`APPENDIX
`
`
`
`APPENDIX
`TABLE OF CONTENTS
`Opinion in the United States Court of Appeals for
`the Ninth Circuit
`(November 10, 2022). . . . . . . . . . . . . . . . . . . . . . 1a
`Order Denying Petition
`for Rehearing and
`Rehearing En Banc in the United States Court
`of Appeals for the Ninth Circuit
`(January 18, 2023) . . . . . . . . . . . . . . . . . . . . . . 76a
`Opinion in the United States Supreme Court
`(February 24, 2022) . . . . . . . . . . . . . . . . . . . . . 78a
`Opinion in the United States Court of Appeals for
`the Ninth Circuit
`(March 30, 2020) . . . . . . . . . . . . . . . . . . . . . . . 101a
`Order Denying Defendant’s Motion for Judgment as
`a Matter of Law and Granting Defendant’s
`Motion for a New Trial in the United States
`District Court for the Central District of California
`(August 1, 2018) . . . . . . . . . . . . . . . . . . . . . . . 116a
`
`
`
`FOR PUBLICATION
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`No. 18-56253
`18-56548
`D.C. No. 2:16-cv-02322-AB-SK
`[Filed November 10, 2022]
`____________________________________
`UNICOLORS, INC., a California
`)
`Corporation,
`)
`Plaintiff-Appellee,
`
`v.
`
`))
`
`))
`
`)
`H&M HENNES & MAURITZ, L.P.,
`)
`a New York limited partnership,
`)
`Defendant-Appellant.
`___________________________________ )
`OPINION
`On Remand from the United States Supreme Court
`Before: Carlos T. Bea and Bridget S. Bade, Circuit
`Judges, and Jon P. McCalla,* District Judge.
`Opinion by Judge Bea
`
`* The Honorable Jon P. McCalla, United States District Judge for
`the Western District of Tennessee, sitting by designation.
`
`1a
`
`
`
`SUMMARY**
`_________________________________________________
`Copyright
`On remand from the Supreme Court in this
`copyright-infringement action brought by Unicolors,
`Inc., against H&M Hennes & Mauritz, L.P., the panel
`affirmed the district court’s judgment in general, save
`that it vacated and remanded with instructions to
`grant a new trial, limited only to damages, if Unicolors
`rejects the remittitur amount of $116,975.23.
`Unicolors, which creates designs for use on textiles
`and garments, alleged that a design it created in 2011
`(the EH101 design) is remarkably similar to a design
`printed on garments that H&M began selling in 2015
`(the Xue Xu design). The Supreme Court held that lack
`of either factual or legal knowledge on the part of a
`copyright holder can excuse an inaccuracy in a
`copyright registration under the Copyright Act’s safe-
`harbor provision, 17 U.S.C. § 411(b)(1). Accordingly,
`the panel reviewed anew the threshold issue whether
`Unicolors holds a valid copyright in registration No.
`VA-1-770-400 (the ’400 Registration), and concluded
`that under the correct standard, the ’400 Registration
`is valid because the factual inaccuracies in the
`application are excused by the cited safe-harbor
`provision.
`The panel held that a party seeking to invalidate a
`copyright registration under § 411(b) must demonstrate
`
`** This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`2a
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`
`that (1) the registrant submitted a resignation
`application containing inaccuracies, (2) the registrant
`knew that the application failed to comply with the
`requisite legal requirements, and (3) the inaccuracies
`in question were material to the registration decision
`by the Register of Copyrights. The panel concluded that
`Unicolors’s ’400 Registration contained an inaccuracy,
`but that the district court’s finding that Unicolors did
`not have the requisite knowledge of its application’s
`inaccuracy per § 411(b)(1)(A) is not clearly erroneous.
`This
`lack of knowledge means that the
`’400
`Registration falls within the ambit of the safe-harbor
`provision’s protection, notwithstanding its failure to
`comply with the “single unit” requirement, and that
`Unicolors’s copyright is valid. Unicolors can therefore
`maintain its infringement action against H&M over the
`EH101 design, which is covered by that registration.
`Concerning H&M’s pretrial challenges, the panel
`held (1) H&M forfeited any claim of error on appeal
`based on a claim that Unicolors’s President Nader
`Pazirandeh’s statements constituted impermissible,
`undesignated expert opinion; (2) the district court did
`not abuse its discretion when it excluded H&M’s
`proffered expert testimony of Robin Lake on the issue
`of substantial similarity of the EH101 and Xue Xu
`designs; and (3) the district court did not abuse its
`discretion in excluding H&M’s proffered expert
`testimony of Justin Lewis on the issue of damages.
`The panel
`then addressed H&M’s at-trial
`challenges.
