable elements of the book. Those non-protectable elements included DeVito depicting himself in the musical (a character based on a historical figure is not protected); Bob Gaudio arriving late to rehearsal, excited about a new song he just [...]

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No Remix: Copyright Act Preempts Right of Publicity Claim

by | Sep 9, 2020 |

The US Court of Appeals for the Second Circuit found that the federal Copyright Act preempts a state right of publicity claim when the latter is merely “a thinly disguised effort to exert control over an unauthorized [use of a copyrighted] work.” Jackson v. Roberts, Case No. 19-480 (2d Cir. Aug. 19, 2020) (Leval, J.).

Both parties in this case are famous hip-hop artists more commonly known by their stage names: the plaintiff, Curtis James Jackson III, is known as 50 Cent, and the defendant, William Leonard Roberts II, is known as Rick Ross. In 2015, Roberts released a free mix tape that included samples from many famous songs, including Jackson’s hit “In Da Club.” The mix tape track at issue was titled “In Da Club (Ft. 50 Cent)” and included Rick Ross rapping over the “In Da Club” instrumentals, a 30-second sample of 50 Cent singing the “In Da Club” refrain, and multiple references to Rick Ross’s upcoming album.

Jackson sued Roberts, claiming that the unauthorized use of his name and voice violated his right of publicity under Connecticut common law. Pursuant to a recording agreement with his former record label, Shady Records/Aftermath Records, Jackson did not own a copyright interest in the “In Da Club” recording and therefore could not sue for copyright infringement. The district court granted Roberts’s motion for summary judgment, finding that Jackson had surrendered his publicity rights via the recording agreement and that the right of publicity claim was preempted. Jackson appealed.

The Second Circuit agreed that federal law preempted the right of publicity claim, but for different reasons than the district court: the Second Circuit found the state claim preempted under the doctrine of implied preemption or, alternatively, statutory preemption. The Court explained that “generally . . . implied preemption precludes the application of state laws to the extent that those laws interfere with or frustrate the functioning of the regime created by the Copyright Act. Statutory preemption preempts state law claims to the extent that they assert rights equivalent to those protected by the Copyright Act, in works of authorship within the subject matter of federal copyright.”

The Second Circuit used a two-part test to determine whether the state law claim was subject to implied preemption, asking (1) whether the state right of publicity claim asserted a sufficiently substantial state interest, distinct from those interests underlying federal copyright law, and (2) whether the state law claim would potentially conflict with rights established by the Copyright Act. Given that Roberts did not use Jackson’s name or persona to falsely imply Jackson’s endorsement of Roberts’ music, nor did Roberts invade Jackson’s privacy or use his persona in a derogatory nature, the Court reasoned that Jackson was not seeking to vindicate any distinct and substantial state interest. Likewise, the Court held that the second element was satisfied because Jackson’s right of publicity suit had the potential to interfere with the copyright holder’s exclusive control of its rights: “Jackson’s attempt to [control the use of the [...]

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Liability for Copyright Infringement Attaches if Conduct Exceeds Scope of License

by | Sep 2, 2020 |

The US Court of Appeals for the Ninth Circuit revived a software owner’s copyright infringement suit because the district court erred in granting summary judgment of no infringement by failing to analyze whether the accused infringer exceeded the scope of a copyright license. Oracle America, Inc., et al. v. Hewlett Packard Enterprise Company, Case No. 19-15506 (9th Cir. Aug. 20, 2020) (Smith, J.).

Oracle owns registered copyrights for Solaris software, including copyrighted software patches. Oracle requires its customers have a prepaid annual support contract, for each server they desire to be under support, to access the software patches. Customers under a support plan can access patches through an Oracle support website.

Hewlett Packard Enterprise (HPE) provides a “one-stop-shop” for support to its customers, including HPE servers running Solaris. HPE provides this support directly and through its partners. One of HPE’s partners is Terix Computer Company. Terix arranged for joint HPE-Terix customers to have Oracle support for all of their servers through a single server support plan. Terix accomplished this by downloading Solaris software patches, using the customer’s credentials (created using a Terix-supplied credit card), to make copies for servers that were not part of the support contract.

