APPENDIX
`APPENDIX
`
`
`APPENDIX
`
`
`
`i
`APPENDIX
`TABLE OF CONTENTS
`Appendix A Opinion in the United States Court of
`Appeals for the Ninth Circuit
`(June 4, 2019) . . . . . . . . . . . . . . . . App. 1
`Appendix B Amended Judgment in the United
`States District Court, Central District
`of California
`(January 4, 2018) . . . . . . . . . . . . App. 23
`Appendix C Order re Defendants’ Motion for
`Award of Final Costs and Attorney’s
`Fees in the United States District
`Court, Central District of California
`(December 5, 2017) . . . . . . . . . . . App. 26
`Appendix D Judgment
`in the United States
`District Court, Central District of
`California
`(May 26, 2017). . . . . . . . . . . . . . . App. 68
`Appendix E Order re Defendants’ Motion for
`Summary Judgment; Plaintiff’s
`Motion for Summary Adjudication as
`to Liability
`for Copyright
`Infringement, Willfulness, and
`Infringing Revenues; Plaintiff’s
`Motion for Reconsideration of Ruling
`on the Parties’ Motions for Summary
`Judgment
`in the United States
`District Court, Central District of
`California
`(May 12, 2017). . . . . . . . . . . . . . . App. 70
`
`
`
`ii
`Appendix F Response of the Register of Copyrights
`to Request Pursuant to 17 U.S.C.
`§ 411(b)(2) in the United States
`District Court, Central District of
`California
`(April 28, 2017) . . . . . . . . . . . . . . App. 99
`Appendix G Request to the Register of Copyrights
`Pursuant to 17 U.S.C. § 411(b)(2) in
`the United States District Court,
`Central District of California
`(March 24, 2017) . . . . . . . . . . . . App. 109
`Appendix H Order re Defendants’ Motion for
`Summary Judgment; Plaintiff’s
`Motion for Summary Adjudication as
`to Liability
`for Copyright
`Infringement, Willfulness, and
`Infringing Revenues in the United
`States District Court, Central District
`of California
`(March 24, 2017) . . . . . . . . . . . . App. 112
`Appendix I Order Denying Petition for Rehearing
`and Rehearing En Banc in the United
`States Court of Appeals for the Ninth
`Circuit
`(July 30, 2019). . . . . . . . . . . . . . App. 142
`Appendix J Mandate in the United States Court of
`Appeals for the Ninth Circuit
`(August 7, 2019) . . . . . . . . . . . . App. 144
`
`
`
`App. 1
`
`APPENDIX A
`
`FOR PUBLICATION
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`No. 17-55818
`D.C. No. 2:16-cv-00339-JAK-FFM
`[Filed June 4, 2019]
`___________________________________
`GOLD VALUE INTERNATIONAL
`TEXTILE, INC., DBA Fiesta Fabric,
`a California Corporation,
`Plaintiff-Appellant,
`
`)
`)
`)
`
`))
`
`))
`
`v.
`
`SANCTUARY CLOTHING, LLC,
`)
`)
`a California Limited Liability
`)
`Company; AMAZON.COM, INC.,
`a Washington Corporation;
`)
`)
`MACY’S, INC., an Ohio Corporation;
`NORDSTROM, INC., a Washington
`)
`)
`Corporation; BLOOMINGDALES, INC.,
`)
`a New York Corporation;
`)
`DILLARDS, INC., an Arkansas
`)
`Corporation; ZAPPOS IP, INC.,
`)
`a Nevada Corporation; DOES, 1–10,
`)
`Defendants-Appellees.
`___________________________________ )
`
`
`
`App. 2
`OPINION
`Appeal from the United States District Court
`for the Central District of California
`John A. Kronstadt, District Judge, Presiding
`Argued and Submitted December 6, 2018
`Pasadena, California
`Before: Diarmuid F. O’Scannlain and Sandra S.
`Ikuta, Circuit Judges, and George Caram Steeh III,*
`District Judge.
