No. 20-915
`
`IN THE
`Supreme Court of the United States
`
`UNICOLORS, INC.,
`
`v.
`
`H&M HENNES & MAURITZ, L.P.,
`
`
`
`Petitioner,
`
`Respondent.
`
`
`On Writ of Certiorari to the
`United States Court of Appeals
`for the Ninth Circuit
`
`Brief of the Copyright Alliance as Amicus Curiae in
`Support of Petitioner
`
`
`
`
`
`ELAINE J. GOLDENBERG
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Ave. N.W.
`Suite 500 E
`Washington, DC 20001
`(202) 220-1100
`Elaine.Goldenberg@mto.com
`
`
` KELLY M. KLAUS
`Counsel of Record
`J. MAX ROSEN
`MUNGER, TOLLES & OLSON LLP
`560 Mission St., 27th Floor
`San Francisco, CA 94105
`(415) 512-4000
`Kelly.Klaus@mto.com
`
`
`
`
`
`
`Counsel for Amicus Curiae
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE
`Supreme Court of the United States
`
`UNICOLORS, INC.,
`
`v.
`
`H&M HENNES & MAURITZ, L.P.,
`
`
`
`Petitioner,
`
`Respondent.
`
`
`On Writ of Certiorari to the
`United States Court of Appeals
`for the Ninth Circuit
`
`Brief of the Copyright Alliance as Amicus Curiae in
`Support of Petitioner
`
`
`
`
`
`ELAINE J. GOLDENBERG
`MUNGER, TOLLES & OLSON LLP
`601 Massachusetts Ave. N.W.
`Suite 500 E
`Washington, DC 20001
`(202) 220-1100
`Elaine.Goldenberg@mto.com
`
`
` KELLY M. KLAUS
`Counsel of Record
`J. MAX ROSEN
`MUNGER, TOLLES & OLSON LLP
`560 Mission St., 27th Floor
`San Francisco, CA 94105
`(415) 512-4000
`Kelly.Klaus@mto.com
`
`
`
`
`
`
`Counsel for Amicus Curiae
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`II.
`
`SUMMARY OF ARGUMENT
`ARGUMENT
`Congress Intended The Copyright
`I.
`Registration Process To Be Streamlined
`And Accessible
`Invalidating A Registration On The
`Basis Of An Error Has Serious
`Consequences For A Copyright Owner,
`Which Is Why Section 411(b)(1)(A)
`Requires That The Registrant Actually
`Know Of The Error
`III. Consistent With The Purposes Of
`Copyright Registration And The Severe
`Consequences Of Invalidation, Section
`411(b)(1)(A) Requires Actual Knowledge
`Of An Inaccuracy In An Application For
`Registration
`CONCLUSION
`
`Page
`
`2
`4
`
`4
`
`16
`
`20
`30
`
`
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`
`In re Aimster Copyright Litigation,
`334 F.3d 643 (7th Cir. 2003) ................................ 29
`
`Balsamo/Olson Group Inc. v. Bradley
`Place Limited Partnership,
`966 F. Supp. 757 (C.D. Ill. 1996).......................... 25
`
`Cosm. Ideas, Inc. v. AC/Interactivecorp.,
`606 F.3d 612 (9th Cir. 2010) ................................. 6
`
`Davis v. Michigan Department of
`Treasury, 489 U.S. 803 (1989).............................. 25
`
`Day-Brite Lighting, Inc. v. Sta-Brite
`Fluorescent Manufacturing Co.,
`308 F.2d 377 (5th Cir. 1962) ................................ 20
`
`DeliverMed Holdings, LLC v.
`Schaltenbrand,
`734 F.3d 616 (7th Cir. 2013) .............. 17, 27, 28, 29
`
`Derek Andrew, Inc. v. Poof Apparel
`Corp., 528 F.3d 696 (9th Cir. 2008) ................. 7, 18
`
`Eckes v. Card Prices Update,
`736 F.2d 859 (2d Cir. 1984) ............................ 24, 25
`
`Energy Intelligence Group, Inc. v. Kayne
`Anderson Capital Advisors, L.P.,
`948 F.3d 261 (5th Cir. 2020) ................................ 13
`
`
`
`
`
`iii
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`Fourth Estate Public Benefit Corp. v.