In 2013, Oracle sued Terix for copyright infringement. The court granted Oracle summary judgment, and Terix stipulated to a judgment on the claims without admitting liability. Oracle and HPE entered into an agreement, effective May 6, 2015, to toll the statute of limitations for any claims Oracle might assert against HPE.

In 2016, Oracle sued HPE for direct copyright infringement concerning HPE’s direct support customers, and for indirect infringement concerning joint HPE-Terix customers. Oracle also sued for claims of intentional interference and unfair competition under California state law. The parties did not dispute that the tolling agreement applied, so the court considered whether the copyright infringement claims were barred for conduct before May 6, 2012. The Copyright Act provides that a copyright infringement claim is subject to a three-year statute of limitations, which runs separately for each violation. Under Ninth Circuit law, a copyright infringement claim begins to accrue “when a when a party discovers, or reasonably should have discovered, the alleged infringement.” Importantly, actual or constructive knowledge triggers the statute of limitations. The Ninth Circuit has explained that suspicion of copyright infringement places a duty on the copyright holder to investigate further into possible infringement or lose the claim.

Oracle conceded that it had concerns about Terix and suspicions about HPE as early as 2010, but argued that HPE used fraudulent means to keep Oracle unaware of its actions, so it had no duty to inquire. The district court disagreed, finding that once Oracle had constructive knowledge, the doctrine of fraudulent concealment was no longer an option to toll the limitations. Because Oracle failed to investigate HPE, the court determined that HPE was entitled to summary judgment on the infringement claims for pre-May 6, 2012, conduct. Oracle appealed.

The Ninth Circuit explained that to prove indirect infringement, Oracle had to show that [...]

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Buzz-sawed: Give Copyright Credit or Face Statutory Damages, Fees, Costs

by | Aug 26, 2020 |

The US Court of Appeals for the Second Circuit affirmed a district court’s award of statutory damages where the defendant knowingly distributed a photograph without first getting permission to use the photograph. Gregory Mango v. BuzzFeed, Inc., Case No.19-446 (2nd Cir. Aug.13, 2020) (Park, J.).

Gregory Mango, a freelance photographer, sued BuzzFeed, an online media company, under the Digital Millennium Copyright Act (DMCA), for using one of his photographs in a news article without first obtaining his permission and crediting him. Mango asserted copyright infringement, alleging that BuzzFeed removed or altered the copyright management information (CMI), a violation under the DMCA. Mango sought statutory damages of $30,000 for his copyright infringement claim, $5,000 for his DMCA claim, and attorney’s fees. BuzzFeed argued that it could not be held liable under the DMCA because there was no evidence that it knew its conduct would lead to future, third-party infringement of Mango’s copyright.

The photo at issue was of Raymond Parker, who was the lead figure in a discrimination lawsuit filed by federal prosecutors in New York. The New York Post licensed the photo and published it, including Mango’s name in an attribution known as “gutter credit.” A few months later, BuzzFeed published an article about Parker and used Mango’s photo. The BuzzFeed journalist did not ask for permission to use the photo; instead, he listed the name of Parker’s attorneys’ law firm in the gutter credit. The journalist, a six-year veteran at BuzzFeed, had written more than 1,000 articles for the company, all of which included a photograph, and it was his custom to give credit to the photographers by “name or by photo outlet.” However, in this case, he asked the law firm for a photo of Parker but ultimately downloaded the photo from the New York Post website himself and attributed the photo to the law firm.

Prior to a bench trial, BuzzFeed stipulated to liability on the copyright infringement claim. The district court noted that under “Section 1202(b)(3) of the DMCA, plaintiffs must prove (1) actual knowledge … that CMI was removed and/or altered without permission and (2) constructive knowledge … that such distribution will induce, enable, facilitate or conceal an infringement.” The court found that Mango’s gutter credit constituted CMI and that BuzzFeed knew that the CMI had been removed and altered without permission, rejecting the journalist’s claims that he had believed he obtained permission and that BuzzFeed had reasonable grounds to know that such removal and distribution was infringement. The court found BuzzFeed liable on both claims and awarded Mango $8,750 in statutory damages and $65,132 in attorney’s fees. BuzzFeed appealed.