`Opinion by Judge Steeh
`
`SUMMARY**
`
`Copyright
`The panel affirmed the district court’s summary
`judgment and award of attorney’s fees in favor of the
`defendants in an action under the Copyright Act.
`Gold Value International Textile, Inc., doing
`business as Fiesta Fabric, alleged that defendant
`Sanctuary Clothing, LLC, copied its fabric design,
`which was used to manufacture a blouse that was sold
`by defendant retail outlets. Sanctuary
`filed a
`counterclaim, seeking
`invalidation of Fiesta’s
`
`* The Honorable George Caram Steeh III, United States District
`Judge for the Eastern District of Michigan, sitting by designation.
`
`** This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`
`
`App. 3
`copyright. Concluding
`that Fiesta’s copyright
`registration was invalid, the district court granted
`summary judgment in favor of defendants.
`The panel affirmed the district court’s conclusion
`that Fiesta’s copyright registration was invalid under
`17 U.S.C. § 411(b) because Fiesta knowingly included
`inaccurate information in its copyright application that
`would have caused the Copyright Office to deny
`registration. Specifically, Fiesta knowingly included
`previously published designs in its application to
`register an unpublished collection. In addition, the
`Register of Copyrights indicated that it would not
`publish a single group of published and unpublished
`works. Because a valid registration is a precondition to
`bringing an action for infringement, the panel affirmed
`the district court’s grant of summary judgment in favor
`of defendants.
`The panel further held that defendants were
`prevailing parties, and the district court did not abuse
`its discretion in awarding attorney’s fees under 17
`U.S.C. § 505 even though defendants prevailed on a
`technical defense.
`
`COUNSEL
`Scott Alan Burroughs (argued) and Trevor W. Barrett,
`Doniger/Burroughs, Venice, California, for Plaintiff-
`Appellant.
`Jessica Strom Rutherford (argued), Alexander Malbin,
`and Edmund J. Ferdinand III, Ferdinand IP LLC, New
`York, New York, for Defendants-Appellees.
`
`
`
`App. 4
`OPINION
`STEEH, District Judge:
`Gold Value International Textile, Inc., doing
`business as Fiesta Fabric (“Fiesta”), brought this action
`for copyright infringement against Sanctuary Clothing,
`LLC (“Sanctuary”), and several clothing retailers.
`Fiesta alleges that Sanctuary copied its fabric design,
`which was used to manufacture a blouse that was sold
`by the defendant retail outlets. Sanctuary filed a
`counterclaim, seeking
`invalidation of Fiesta’s
`copyright. Concluding
`that Fiesta’s copyright
`registration was invalid, the district court granted
`summary judgment in favor of Defendants. The district
`court determined invalidity pursuant to 17 U.S.C.
`§ 411(b), finding that Fiesta knowingly included
`inaccurate information in its copyright application that
`would have caused the Copyright Office to deny
`registration. Recognizing that a valid copyright
`registration is a prerequisite to bringing suit, the
`district court dismissed Fiesta’s complaint. The court
`also awarded attorney’s fees and costs to Defendants.
`Fiesta appeals the final judgment as of right. Finding
`no error in the conclusions of the district court, we
`affirm.
`
`BACKGROUND
`Fiesta is a California corporation that creates
`textile designs and sells fabric to its customers, who
`use the fabric to make clothing. Sanctuary is a clothing
`manufacturer; the remaining defendants are retailers
`who purchased garments from Sanctuary and sold
`them to customers. Fiesta alleges that it owns the
`
`
`
`App. 5
`copyright in a two-dimensional textile design entitled
`1461-43
`(“1461 Design”). According
`to Fiesta,
`Sanctuary infringed its copyright by creating and
`selling clothing to retailers featuring a design
`substantially similar to the 1461 Design.
