Ninth Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 1
• Publication year: 2022
• Author: Anne-Marie Dao
• topic: Intellectual Property,Copyright law

NINTH CIRCUIT REPORT

Anne-Marie Dao
Sheppard Mullin

Happy New Year! As we enter our third year of the pandemic, I hope that everyone is staying safe. This issue's Ninth Circuit Report covers a case heard by the U.S. Supreme Court that originated in the Ninth Circuit: Unicolors, Inc. v. H&M Hennes & Mauritz, LP. In Unicolors, the Supreme Court is considering an intra-circuit conflict on the application of a federal statute.

NINTH CIRCUIT OPINION

Unicolors, Inc. ("Unicolors") alleges that a design it created in 2011 is similar to a design printed on garments that H&M Hennes & Mauritz L.P. ("H&M") began selling in 2015. "The heart of this case is the factual issue whether H&M's garments bear infringing copies of Unicolors's 2011 design. Presented with that question, a jury reached a verdict in favor of Unicolors, finding the two works at least substantially similar."¹ In so finding, the jury awarded Unicolors $817,920 in damages and $28,800 in lost profits. The district court later granted attorneys' fees and costs in the amounts of $508,709.20 and $5,856.27.

One of the issues for the district court to consider was whether ownership of a valid copyright was proven. "Proper registration, of course, is not a precondition to copyright protection. 17 U.S.C. § 408(a). But the Copyright Act expressly prohibits copyright owners from bringing infringement actions without first properly registering their work. Id. § 411(a). Whether a copyright is properly registered is rarely disputed, because the mere receipt of a registration certificate issued by the Register of Copyrights ordinarily satisfies the Copyright Act's registration requirement. Id. § 411(b)(1). But possession of a registration certificate does not satisfy the Copyright Act's registration requirement if the registrant secured the...