The Second Circuit determined that the district court correctly applied the DMCA in the case, finding that the journalist had distributed Mango’s photo knowing that his gutter credit had been removed or altered without Mango’s permission and distributed it with a gutter credit of the law firm, knowing that doing so would conceal that he did not have permission to use the photo.

BuzzFeed argued [...]

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Copyright Board Ordered to Take a New Look at Streaming Services Rate Structure

by | Aug 26, 2020 |

Reversing the Copyright Royalty Board’s (Board) determination of a revised rate structure governing musical works, the US Court of Appeals for the District of Columbia Circuit concluded that the Board reached a final structure without providing adequate notice. George Johnson v. Copyright Royalty Bd., Case No. 2019-1028 (D.C. Cir. Aug. 7, 2020) (Millett, J.).

Every five years, the Board holds a proceeding to determine the royalty rate and terms for reproducing and distributing musical works, where interested stakeholders are permitted to present evidence and argument. At issue in Johnson is the Board’s decision, made after a five-week evidentiary hearing, setting the compulsory rate for the right to reproduce and distribute recordings of copyrighted musical works, known as a mechanical license, through streaming services for the period of January 1, 2018, to December 31, 2022.

Before the Board’s determination, depending on the type of service provided, the service provider owed a royalty based on a formula that considered two factors: (1) the service provider’s revenue associated with the particular offering, known as the “revenue prong,” and (2) the royalties paid by the service provider to sound recording copyright holders, known as the “total content cost prong.” For some streaming service offerings, the royalty was subject to a mechanical floor, and for some, the total content cost prong was subject to a cap. The Board’s final determination uncapped the total content cost prong and decided to phase in, for all categories over five years, a 15.1% revenue rate and a 26.2% total content cost rate, both higher than prior rates. Streaming services Amazon, Google, Pandora and Spotify, along with copyright owners and pro se songwriter George Johnson, appealed various aspects of the ruling.

On appeal, the challenges ran the gamut of administrative arguments: among others, that the Board’s decision was improperly retroactive, that the Board failed to give proper notice before settling on the rate structure in its final determination and fixed rates arbitrarily and capriciously, that it rejected certain evidence without an adequate explanation, and that it made certain changes to its decision without statutory authority to do so.

Although the D.C. Circuit found most of these arguments unavailing, it was convinced of a few, warranting remand to the Board for further proceedings. Primarily, the Court concluded that the Board failed to provide proper notice that it would uncap the total content cost prong combined with a significant increase in the mechanical royalty license rate. Specifically, the Court held that the Board’s ultimate rate structure, while adopting pieces from various proposals (some of which were never even offered at or before the hearing), was not within the zone of reasonably contemplated outcomes. By eliminating the cap on total content cost for all categories and increasing the royalty rates, the mechanical royalty licenses would be subject to the copyright owners’ unchecked market power.

The D.C. Circuit found two other errors. First, the relevant stakeholders had a settlement history from which the Board could draw conclusions regarding an appropriate rate structure. Nonetheless, the [...]

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“Salacious” Content Doesn’t Bar Discovery in Copyright Infringement Suit

by | Jul 30, 2020 |

The US Court of Appeals for the District of Columbia Circuit preserved discovery options for copyright owners fighting online piracy when it reversed the district court’s refusal to allow a subpoena of an alleged online infringer’s internet service provider. The DC Circuit found that the district court abused its discretion by relying heavily on the copyright owner’s litigation history and the nature of its films rather than the relevant legal standards under the Federal Rules of Civil Procedure. Strike 3 Holdings, LLC v. John Doe, Subscriber Assigned IP Address 73.180.154.14 (DC Cir. July 14, 2020) (Rao, J.).

Strike 3 is a producer and online distributor of adult films. Like most of its industry peers, the company faces significant online piracy that is often facilitated by peer-to-peer file sharing. To combat this infringement, Strike 3 regularly files copyright infringement lawsuits against “John Doe” defendants based on the internet protocol (IP) address (and the associated physical address) tied to an online infringer’s illegal file sharing and downloads.