`Effective October 24, 2013, Fiesta registered the
`1461 Design under Copyright Registration No. VAu 1-
`151-509 (“‘509 Registration”), as part of its “Grp. 029-
`Spring/Summer 2014” collection. In addition to the
`1461 Design, the ‘509 Registration comprises thirty-
`three fabric designs. In the copyright application,
`Fiesta’s president, Morris Ajnassian, certified that
`none of the works in the collection had been published
`as of October 23, 2013. The fabric designs were
`registered as an unpublished collection.
`Prior to the registration, Fiesta sold samples of
`fabric bearing the 1461 Design to “a limited group of
`existing and potential customers for the limited
`purpose of securing full production contracts for
`hundreds or thousands of yards of fabric.” Between
`March 12, 2013, and October 24, 2013, Fiesta sold
`about 190 yards of fabric featuring the 1461 Design.
`Ajnassian testified that he knew that sample fabric
`bearing the 1461 Design had been sold prior to
`approving the copyright registration application, but
`that he did not consider sampling to be publication.
`PROCEDURAL HISTORY
`In ruling on the parties’ cross-motions for summary
`judgment, the district court determined that because
`the 1461 Design had been sold prior to registration, it
`had been published and,
`therefore, Fiesta’s
`
`
`
`App. 6
`identification of the 1461 Design as unpublished in the
`copyright application was inaccurate. Because Fiesta
`knew that the fabric had previously been sold, the
`court concluded, it included inaccurate information in
`its copyright application with knowledge that it was
`inaccurate. The court deferred a final ruling on
`whether Fiesta’s copyright registration was invalid,
`and submitted an inquiry to the Copyright Office
`regarding whether the Register of Copyrights would
`have rejected Fiesta’s application if it had known of the
`inaccuracy. Specifically, the district court inquired as
`follows:
`Would the Register of Copyrights have
`rejected Plaintiff’s Registration No. VAu
`1-151-509 for 2-dimensional artwork
`(“Grp.029-Spring/Summer 2014,” filed
`October 24, 2013) 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?
`The Register of Copyrights responded that “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
`
`
`
`App. 7
`unpublished when in fact it had been published.” As
`the district court explained, “[t]he Register noted that
`if it is made aware of an error at the time of
`application, the general practice of the Copyright Office
`is to correspond with the applicant and give an
`opportunity to correct the error” within forty-five days.
`The Register’s response was “premised on the fact that
`the error identified in the Court’s question was not
`timely corrected.”
`In light of the Register’s response, the district court
`granted Defendants’ motion for summary judgment,
`declaring Fiesta’s copyright registration to be invalid
`as to the 1461 Design and dismissing Fiesta’s claims
`with prejudice. Defendants moved for an award of
`attorney’s fees and costs, which the district court
`granted in the amount of $121,423.01.
`In the meantime, Fiesta submitted a separate
`copyright registration application for the 1461 Design,
`certifying that it was first published on March 12,
`2013, approximately six months prior to the date of the
`original ‘509 Registration. The Copyright Office issued
`Registration No. VA 2-006-252
`(the
`“‘252
`Registration”). Citing Fiesta’s lack of diligence, the
`district court denied Fiesta leave to amend its
`complaint to add the ‘252 Registration as the basis for
`its claims. Fiesta has not appealed this ruling. Rather,
`Fiesta filed a second action based upon the ‘252
`Registration of the 1461 Design. Gold Value Int’l
`Textile, Inc. v. Sanctuary Clothing, LLC, 2:17-cv-03726
`(C.D. Cal.). The parties stipulated to a stay of the
`second action pending the resolution of this appeal.
`
`
`
`App. 8
`
`STANDARD OF REVIEW
`The court reviews the district court’s grant of
`summary judgment de novo. L.A. Printex Indus., Inc. v.
`Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012).
`“Summary judgment is appropriate if, viewing the
`evidence in light most favorable to the nonmoving
`party, ‘there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter
`of law.’” Id. (quoting Fed. R. Civ. P. 56(a)).
`The court reviews an award of attorney’s fees under
`the Copyright Act for an abuse of discretion. Cadkin v.
