Supreme Court to Rule on Copyright Invalidation in Unicolors v. H&M Case

Clothing giant H&M and fabric-maker Unicolors have been locked in litigation since April 2016. Now, the United States Supreme Court has agreed to hear the case between them, which revolves around copyright infringement.

H&M Claims Copyright Invalidation as Defense in Infringement Case 

In the case at hand, Unicolors claimed that H&M infringed upon its copyright registration for certain geometric patterns. In response, H&M argued that Unicolors’ copyright registration is invalid because Unicolors included false information in its application. Specifically, while Unicolors had stated on its copyright application that its individual geometric patterns were published together, which would make them appropriate for a “single-unit” copyright registration, H&M argued that this was untrue because Unicolors had actually sold some of the registered patterns separately and to different customers at different times. With this revelation, H&M argued that the infringement claim would fail because a valid copyright registration is a prerequisite for any copyright infringement claim brought in the United States.

When the case had originally been heard before a jury, the jury found for Unicolors, finding that H&M had willfully infringed Unicolors’s copyrighted pattern. The award, almost a million dollars in damages, attorneys’ fees, and costs, led to H&M appealing to the Ninth Circuit, which ultimately found for H&M, reversing the jury verdict and holding that the lower court erred when it required that H&M show that Unicolors had intent to defraud the U.S. Copyright Office when it applied for its registration. 

Does Copyright Invalidation Require Proof of Fraud or Material Error?

In its ruling, the Ninth Circuit held that the knowing inclusion of inaccurate information in Unicolors’s copyright application was enough to warrant invalidation of its registration. With that, the Ninth Circuit remanded the case back to the district courts for further proceedings regarding the validity of the registration. As such, it appeared that the Ninth Circuit intended to cut back on inaccurate, combined filings, which applicants sometimes opt for in an attempt to cut down on fees.

In granting certiorari to hear the case, the Supreme Court has noted that the only issue it would hear would be the petition for writ certiorari regarding whether the Ninth Circuit erred in requiring referral to the Copyright Office when there is no indicia of fraud or material error as to the work at issue in the registration. It would not hear the other question raised by Unicolors, which asked whether the Ninth Circuit misapplied the publication standard.

Key Takeaways on the Significance of the Supreme Court Hearing of the Copyright Invalidation Case

The Supreme Court has agreed to hear a copyright infringement case that involves H&M allegedly infringing upon a Unicolors’s copyright registration. The issue at hand is significant for copyright law because:

• It could affirm or reverse a Ninth Circuit holding that there no longer needs to be intent to defraud the Copyright Office for a registration to be invalid; and

• It examines the process of combined filings and referral back to the Copyright Office when there has been no indicia of fraud or material error.

For more information on copyright protection, see our Software & Copyrights and Industry Focused Legal Solutions pages.