`Wall-Street.com, LLC,
`139 S. Ct. 881 (2019) ........................................ 6, 19
`
`Freedman v. Milnag Leasing Corp.,
`20 F. Supp. 802 (S.D.N.Y. 1937) .......................... 24
`
`GAF Bldg. Materials Corp. v. Elk Corp.
`of Dallas,
`90 F.3d 479 (Fed. Cir. 1996)................................... 5
`
`Global-Tech Appliances, Inc. v. SEB
`S.A., 563 U.S. 754 (2011) ............................... 26, 29
`
`Gold Value International Textile, Inc. v.
`Sanctuary Clothing, LLC,
`925 F.3d 1140 (9th Cir. 2019) .......................passim
`
`Intel Corp. Investment Policy Committee
`v. Sulyma, 140 S. Ct. 768 (2020) .......................... 23
`
`Internet Products LLC v. LLJ
`Enterprises, Inc.,
`2020 WL 6883430 (D.N.J. Nov. 24,
`2020)...................................................................... 15
`
`Johnson v. Jones,
`149 F.3d 494 (6th Cir. 1998) ............................ 7, 18
`
`L.A. Printex Industries, Inc. v.
`Aeropostale, Inc.,
`676 F.3d 841 (9th Cir. 2012) .................... 14, 20, 27
`
`
`
`
`
`iv
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`Lamps Plus, Inc. v. Seattle Lighting
`Fixture Co.,
`345 F.3d 1140 (9th Cir. 2003) ........................ 13, 20
`
`Lenert v. Duck Head Apparel Co.,
`1996 WL 595691 (5th Cir. 1996)
`(unpublished) .................................................. 13, 24
`
`LZT/Filliung Partnership, LLP v.
`Cody/Braun & Associates, Inc.,
`117 F. Supp. 2d 745 (N.D. Ill. 2000) .................... 25
`
`Masquerade Novelty, Inc. v. Unique
`Industries, Inc.,
`912 F.2d 663 (3d Cir. 1990) .................................. 25
`
`In re Napster, Inc. Copyright Litigation,
`191 F. Supp. 2d 1087 (N.D. Cal.
`2002).......................................................... 13, 17, 26
`
`Reed Elsevier, Inc. v. Muchnick,
`559 U.S. 154 (2010) ................................................ 7
`
`Roberts v. Gordy,
`877 F.3d 1024 (11th Cir. 2017) ...................... 10, 27
`
`Rogers v. Better Business Bureau of
`Metropolitan Houston, Inc.,
`887 F. Supp. 2d 722 (S.D. Tex. 2012) .................. 15
`
`
`
`
`
`v
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`SCA Hygiene Products Aktiebolag v.
`First Quality Baby Products, LLC,
`137 S. Ct. 954 (2017) ............................................ 21
`
`St. Luke’s Cataract & Laser Inst., P.A. v.
`Sanderson,
`573 F.3d 1186 (11th Cir. 2009) ................ 27, 29, 30
`
`Unicolors, Inc. v. H&M Hennes &
`Mauritz, L.P.,
`959 F.3d 1194 (9th Cir. 2020) ...................... passim
`
`Unicolors, Inc. v. Urban Outfitters, Inc.,
`853 F.3d 980 (9th Cir. 2017) ................................ 11
`
`Urantia Foundation v. Maaherra,
`114 F.3d 955 (9th Cir. 1997) .................... 13, 24, 27
`
`STATUTES
`
`17 U.S.C. 102(a) ........................................................... 6
`
`17 U.S.C. 106 ............................................................... 6
`
`17 U.S.C. 409 ....................................................... 11, 12
`
`17 U.S.C. 410(c) ....................................................... 6, 7
`
`17 U.S.C. 411(a) ........................................................... 7
`
`17 U.S.C. 411(b)(1) ..............................................passim
`
`17 U.S.C. 411(b)(2) ..................................................... 17
`
`
`
`
`
`vi
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`17 U.S.C. 412(2) ..................................................... 7, 18
`
`17 U.S.C. 504(c)(2) ..................................................... 23
`
`17 U.S.C. 506(a)(1)(C) ................................................ 23
`
`35 U.S.C. 111-123 ........................................................ 5
`
`REGULATIONS
`
`37 C.F.R. § 202.3(b)(4)(i)(A) ....................................... 11
`
`37 C.F.R. § 202.4(h) ................................................... 11
`
`LEGISLATIVE MATERIALS
`
`H.R. Rep. No. 94-1476 (1976) ..................................... 6
`
`H.R. Rep. No. 110-617 (2008) .................................... 26
`
`OTHER AUTHORITIES
`
`Christopher Buccafusco et al., Intelligent
`Design, 68 Duke L.J. 75 (2018) .............................. 8
`
`Deborah R. Gehardt, Copyright
`Publication on the Internet, 60 IDEA:
`L. Rev. Franklin Pierce Ctr. for
`Intell. Prop. 1 (2020)............................................. 15
`
`
`
`
`
`vii
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`Dotan Oliar et al., Copyright
`Registrations: Who, What, When,
`Where, and Why, 92 Tex. L. Rev.