`First, H&M argued that the district court erred in
`refusing to instruct the jury that the Xue Xu design
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`3a
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`was presumptively independently created on account of
`a judicially noticed Chinese copyright in that design.
`Reviewing the Berne Convention and its protection of
`foreign copyrights in domestic infringement suits, the
`panel held that the district court did not err in
`rejecting H&M’s first requested instruction regarding
`the parties’ evidentiary burdens, because that
`requested instruction was duplicative; and that any
`error that subsisted in the district court’s decision to
`reject H&M’s requested instruction on presumptive
`validity was harmless.
`Second, H&M argued that the district court erred
`by refusing to admit into evidence Shaoxing County
`DOMO Apparel Co., Ltd.’s U.S. copyright registration
`of the Xue Xu design. The panel held that the district
`court’s exclusion of the evidence as prejudicial was not
`an abuse of discretion, so any error the district court
`made in determining the certificate’s relevance was
`harmless.
`Third, H&M argued that the district court erred by
`admitting into evidence a previously unproduced,
`physical exemplar bearing a black-and-white (rather
`than color) version of EH101. The panel held that H&M
`forfeited this challenge.
`The panel then addressed H&M’s post-trial
`challenges.
`H&M challenged the district court’s denial of its
`renewed motion for judgment as a matter of law
`(RJMOL).
`The panel rejected the first basis for H&M’s
`challenge because, as previously discussed, Unicolors
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`4a
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`
`
`has a valid copyright in the ’400 Registration. Rejecting
`H&M’s second challenge regarding the RJMOL, the
`panel held that because there was sufficient evidence
`to substantiate the jury’s finding of striking similarity
`Unicolors also presented sufficient evidence to prove
`the copying element of its infringement claim.
`Rejecting the third basis, the panel saw no reason to
`disturb the jury’s willfulness determination.
`In its final challenge regarding the RJMOL, H&M
`argued that the district court erred by impermissibly
`inflating Unicolors’s post-remittitur damages. The
`district court’s remittitur calculation involved profit-
`disgorgement damages and lost-profit damages. The
`panel agreed with H&M that the district court’s profit-
`disgorgement remittitur calculation of $247,675.33 was
`an abuse of discretion, as that amount cannot be
`sustained using the jury’s findings of what Unicolors
`actually proved at trial. The jury used H&M’s gross
`profit per piece, not its average gross sales price per
`piece. Explaining the maximum recovery rule, the
`panel wrote that the purpose of remittitur is to
`maintain the jury’s verdict while lopping off an
`excrescence. The panel wrote
`that a profit-
`disgorgement figure of $98,441.23 removes the
`excrescence of profits from extraterritorial sales and
`the use of average gross sales price rather than the
`gross profit multiplier, while sustaining the remainder
`of the jury’s verdict. As for lost profits, the district
`court calculated the maximum amount that Unicolors
`could have incurred as a result of H&M’s infringement
`to be $18,534, after removing international sales from
`the jury’s calculation. Finding no reversible error with
`respect to the district court’s lost-profit damages
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`5a
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`calculation, the panel held that H&M forfeited any
`challenge related to the admissibility of lost-profits
`evidence. The panel therefore concluded that the
`proper remittitur amount to take the place of the jury
`verdict’s damages should have been $116,975.23, which
`is the sum of the proper profit-disgorgement award of
`$98,441.23 and a lost-profits award of $18,534.00. The
`panel instructed the district court on remand to grant
`H&M’s request for a new trial if Unicolors rejects this
`new remittitur amount, but the new trial must be
`limited only to the issue of damages.
`The panel held that the district court did not abuse
`its discretion in awarding attorneys’ fees to Unicolors.
`_________________________________________________
`COUNSEL
`_________________________________________________
`Stephen M. Doniger, Scott Alan Burroughs, and Trevor
`W. Barrett, Doniger Burroughs APC, Venice,
`California, for Plaintiff-Appellant.
`Staci J. Riordan, Aaron Brian, and Dale A. Hudson,
`Nixon Peabody LLP, Los Angeles, California, for
`Defendant-Appellant.
`BEA, Circuit Judge:
`This case returns to us on remand from the
`Supreme Court’s decision in Unicolors, Inc. v. H&M
`Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022). There,
`the Court held that lack of either factual or legal
`knowledge on the part of a copyright holder can excuse
`an inaccuracy in a copyright registration under the
`Copyright Act’s safe-harbor provision. Id. at 945; 17
`
`6a
`
`
`
`U.S.C. § 411(b)(1). Accordingly, we review anew the
`threshold issue whether Appellee Unicolors holds a
`valid copyright in registration No. VA 1-770-400 (the
`’400 Registration) and conclude that under the correct
`standard, the ’400 Registration is valid because the
`factual inaccuracies in the application are excused by
`the cited safe-harbor provision. This determination
`allows this panel to resolve the outstanding issues in
`this case. And for the reasons explained below, we
`agree with Appellee that none of these issues requires
`disturbing the district court’s
`judgment below.