`Loose, 569 F.3d 1142, 1146–47 (9th Cir. 2009). “A
`district court abuses its discretion when its decision is
`based on an inaccurate view of the law or a clearly
`erroneous finding of fact.” Id. at 1147 (citation
`omitted).
`
`DISCUSSION
`Although copyright registration is “not a condition
`of copyright protection,” registration is a precondition
`to filing an action for copyright infringement. 17 U.S.C.
`§§ 408(a), 411(a); Reed Elsevier, Inc. v. Muchnick, 559
`U.S. 154, 157 (2010) (with some exceptions, the
`Copyright Act “requires copyright holders to register
`their works before suing for copyright infringement”).
`A copyright registration certificate “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).
`The Prioritizing Resources and Organization for
`Intellectual Property Act of 2008 (the “PRO IP Act”)
`amended the Copyright Act to include a new provision,
`17 U.S.C. § 411(b) (2008). Section 411(b) provides that
`
`
`
`App. 9
`a “certificate of registration satisfies the [registration
`requirement of § 411(a)], regardless of whether the
`certificate contains any inaccurate information,” unless
`(1) “the inaccurate information was included on the
`application for copyright registration with knowledge
`that it was inaccurate,” and (2) “the inaccuracy of the
`information, if known, would have caused the Register
`of Copyrights to refuse registration.” 17 U.S.C.
`§ 411(b)(1).
`Prior to the PRO IP Act, “we have held that
`‘inadvertent mistakes on registration certificates do not
`invalidate a copyright and thus do not bar infringement
`actions, unless the alleged infringer has relied to its
`detriment on the mistake, or the claimant intended to
`defraud the Copyright Office by making the
`misstatement.’” L.A. Printex, 676 F.3d at 853 (quoting
`Urantia Found. v. Maaherra, 114 F.3d 955, 963 (9th
`Cir. 1997)); see also Unicolors, Inc. v. Urban Outfitters,
`Inc., 853 F.3d 980, 991 (9th Cir. 2017) (“Good faith
`mistakes in copyright applications do not preclude an
`infringement action.”).
`A copyright owner may file an application for
`supplementary registration “to correct an error in a
`copyright registration or to amplify the information
`given in a registration.” 17 U.S.C. § 408(d). “The
`information contained in a supplementary registration
`augments but does not supersede that contained in the
`earlier registration.” Id.
`The Copyright Act regulations permit a work to be
`registered separately, or under certain circumstances,
`as part of a group of related works:
`
`
`
`App. 10
`For the purpose of registration on a single
`application and upon payment of a single
`registration fee, the following shall be
`considered a single work:
`(A) In the case of published works: all
`copyrightable elements that are otherwise
`recognizable as self-contained works, that
`are
`included
`in a single unit of
`publication, and in which the copyright
`claimant is the same; and
`(B) In the case of unpublished works: all
`copyrightable elements that are otherwise
`recognizable as self-contained works, and
`are combined in a single unpublished
`“collection.”
`37 C.F.R. § 202.3(b)(4)(i) (2007).1 The Copyright Office
`will not accept a group of published and unpublished
`works in a single registration, as such a grouping does
`not satisfy either (A) or (B) above. Id.; see also L.A.
`Printex, 676 F.3d at 853–54. A work is published for
`purposes of the Copyright Act when copies are
`distributed “to the public by sale or other transfer of
`ownership, or by rental, lease, or lending” or offered to
`be distributed “to a group of persons for purposes of
`further distribution, public performance, or public
`display.” 17 U.S.C. § 101.
`
`1 The regulations have been amended, effective March 15, 2019, to
`include a new section regarding group registration of unpublished
`works. The new regulation provides that “[a]ll the works in the
`group must be unpublished.” 37 C.F.R. § 202.4(c)(1) (2019).
`
`
`
`App. 11
`
`Information
`
`I.
`
`in Copyright
`
`Inaccurate
`Registration
`Fiesta argues that the district court erred in finding
`that
`it
`included
`inaccurate
`information
`in
`its
`application for copyright registration. The 1461 Design
`was registered as part of an unpublished collection.