`2211 (2014) ............................................................. 8
`
`Melville B. Nimmer et al., Nimmer on
`Copyright (2021) ..................................................... 6
`
`Stanford Law School, Law & Policy Lab,
`Revising the Requirements for
`Software Registration (2018),https://
`law.stanford.edu/wp-content/uploads/
`2018/01/Software_Registration_
`USCO_Report_1-2-18_FINAL.pdf ......................... 9
`
`U.S. Copyright Office, Copyright Basics
`(2021), https://www.copyright.gov/
`circs/circ01.pdf ........................................................ 6
`
`U.S. Copyright Office, Copyright In
`Derivative Works and Compilations
`(2020), https://www.copyright.gov/
`circs/circ14.pdf ...................................................... 12
`
`U.S. Copyright Office, Form TX (2019),
`https://www.copyright.gov/
`forms/formtx.pdf; .................................................. 12
`
`U.S. Copyright Office, Notice of Inquiry,
`84 Fed. Reg. 66,328 (Nov. 26, 2019) ........ 11, 14, 15
`
`
`
`
`
`viii
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page
`
`U.S. Copyright Office, Standard
`Application Help: Author,
`https://www.copyright.gov/eco/help-
`author.html ........................................................... 12
`
`UMass Copyright Librarian/Attorney’s
`Office, Copyright News & Opinion,
`https://blogs.umass.edu/lquilter/
`copyright/should-i-register-my-
`copyright/ ................................................................ 8
`
`World Intell. Prop. Org., Frequently
`Asked Questions: Patent Basics,
`https://www.wipo.int/patents/en/
`faq_patents.html .................................................... 8
`
`
`
`
`
`1
`
`
`
`INTEREST OF AMICUS CURIAE1
`The Copyright Alliance is dedicated to advocating
`policies that promote and preserve the value of copy-
`right and to protecting the rights of creators and inno-
`vators. It is a nonprofit, nonpartisan 501(c)(4) public
`interest and educational organization. The Copyright
`Alliance represents the copyright interests of over 1.8
`million individual creators and over 13,000 organiza-
`tions across the entire spectrum of creative industries,
`including graphic and visual artists, photographers,
`writers, musical composers and recording artists, jour-
`nalists, documentarians and filmmakers, and software
`developers, as well as the small and large businesses
`that support them.
`The Copyright Alliance’s members depend on copy-
`right law to protect their works against infringement
`and to sustain their ability to continue creating ex-
`pressive works for the benefit of the public. Members
`thus depend on effective, efficient procedures for reg-
`istering and enforcing their copyrights. Most members
`register their own works, and many do so without the
`assistance of counsel. Members also depend on the
`benefits that registration confers, including in partic-
`ular the right to proceed to federal court to defend and
`enforce their copyrights and the ability to seek mean-
`ingful remedies for infringement such as statutory
`damages and attorneys’ fees.
`
`
`1 Counsel for all parties have filed blanket consents to the filing
`of amicus briefs. In accordance with Rule 37.6, amicus confirms
`that no party or counsel for any party authored this brief in whole
`or in part, and that no person other than amicus or its counsel
`made any monetary contribution intended to fund the prepara-
`tion or submission of this brief.