In 2018, Strike 3 filed a copyright infringement lawsuit against the IP address 73.180.154.14 John Doe subscriber located in the District of Columbia after the IP address was associated with 22 instances of infringement in the course of one year. To properly identify the defendant and serve the complaint, Strike 3 also filed a Rule 26(d)(1) motion seeking leave to subpoena Comcast, the subscriber’s internet service provider, for records identifying the John Doe IP address subscriber. But, in applying a multifactor balancing test adopted by the US Court of Appeals for the Second Circuit in Arista Records v. Doe, the district court denied Strike 3’s discovery motion on grounds that Strike 3’s need for the subpoenaed information was outweighed by defendant’s right to be anonymous, which the court found to be notably relevant given the risk of defendant misidentification and the “particularly prurient pornography” at issue.

On appeal, the DC Circuit acknowledged the district court’s broad discretion over the structure, timing and scope of discovery. In Strike 3’s case, however, the DC Circuit found that three aspects of the lower court’s analysis were an abuse of this broad discretion.

First, it was improper and “not supported by the relevant legal standards” for the district court to treat the pornographic content of Strike 3’s copyrighted works as relevant to its entitlement to early discovery. None of the supporting case law suggests that a potentially non-infringing defendant’s privacy interests vary depending on the content of the copyrighted work at issue. The Court warned that a plaintiff’s ability to defend its copyrights cannot turn on a court’s subjective view of the copyrighted material, and held that the content of a copyrighted work is per se irrelevant to a Rule 26(d)(1) motion seeking discovery to identify an anonymous infringer.

The district court’s second abuse of discretion was in its conclusion that, even if the discovery request was granted, Strike 3 could not “identify a copyright infringer who can be sued” for purposes of stating a plausible claim against the [...]

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Copyright Office, Not Courts, Determines Validity of Registrations Containing Inaccurate Information

by | Jun 10, 2020 |

With the validity of a copyright registration at issue, the US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s judgment after a jury trial and award of attorney’s fees in favor of the plaintiff in a copyright infringement action, holding that the district court was required to request the Register of Copyrights to advise whether inaccurate information, if known, would have caused the Register to refuse registration of the plaintiff’s asserted copyright. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., (9th Cir. May 29, 2020) (Bea, J.).

The appeal to the Ninth Circuit arose from a copyright infringement action brought by Unicolors, a company that creates designs for use on textiles and garments, against the global fast-fashion retail giant, H&M Hennes & Mauritz (H&M). After a jury found substantial similarity between a design created by Unicolors in 2011 and a design printed on a skirt and jacket sold by H&M four years later, the Ninth Circuit was tasked with examining the threshold issue of whether Unicolors actually holds a valid copyright registration for the 2011 design, which is a precondition to bringing its copyright infringement suit.

The garment design that Unicolors claimed to be infringed by H&M is one of 31 separate designs comprising a “single-unit registration.” To register a collection of works as a “single unit” under the Copyright Act, however, the works must have been first sold or offered for sale in “a single unit of publication.” On this point, H&M argued that the collection of works identified in Unicolors’s asserted copyright registration were sold separately instead of together and at the same time, which required the court to find Unicolors’s copyright registration invalid.

In its examination of the “rarely disputed” issue of whether a copyright is properly registered, the Ninth Circuit found the district court’s rationale for denying H&M’s petition to be “flawed.” First, the Court flatly rejected the district court’s requirement that H&M demonstrate that Unicolors intended to defraud the Copyright Office at the time of its application filing, and pointed to the Ninth Circuit’s 2019 ruling in Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, where it clarified that there is no such intent-to-defraud requirement for copyright registration invalidation (and in doing so, rejected a series of Ninth Circuit cases that imply an opposite conclusion).

Second, the Ninth Circuit concluded that the plain meaning of “single unit,” under the Copyright Act’s provision for the registration of a collection of published works as a single unit, requires that the registrant first published the works in a singular, bundled collection. Therefore, the Court explained that the district court further erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of the company’s own designated “confined designs,” which, according to testimony and evidence in the proceeding, were sold separately and exclusively to individual customers and were not first sold together and at the same time with the rest of the works in the single unit registration.

With this underlying [...]

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