`Fiesta suggests that it made a mistake by failing to
`include a publication date in its application, which
`could be corrected by a supplemental registration.
`Fiesta’s error was to include published works in an
`unpublished collection, however. Adding a publication
`date to the application would not correct this error,
`because the Copyright Office would not have registered
`a published design as part of an unpublished collection.
`See L.A. Printex, 676 F.3d at 853–54 (characterizing
`the inclusion of two previously published designs in a
`work registered as an unpublished collection as an
`“error”).
`Fiesta next argues that the ‘509 Registration is not
`inaccurate, because the entire collection of works had
`never been published together as a collection, and
`therefore the collection was properly registered as
`unpublished. Fiesta provides no authority for the
`proposition that published and unpublished works may
`be registered as a group, which is contrary to the
`regulations, guidance from the Copyright Office, and
`caselaw. See, e.g., id.; 37 C.F.R. § 202.3(b)(4)(i)(B)
`(effective July 6, 2007) (permitting registration of
`“unpublished works . . . combined in a single
`unpublished
`‘collection.’”); U.S. Copyright Office,
`Compendium of U.S. Copyright Office Practices § 607
`(2d ed. 1984) (“Compendium II”) (“For the purpose of
`
`
`
`App. 12
`registration on a single application and payment of a
`single fee, a number of unpublished works may be
`registered as a single work.”).2
`Fiesta also contends that its ‘509 Registration was
`accurate because any publication of the 1461 Design
`was a “limited” distribution for promotional purposes
`and did not constitute legal publication under the
`limited publication doctrine. See Acad. of Motion
`Picture Arts & Scis. v. Creative House Promotions, Inc.,
`944 F.2d 1446, 1452 (9th Cir. 1991) (“[A] publication is
`‘limited’ . . . when tangible copies of the work are
`distributed both (1) to a ‘definitely selected group,’ and
`(2) for a limited purpose, without the right of further
`reproduction, distribution or sale.”). In its second
`copyright application, however, Fiesta certified that the
`date of first publication of the 1461 Design was March
`12, 2013, when Fiesta began selling sample fabric
`bearing the 1461 Design to its customers. Thus, Fiesta
`admitted that this allegedly limited distribution
`constituted legal publication, and that the publication
`occurred prior to the registration of the 1461 Design as
`part of an unpublished collection.
`
`2 The third edition of the Compendium was issued in 2014. U.S.
`Copyright Office, Compendium of U.S. Copyright Office Practices
`(3d ed. 2014) (“Compendium III”). Although the Register would
`have applied Compendium II at the time of Fiesta’s ‘509
`Registration, the Register cited Compendium III in her response
`to the district court’s inquiry, noting that “the relevant practices
`have not materially changed.” See generally Richlin v. Metro-
`Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 973 (9th Cir. 2008)
`(Copyright Register’s interpretation of copyright law entitled to
`deference).
`
`
`
`App. 13
`Moreover, Fiesta cannot demonstrate that it
`distributed the fabric “for a limited purpose, without
`the right of further reproduction, distribution or sale.”
`Id. at 1452. Although Fiesta’s invoices included a
`copyright notice that prohibited copying, reproducing,
`or altering the fabric designs, the notice language did
`not prohibit customers from distributing or reselling
`the fabric.3
`It is undisputed that Fiesta sold 190 yards of fabric
`bearing the 1461 Design before registering its
`copyright. Because the 1461 Design was distributed “to
`the public by sale or other transfer of ownership,” it
`was published within the meaning of the Copyright
`Act. 17 U.S.C. § 101; see also Compendium II § 905.02
`(publication includes distribution to “persons who are
`under no implied or express restriction with respect to
`disclosure of the work’s contents”). The district court
`did not err in finding that the 1461 Design had been
`published prior to registration and that, therefore,
`Fiesta’s ‘509 Registration application contained an
`inaccuracy.