`
`
`
`
`
`2
`
`
`
`In the Prioritizing Resources and Organization for
`Intellectual Property Act of 2008, Pub. L. No. 110-403,
`122 Stat. 4256 (PRO IP Act or Act), Congress codified
`decades of case law holding that unknowing errors in
`copyright registrations do not invalidate those regis-
`trations. See 17 U.S.C. 411(b)(1). That rule properly
`acknowledges the importance of preventing copyright
`registrants from knowingly misleading the Copyright
`Office, while ensuring that copyright registrants who
`make innocent mistakes do not effectively lose their
`ability to enforce their copyrights against infringers in
`federal court. The Copyright Alliance’s members, who
`are both plaintiffs and defendants in infringement lit-
`igation, have an interest in ensuring that the Act is
`interpreted so as to further Congress’s intent and to
`ensure that the registration process will remain effi-
`cient, effective, and fair for all interested parties.
`SUMMARY OF ARGUMENT
`The question presented in this case is what it
`means for a copyright registrant to “include” inaccu-
`rate information on a copyright registration with
`“knowledge that” the information is inaccurate. 17
`U.S.C. 411(b)(1)(A). The text of that provision and the
`context in which it operates make clear that a copy-
`right registration may be invalidated on the basis of
`an error only if a registrant has actual knowledge of
`that error when submitting the registration. Con-
`structive knowledge—the standard applied by the
`Ninth Circuit in the decision below—does not suffice.
`The purpose and contours of copyright registration
`help to explain the importance of an actual knowledge
`standard. Congress intended for copyright registra-
`tion to be a voluntary, easily accessible system. Con-
`
`
`
`
`
`3
`
`
`gress did not design the registration system to scruti-
`nize the validity of a claimed copyright, as is done in
`the system for issuing patents, but instead to create a
`centralized database of works claimed to be copy-
`righted. Many thousands of creators use the registra-
`tion system each year, and many of them register their
`works without the assistance of counsel.
`Although accessibility is a critical facet of the reg-
`istration process, in practice registration can pose
`challenges and make unknowing errors inevitable. In-
`formation that the Copyright Act requires to be in-
`cluded in registration, such as the identification of the
`author or the date of publication, are seemingly simple
`items that in many cases involve complex legal ques-
`tions, the answers to which are not always intuitive.
`On top of that, the Copyright Office, which is charged
`with administering the registration process, has its
`own rules and practices that add still additional com-
`plexity and thereby increase the possibility of unknow-
`ing errors on applications for registration. Given the
`complexity inherent in the process and the conse-
`quences that flow from invalidating a registration, a
`rule that would allow registrations to be invalidated
`on a standard of constructive knowledge of an inaccu-
`racy would undermine the interests and rights Con-
`gress intended the system to protect.
`Invalidating a copyright registration on the basis of
`constructive knowledge also risks providing a windfall
`to a culpable defendant while destroying the ability of
`an innocent copyright holder to seek redress for clear
`and even willful infringement. The argument that a
`copyright registration is invalid because of an error is
`almost always a purely technical defense that does not
`
`
`
`
`
`4
`
`
`suggest that a defendant is innocent of copyright in-
`fringement. But invalidating a registration on the ba-
`sis of an error made without actual knowledge can sub-
`stantially delay copyright litigation in a way that may
`be prohibitively expensive for an individual copyright
`owner; cut off vital remedies such as statutory dam-
`ages and attorneys’ fees on which copyright owners
`rely; and even result in dismissal, with no ability for
`the copyright owner thereafter to refile a timely suit.
`The draconian consequences of such invalidation un-
`derscore why Congress would permit those conse-
`quences only when doing so truly deters abuse of the
`copyright registration system—i.e., when a registrant
`has actual knowledge of an error.
`Against that backdrop, it is clear that Section
`411(b)(1)(A) commands an actual knowledge standard
`and does not contemplate that constructive knowledge
`could suffice. That conclusion is bolstered by exami-
`nation of decades of precedent that preceded the PRO
`IP Act and that universally applied at least an actual
`knowledge standard to determine whether an error in
`a copyright registration should invalidate that regis-
`tration. Nothing in the PRO IP Act suggests an intent
`by Congress to lower that preexisting knowledge
`standard, thus allowing even willful infringers to use
`Section 411(b) as a tool to delay and defeat meritorious
`copyright suits.
`
`I.
