Ninth Circuit Report

• Publication year: 2022
• Author: Anne-Marie Dao

NINTH CIRCUIT REPORT

Anne-Marie Dao
Sheppard Mullin

Happy summer, Ninth Circuit Report readers! This issue's Ninth Circuit Report provides an update on the 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 considered an intra-circuit conflict in the application of a federal statute. On February 24, 2022, the Supreme Court vacated the Ninth Circuit's holding.

NINTH CIRCUIT OPINION SUMMARY

A more detailed account of this case is offered in last issue's Ninth Circuit Report, which I am briefly summarizing here for those that didn't catch the last issue.

Unicolors, Inc. ("Unicolors") alleged 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

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).

"On appeal, the Ninth Circuit determined that it did not matter whether Unicolors was aware that it had failed to satisfy the single unit of publication requirement, because the safe harbor excuses only good-faith mistakes of fact, not law. Unicolors had known the relevant facts, so its knowledge of the law (or lack thereof) was irrelevant."²

SUPREME COURT DECISION

In Unicolors' Petition for Writ of Certiorari, it implored the Supreme Court to grant its petition because the Ninth Circuit "misinterpreted 17 U.S.C. § 411(b)(1) of the PRO-IP Act."³ Unicolors argues that "Courts across the nation—including the Ninth Circuit until very recently—have

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rightly interpreted this language to require proof of fraud or bad faith" and thus, the Ninth Circuit's departure from this standard has caused a "critical...