`
`3 Because we find that Fiesta does not satisfy the requirements of
`the limited publication doctrine, we need not decide whether this
`doctrine remains viable under the Copyright Act of 1976. The
`concept of limited publication was read into the Copyright Act of
`1909 “to mitigate the harsh forfeiture effects of an improper
`publication” without a copyright notice. Am. Vitagraph, Inc. v.
`Levy, 659 F.2d 1023, 1027 (9th Cir. 1981). The 1976 Act, which
`applies here, does not require publication with a copyright notice,
`undermining the basis for the limited publication doctrine. See 17
`U.S.C. § 401(a).
`
`
`
`App. 14
`
`II.
`
`Knowledge of the Inaccuracy
`An
`inaccuracy
`in the application does not
`necessarily
`invalidate a copyright registration,
`however. See 17 U.S.C. § 411(b)(1). Rather, the
`inaccurate information must have been included in the
`application for copyright registration “with knowledge
`that it was inaccurate” and “the inaccuracy of the
`information, if known, would have caused the Register
`of Copyrights to refuse registration.” Id.; see also L.A.
`Printex, 676 F.3d at 852–53. The district court found
`that Fiesta knew the information in the application
`was inaccurate because it knew that it had previously
`sold fabric bearing the 1461 Design to customers when
`it applied for the ‘509 Registration. Fiesta argues that
`it did not know that the sale of samples to its
`customers constituted publication as a matter of law
`under the Copyright Act, and therefore, it did not have
`the requisite knowledge or fraudulent intent. The
`district court characterized Fiesta’s position as one of
`“ignorance of the law,” which is “no excuse,” and
`determined that a showing of fraudulent intent is not
`required to invalidate a copyright registration under
`§ 411(b).
`Both parties rely upon L.A. Printex. In that case,
`the plaintiff registered a group of five textile designs as
`a single unpublished collection entitled Small Flower
`Group A. After bringing its infringement action, L.A.
`Printex became aware that its copyright registration
`for Small Flower Group A contained an error: two of
`the five designs—but not the design at issue—had been
`published before the date of registration. L.A. Printex
`filed an application for supplementary registration to
`
`
`
`App. 15
`remove the two previously published designs and the
`Copyright Office issued a certificate of supplementary
`registration for Small Flower Group A. The defendant
`argued that L.A. Printex’s registration for the design at
`issue was invalid. Rejecting this argument, we stated
`that “[t]he record, when viewed in the light most
`favorable to L.A. Printex, does not demonstrate that
`L.A. Printex knowingly included previously published
`designs in its application for copyright registration
`such that the error was other than an inadvertent
`mistake, or that L.A. Printex intended to defraud the
`Copyright Office.” Id. at 854.
`Unlike the plaintiff
`in L.A. Printex, Fiesta
`knowingly included previously published designs in its
`application to register an unpublished collection. Fiesta
`was aware that it had sold yards of fabric to customers
`prior to registering the 1461 Design as part of an
`unpublished collection. Although Fiesta asserts that it
`did not believe that such sales constituted publication
`as a matter of law, Fiesta provides no reasonable basis
`for this belief. Fiesta’s lack of authority or plausible
`explanation for its position distinguishes this case from
`others in which a claimant’s good faith or inadvertent
`mistake did not constitute a knowing inaccuracy. See
`Unicolors, 853 F.3d at 990–91 (holding claimant’s
`inadvertent exclusion of source artwork
`from
`application did not invalidate registration because the
`copyright application form is a “minefield for applicants
`attempting to properly register a derivative work” and
`it was a “good faith mistake”); Archie MD, Inc. v.
`Elsevier, Inc., 261 F.Supp.3d 512, 520 (S.D.N.Y. 2017)
`(holding claimant had no knowledge of inaccuracy
`because whether licensing the work constituted
`
`
`
`App. 16
`legal question”).