`
`ARGUMENT
`Congress Intended The Copyright Regis-
`tration Process To Be Streamlined And Ac-
`cessible
`The relevant provisions of the PRO IP Act, 17
`U.S.C. 411, are part of a comprehensive statutory
`
`
`
`
`
`5
`
`
`scheme that governs and incentivizes copyright regis-
`trations and provides copyright owners with certain
`rights when they enforce their copyrights in federal
`court. That statutory context makes clear that a
`standard that allows unknowing errors to destroy the
`validity of copyright registrations would undermine
`the operation and purpose of the copyright registration
`system.
`1. a. The copyright registration process is com-
`pletely different from and serves a fundamentally dif-
`ferent purpose than the patent application process.
`Applying for a patent is mandatory for any party that
`seeks to possess patent rights in an invention. See,
`e.g., GAF Bldg. Materials Corp. v. Elk Corp. of Dallas,
`90 F.3d 479, 483 (Fed. Cir. 1996) (“[A] patent does not
`exist until it is granted”). The patent process is com-
`plex and rigorous because the United States Patent
`and Trademark Office must scrutinize the patent ap-
`plication in great detail to determine whether the ap-
`plicant has satisfied the various prerequisites for ob-
`taining patent protection. See 35 U.S.C. 111-123.
`Copyright registration, in contrast, is voluntary.
`The process is not designed to determine the validity
`of the underlying intellectual-property right. Indeed,
`in the copyright system, unlike the patent system, a
`valid intellectual-property right does not require any
`registration, application, or other official approval.
`See 17 U.S.C. 102(a). Thus, “[a]n author gains ‘exclu-
`sive rights’ in her work,” i.e., a valid copyright, “imme-
`diately upon the work’s creation,” even if she has not
`taken any steps to register her copyright. Fourth Est.
`Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct.
`881, 887 (2019) (quoting 17 U.S.C. 106); see U.S. Cop-
`
`
`
`
`
`6
`
`
`yright Office, Copyright Basics 4 (2021) (Copyright Ba-
`sics) (“Copyright exists automatically in an original
`work of authorship once it is fixed in a tangible me-
`dium”), https://www.copyright.gov/circs/circ01.pdf.
`Not surprisingly, then, when a copyright owner
`registers a copyright, her “claim to copyright is not ex-
`amined for basic validity before a [registration] certif-
`icate is issued.” 3 Nimmer on Copyright § 12.11 (2021)
`(quoting H.R. Rep. No. 94-1476, at 157 (1976)). The
`Copyright Office does engage in a brief review of
`whether the subject matter of the copyright is copy-
`rightable, and for that reason registration can provide
`prima facie evidence of a valid copyright in subsequent
`litigation under certain circumstances. See Cosm.
`Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 621
`n.13 (9th Cir. 2010), abrogated on other grounds
`by Fourth Est. Pub. Benefit Corp. v. Wall-Street.com,
`LLC, 139 S. Ct. 881 (2019); 17 U.S.C. 410(c) (if regis-
`tration occurs within five years of publication, the reg-
`istration “constitute[s] prima facie evidence of the va-
`lidity of the copyright,” although the “evidentiary
`weight” of such presumption remains subject to the
`court’s discretion). But beyond that presumption of
`validity, registration does not establish that a copy-
`right is valid, and it is not intended to do so. See Cosm.
`Ideas, 606 F.3d at 621 n.13.
`Instead, in general, the purpose of copyright regis-
`tration is to create a central database of registered
`works, as well as a collection of deposit copies of regis-
`tered works in the Library of Congress. The database
`of registered works assists authors, copyright owners,
`members of the general public, and even potential in-
`fringers by providing a comprehensive listing of works
`as to which owners have claimed copyright protection.
`
`
`
`
`
`7
`
`
`See Copyright Basics 5; see also, e.g., Derek Andrew,
`Inc. v. Poof Apparel Corp., 528 F.3d 696, 700 (9th Cir.
`2008) (incentives for registration encourage creators to
`register their works and “encourage[] potential in-
`fringers to check the Copyright Office’s database”);
`Johnson v. Jones, 149 F.3d 494, 505 (6th Cir. 1998).