`publication was an “unsettled
`Moreover, “the term ‘knowingly’ does not necessarily
`have any reference to a culpable state of mind or to
`knowledge of the law. As Justice Jackson correctly
`observed, ‘the knowledge requisite to knowing violation
`of a statute is factual knowledge as distinguished from
`knowledge of the law.’” Bryan v. United States, 524
`U.S. 184, 192 (1998) (citation omitted).
`Fiesta claims that L.A. Printex requires a showing
`of fraud on the part of the claimant in order to
`invalidate a copyright registration. L.A. Printex did not
`address this issue, however. Although we stated that
`there was no evidence that the claimant intended to
`defraud the Copyright Office, we did not consider the
`issue of whether a showing of fraud is required to
`invalidate a registration pursuant to § 411(b). L.A.
`Printex, 676 F.3d at 853–54. We hold that Fiesta’s
`argument is foreclosed by the plain language of
`§ 411(b), which does not require a showing of fraud, but
`only that the claimant included inaccurate information
`on the application “with knowledge that it was
`inaccurate.” 17 U.S.C. § 411(b)(1)(A); see also Lamie v.
`United States Tr., 540 U.S. 526, 534 (2004) (“It is well
`established that ‘when the statute’s language is plain,
`the sole function of the courts—at least where the
`disposition required by the text is not absurd—is to
`enforce it according to its terms.’” (citation omitted)).4
`
`4 The Eleventh Circuit held in Roberts v. Gordy that a showing of
`“intentional or purposeful concealment of relevant information” is
`required to render a registration invalid. 877 F.3d 1024, 1029 (11th
`Cir. 2017) (citation omitted). The court relied upon its prior
`precedent, however, without attention to the plain language of
`
`
`
`App. 17
`Fiesta was admittedly aware of the facts regarding
`its fabric sales; its inclusion of designs that it knew had
`been sold, and therefore published, in an unpublished
`collection cannot be characterized as an inadvertent or
`good faith mistake. Thus, Fiesta included inaccurate
`information on its application with knowledge that it
`was inaccurate.
`III. Whether the Register of Copyrights Would Refuse
`Registration
`Pursuant to § 411(b)(1)(B), we next consider
`whether the inaccuracy would have caused the Register
`of Copyrights to refuse registration. The Register has
`indicated that it would not register a single group of
`published and unpublished works. Compendium III
`§ 1106.1. In L.A. Printex, the (unpublished) design at
`issue was registered as part of an unpublished
`collection. The claimant mistakenly included two
`published designs in the unpublished collection. The
`claimant corrected
`the mistake by
`filing a
`supplemental registration removing the published
`designs from the unpublished collection. The Copyright
`Office accepted the correction and issued a certificate
`of supplementary registration. L.A. Printex, 676 F.3d at
`845–46. The Copyright Office’s decision to issue a
`certificate of supplementary registration “shows that
`the error was not one that ‘if known, would have
`caused
`the Register of Copyrights
`to refuse
`
`§ 411(b). Section 411(b) does not mention intentional concealment
`or fraud, but only that the information was included “with
`knowledge that it was inaccurate.” 17 U.S.C. § 411(b)(1).
`
`
`
`App. 18
`Id. at 854
`
`(quoting 17 U.S.C.
`
`registration.’”
`§ 411(b)(1)(B)).
`The district court noted that this is the inverse of
`the situation faced in L.A. Printex. Fiesta did not
`obtain a supplementary registration, but registered the
`1461 Design separately. Unlike the copyright owner in
`L.A. Printex, Fiesta could not correct its registration by
`removing the published designs, including the 1461
`Design. Had it done so, the ‘509 Registration would
`properly include only unpublished designs, but it could
`not serve as a basis for this action, because it would no
`longer include the 1461 Design. The district court
`determined that because the Copyright Office would
`not have registered the 1461 Design as part of an
`unpublished collection, § 411(b)(1)(B) was met and the
`registration was invalid as to the 1461 Design.
`In light of the Register’s response, we agree that
`§ 411(b)(1)(B) is satisfied and that the inaccuracy in the
`‘509 registration renders it invalid as to the 1461
`Design. Fiesta
`included
`inaccurate
`information
`regarding the 1461 Design in its application, knew the
`information was inaccurate, and the Register would
`have refused registration of the collection if it had been
`aware of the inaccuracy. The district court properly
`declared the ‘509 registration invalid as to the 1461
`Design, pursuant to § 411(b).5 Because a valid
`
`5 Relying upon Syntek Semiconductor Co. v. Microchip Tech. Inc.,
`307 F.3d 775 (9th Cir. 2002), Fiesta argues that the district court
`exceeded its authority by “cancelling” its registration. Fiesta’s
`argument is misplaced. In Syntek, the plaintiff sought a
`declaration that the defendant’s copyright was invalid because it
`did not comply with the applicable regulations by depositing the
`
`
`
`App. 19
`registration is a precondition to bringing an action for
`infringement, we affirm the district court’s grant of
`summary judgment in favor of Defendants.
`IV.
`Attorney’s Fees
`Fiesta asserts that the district court erred by
`granting attorney’s fees in favor of Defendants.
`Exercising its discretion pursuant to 17 U.S.C. § 505,
`the district court considered several factors, including
`whether Defendants were the prevailing parties, the
`degree of success obtained, whether the purposes of the
`Copyright Act were furthered, whether an award
`against an impecunious party would create a chilling
`effect, the plaintiff’s motivation in bringing suit (bad
`faith), whether the plaintiff’s legal positions were
`frivolous or unreasonable, and
`the need
`for
`compensation and deterrence. See Fogerty v. Fantasy,
`Inc., 510 U.S. 517, 534 (1994) (non-exclusive factors to
`consider include “frivolousness, motivation, objective
`unreasonableness . . . and the need in particular
`circumstances
`to advance considerations of
`compensation and deterrence”); Kirtsaeng v. John
`Wiley & Sons, Inc., 136 S.Ct. 1979, 1989 (2016) (in
`
`original source code. We determined that, under the doctrine of
`primary jurisdiction, the issue was properly considered first by the
`Register of Copyrights, which has the authority to cancel a
`registration if the deposit material does not meet certain legal
`requirements. Syntek did not address the issue before us—
`whether a plaintiff failed to satisfy the registration requirement of
`§ 411(a) because an inaccuracy in the application rendered the
`registration invalid under § 411(b). The district court did not
`“cancel” Fiesta’s registration, but held it to be invalid pursuant to
`§ 411(b), which was within the district court’s authority under the
`statute.
`
`
`
`App. 20
`assessing fees, the court should give “substantial
`weight” to the objective reasonableness of the opposing
`party’s position, “but also taking into account all other
`relevant factors”).
`in
`factor
`important
`“The most
`determining whether to award fees under
`the Copyright Act, is whether an award
`will further the purposes of the Act.” To
`reiterate, the Act’s “primary objective” is
`to “encourage the production of original
`literary, artistic, and musical expression
`for the good of the public.” While no
`longer a prerequisite to a fee award, the
`“objective unreasonableness (both in the
`factual and in the legal components of the
`case)” of a losing party’s claim can be a
`relevant indicator of whether the Act’s
`primary objective is being served by the
`litigation.
`SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d
`1273, 1280 (9th Cir. 2013) (citations omitted). “A
`successful defense furthers the purposes of the
`Copyright Act
`just as much as a successful
`infringement suit does.” Inhale, Inc. v. Starbuzz
`Tobacco, Inc., 755 F.3d 1038, 1043 (9th Cir. 2014).
`The district court concluded that the following
`factors weighed in favor of a fee award: Defendants
`were the prevailing parties; the degree of success
`obtained (“modest weight”); promoting the purposes of
`the Copyright Act by encouraging defendants to
`advance meritorious defenses; no chilling effect;
`Plaintiff advanced some “objectively unreasonable”
`
`
`
`App. 21
`legal positions (“weighs slightly in favor of a fee
`award”); and compensating Defendants and deterring
`Plaintiff fr
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