`Although registration is not a prerequisite for cop-
`yright protection, Congress provided important statu-
`tory incentives—in addition to the presumption of va-
`lidity discussed above, see 17 U.S.C. 410(c)—for copy-
`right claimants to register their works. First, alt-
`hough an infringer may be held liable for infringement
`occurring prior to registration, a copyright owner must
`register the work with the Copyright Office before fil-
`ing an infringement action in court. See 17 U.S.C.
`411(a). The requirement is not jurisdictional, but it
`may be enforced by defendants. See Reed Elsevier, Inc.
`v. Muchnick, 559 U.S. 154, 157-158 (2010). Second, in
`order to seek statutory damages or recover attorneys’
`fees under the Copyright Act as a remedy for infringe-
`ment, the copyright owner must (subject to certain ex-
`ceptions) register her work before the infringement
`commences or within three months of the first publi-
`cation of the work. See 17 U.S.C. 412(2).
`Other benefits flow to copyright holders by virtue
`of including their works in the Copyright Office’s cen-
`tralized database. For instance, inclusion in that da-
`tabase can provide notice to individuals who might
`wish to license the work, thus providing potential in-
`come to creators. See, e.g., Dotan Oliar et al., Copy-
`right Registrations: Who, What, When, Where, and
`Why, 92 Tex. L. Rev. 2211, 2216-2219 (2014).
`
`
`
`
`
`8
`
`
`
`b. As a result of the accessibility and streamlined
`nature of the registration process (particularly as com-
`pared to the patent system), the process is not under-
`stood to require the routine use of legal counsel. See,
`e.g., UMass Copyright Librarian/Attorney’s Office,
`Copyright News & Opinion (“Registration is relatively
`easy, and inexpensive: You can do it at the Copyright
`Office, for about $35, with an online form. You don’t
`have to have a lawyer do it, and you probably don’t
`need to hire a service.”), https://blogs.umass.edu/
`lquilter/copyright/should-i-register-my-copyright/;
`Christopher Buccafusco et al., Intelligent Design, 68
`Duke L.J. 75, 96-97 (2018) (“If they do want the addi-
`tional benefits of copyright registration, creators can
`pay $40 and fill out a very simple form online, no law-
`yers or bankers required.”); cf. World Intell. Prop.
`Org., Frequently Asked Questions: Patent Basics
`(“[G]iven the complexity of patent documents and the
`legal skills required, such as claim drafting, it is highly
`advisable to seek legal assistance from a patent attor-
`ney/agent when drafting a patent application.”),
`https://www.wipo.int/patents/en/faq_patents.html.
`Countless copyright holders register their works
`every year without using the services of lawyers. Ami-
`cus is not aware of any compiled statistics on the spe-
`cific number of copyright holders who register their
`works annually without using legal counsel, but the
`number is likely quite high. Between 2008 and 2012,
`there were more than 2.3 million copyright registra-
`tions. See Oliar, supra, at 2220 (compiling and ana-
`lyzing statistics from the Copyright Office). Almost
`half of those registrations were submitted by individ-
`uals rather than businesses. See id. at 2225. Individ-
`uals were more likely to submit registrations for the
`
`
`
`
`
`9
`
`
`kinds of smaller-scale works that do not require exten-
`sive financial resources to create, such as dramatic
`works, musical works, and sound recordings. See ibid.
`And individuals were also more likely than businesses
`to register unpublished works, which in many cases
`will not have generated revenue for the creator at the
`time of registration and may not do so post-registra-
`tion. See id. at 2226 (noting that individuals were
`more likely than businesses to register unpublished
`works, which may reflect that “more valuable works
`are more likely to be commercialized and offered to the
`public”).
`Many individual creators are in no position to hire
`attorneys to assist them with registering their works.
`Anecdotal evidence indicates that even some busi-
`nesses are unable to do so. See, e.g., Stanford Law
`School, Law & Policy Lab, Revising the Requirements
`for Software Registration 25 (2018) (“In interviews, in-
`dependent developers, as well as engineers and busi-
`ness leaders for smaller companies and nonprofits,
`consistently revealed that they find the [Copyright Of-
`fice] Circular guidelines difficult for non-lawyers to
`understand. They further pointed out that they may
`not engage or have access to lawyers for registration.”),
`https://law.stanford.edu/wp-content/uploads/2018/01/
`Software_Registration_USCO_Report_1-2-18_FI-
`NAL.pdf. And many businesses that do use lawyers
`for some services may not regularly use counsel in the
`process of filling out and submitting copyright regis-
`trations.
`The fact that copyright holders are able to apply for
`copyright registrations without the expense of using
`legal counsel serves the objectives of the registration
`
`
`
`
`
`10
`
`
`process. Creators of all stripes are creating new, cop-
`yrighted works every day. See, e.g., Buccafusco et al.,
`supra, at 96-97 (“Every reader of this article has cre-
`ated at least one and probably several copyrights to-
`day, just by living an ordinary life.”). If applying for a
`copyright registration required a law degree, then the
`process would be prohibitively expensive for numerous
`individual creators and small businesses, who would
`likely choose not to register their works at all unless
`and until they had a reason to litigate. See Oliar, su-
`pra, at 2240.
`2. Although the registration process is intended to
`be accessible and streamlined, the potential for unin-
`tentional errors is high. Complexities presented by the
`registration process can create a significant and una-
`voidable risk that creators will make unknowing er-
`rors in registering their copyrights.
`First, the individuals completing the registration
`forms often not only lack formal legal training but also
`are not well versed in the intricacies of copyright law.
`Indeed, those individuals are often the creators them-
`selves. Cf. Roberts v. Gordy, 877 F.3d 1024, 1030 (11th
`Cir. 2017) (“Rappers are skilled in poetry and
`rhythm—not necessarily in proper copyright registra-
`tion procedures.”). Some individuals may register
`hundreds or even thousands of works annually—and
`that volume substantially increases the potential for
`errors both factual and legal.
`Second, although the copyright registration process
`is intended to be straightforward, the specifics of the
`process frequently involve legally complex questions
`that compound the risk of unknowing errors. Such is-
`sues may arise in the context of providing the limited
`
`
`
`
`
`11
`
`
`information that must be included in a copyright reg-
`istration by statute. See 17 U.S.C. 409. They may also
`arise when a registrant attempts to comply with the
`numerous requirements created by the Copyright Of-
`fice to implement Congress’s statutory scheme—re-
`quirements that detail, for instance, when a registrant
`can or cannot file multiple works under a single regis-
`tration. See, e.g., Unicolors, Inc. v. H&M Hennes &
`Mauritz, L.P., 959 F.3d 1194, 1198 (9th Cir. 2020)
`(“collection of published works” must be “ ‘included in
`a single unit of publication’ ” (quoting 37 C.F.R.
`§ 202.3(b)(4)(i)(A)); U.S. Copyright Office, Notification
`of Inquiry, 84 Fed. Reg. 66,328, 66,330 (Dec. 4, 2019)
`(providing examples of regulations governing when
`multiple works can or cannot be included in the same
`registration, under which “groups of up to 750 un-
`published photographs created by the same author for
`whom the copyright claimant is the same can be regis-
`tered with one application and filing fee” (citing 37
`C.F.R. § 202.4(h)). In that regard, it is notable that the
`Compendium of U.S. Copyright Office Practices (3d ed.
`2021), which is intended to provide instructions to
`Copyright Office staff as well as guidance to regis-
`trants and practitioners, contains over 1,300 pages of
`information, the lion’s share of that dealing with mat-
`ters related to copyright registration. Moreover, many
`of the legal questions that can arise as a result of reg-
`istration requirements may be unsettled or the subject
`of disagreements among different courts. See, e.g.,
`Unicolors, Inc. v. Urb. Outfitters, Inc., 853 F.3d 980,
`990 (9th Cir. 2017) (requirements of copyright regis-
`tration can present a “minefield for applicants at-
`tempting to properly register a * * * work”).
`
`
`
`
`
`12
`
`
`
`A closer examination of the information that a reg-
`istrant must submit to the Copyright Office helps il-
`lustrate the potential pitfalls. That information in-
`cludes the author of the work, whether the work has
`been published and the date and nation of first publi-
`cation, and the nature of the work, including whether
`it is a compilation or derivative work. See 17 U.S.C.
`409; see also U.S. Copyright Office, Copyright In De-
`rivative Works and Compilations 3-4 (Copyright in De-
`rivative Works) (2020) (listing required information in
`copyright registrations), https://www.copyright.gov/
`circs/circ14.pdf; U.S. Copyright Office, Form TX
`(2019), https://www.copyright.gov/forms/formtx.pdf;
`U.S. Copyright Office, Standard Application Help: Au-
`thor (“You should identify the author by providing the
`full name of the person who created the work unless
`the work
`is anonymous or pseudonymous.”),
`https://www.copyright.gov/eco/help-author.html.
`Those categories of information may appear straight-
`forward—and many copyright holders who are not
`themselves lawyers may well believe exactly that, un-
`til they discover otherwise in the middle of a copyright
`suit.
`The identity of the author of a work, a seemingly
`obvious matter, may in fact be fraught with legal com-
`plexity. For instance, the Copyright Office acknowl-
`edges that “[t]he concept of work made for hire can be
`complicated and has serious consequences for both the
`individual who creates the work and the hiring party
`who is considered to be the author and copyright owner
`of the work.” Copyright Basics 3. Relying on that very
`ambiguity, defendants accused of infringement have in
`many cases attempted to invalidate registrations by
`arguing that plaintiffs misidentified the author based
`on a misunderstanding of work-for-hire requirements.
`
`
`
`
`
`13
`
`
`See, e.g., Urantia Found. v. Maaherra, 114 F.3d 955,
`956-957 (9th Cir. 1997); In re Napster, Inc. Copyright
`Litig., 191 F. Supp. 2d 1087, 1097-1098 (N.D. Cal.
`2002).
`Ambiguity also may arise as to the nature of the
`copyrighted work. It may be difficult for a registrant—
`even one well-versed in the law—to determine
`whether a work is a derivative work, i.e., “based on or
`derived from one or more already existing works.”
`Copyright in Derivative Works 1. Defendants accused
`of infringement have, again, cited precisely that kind
`of mistake in seeking to invalidate copyright registra-
`tions. See, e.g., Lamps Plus, Inc. v. Seattle Lighting
`Fixture Co., 345 F.3d 1140, 1144-1145 (9th Cir. 2003);
`Lenert v. Duck Head Apparel Co., 1996 WL 595691
`(5th Cir. 1996) (unpublished); see also Energy Intel.
`Grp., Inc. v. Kayne Anderson Cap. Advisors, L.P., 948
`F.3d 261, 278-279 (5th Cir. 2020) (addressing argu-
`ment that registration was inaccurate for failing to
`identify work as a compilation).
`Providing the Copyright Office with information re-
`garding whether the work was “published” and, if so,
`when, 17 U.S.C. 409(8), also has potential pitfalls. Alt-
`hough the meaning of “published” may seem simple,
`the term implicates numerous unsettled legal ques-
`tions. See Copyright In Derivative Works 3-4. Indeed,
`the substantial confusion regarding publication status
`has led the Copyright Office to open a Notice of Inquiry
`(still pending) on the subject. See U.S. Copyright Of-
`fice, Notification of Inquiry, 84 Fed. Reg. 66,328 (Dec.
`4, 2019) (“Commenters to the Office have indicated
`that the distinction between published and un-
`published works is ‘so complex and divergent from an
`intuitive and colloquial understanding of the terms
`
`
`
`
`
`14
`
`
`that it serves as a barrier to registration, especially
`with respect to works that are disseminated online.’ ”);
`see also id. at 66,330 (“A recent Ninth Circuit case il-
`lustrates the consequences an applicant may face if it
`incorrectly indicates on an application for a copyright
`registration that the work at issue is unpublished.”
`(citing Gold Value Int’l Textile, Inc. v. Sanctuary Cloth-
`ing, LLC, 925 F.3d 1140 (9th Cir. 2019)).
`Defendants in many copyright-infringement cases
`(including the instant case) have pointed to such un-
`settled questions in arguing that registrations are in-
`valid because they included errors in describing the
`date or status of publication. See, e.g., Unicolors, 959
`F.3d at 1196; cf. L.A. Printex Indus., Inc. v. Aeropost-
`ale, Inc., 676 F.3d 841, 853 (9th Cir. 2012), as amended
`(June 13, 2012) (inclusion of two published works in an
`unpublished collection was an error, but did not inval-
`idate the registration because the err
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