`Therefore, we affirm its judgment in general, save that
`we vacate and remand with instructions to grant
`H&M’s request for a new trial if Unicolors rejects the
`remittitur amount of $116,975.23, which is an amount
`lower than the jury verdict and also lower than the
`amount the district court initially calculated in its
`judgment. If Unicolors rejects the new remittitur
`amount, the district court is instructed to grant H&M’s
`request for a new trial, but limited only to the issues of
`damages.
`
`I. BACKGROUND
`As we previously described:
`This is a copyright-infringement action brought
`by Unicolors, Inc. (“Unicolors”), a company that
`creates designs for use on textiles and garments,
`against H&M Hennes & Mauritz L.P. (“H&M”),
`which owns domestic retail clothing stores.
`Unicolors alleges that a design it created in 2011
`is remarkably similar to a design printed on
`garments that H&M began selling in 2015. The
`heart of this case is the factual issue whether
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`7a
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`
`
`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. . . .
`Unicolors’s business model is to create artwork,
`copyright it, print the artwork on fabric, and
`market the designed
`fabrics to garment
`manufacturers. Sometimes, though, Unicolors
`designs “confined” works, which are works
`created for a specific customer. This customer is
`granted the right of exclusive use of the confined
`work for at least a few months, during which
`time Unicolors does not offer to sell the work to
`other customers. At trial, Unicolors’s President,
`Nader Pazirandeh, explained that customers
`“ask for privacy” for confined designs, in respect
`of which Unicolors holds the confined designs for
`a “few months” from other customers. Mr.
`Pazirandeh added that his staff
`follows
`instructions not to offer confined designs for sale
`to customers generally, and Unicolors does not
`even place confined designs in its showroom
`until the exclusivity period ends.
`In February 2011, Unicolors applied for and
`received a copyright registration from the U.S.
`Copyright Office for a two-dimensional artwork
`called EH101, which is the subject of this suit.
`Unicolors’s registration—No. VA 1-770-400 (“the
`’400 Registration”)—included a January 15,
`2011 date of
`first publication. The
`’400
`Registration is a “single-unit registration” of
`
`8a
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`
`in a single
`thirty-one separate designs
`registration, one of which designs is EH101. The
`name for twenty-two of the works in the ’400
`Registration, like EH101, have the prefix “EH”;
`the other nine works were named with the prefix
`“CEH.” Hannah Lim, a Unicolors textile
`designer, testified at trial that the “EH”
`designation stands for “January 2011,” meaning
`these works were created in that month. Ms.
`Lim added that a “CEH” designation means a
`work was designed in January 2011 but was a
`“confined” work.
`When asked about the ’400 Registration at trial,
`Mr. Pazirandeh testified that Unicolors submits
`collections of works in a single copyright
`registration “for saving money.” Mr. Pazirandeh
`added that the first publication date of
`January 15, 2011 represented “when [Unicolors]
`present[ed] [the designs] to [its] salespeople.”
`But these salespeople are Unicolors employees,
`not the public. And the presentation took place
`at a company member-only meeting. Following
`the presentation, according to Mr. Pazirandeh,
`Unicolors would have placed non-confined
`designs in Unicolors’s showroom, making them
`“available for public viewing” and purchase.
`Confined designs, on the other hand, would not
`be placed in Unicolors’s showroom for the public
`at large to view.
`H&M owns and operates hundreds of clothing
`retail stores in the United States. In fall 2015,
`H&M stores began selling a jacket and skirt
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`9a
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`made of fabric bearing an artwork design named
`“Xue Xu.” Upon discovering H&M was selling
`garments bearing the Xue Xu artwork, Unicolors
`filed this action for copyright infringement,
`alleging that H&M’s sales infringed Unicolors’s
`copyrighted EH101 design. Unicolors alleges
`that the two works are “row by row, layer by
`layer” identical to each other.
`The case proceeded to trial, at which a jury
`returned a verdict in Unicolors’s favor, finding
`Unicolors owned a valid copyright in the EH101
`artwork, H&M infringed on that copyright by
`selling the contested skirt and jacket, and
`H&M’s infringement was willful. The jury
`awarded Unicolors $817,920
`in profit
`disgorgement damages and $28,800 in lost
`profits.
`H&M filed a renewed motion for judgment as a
`matter of law, or in the alternative, for a new
`trial. The district court denied H&M’s renewed
`motion for judgment as a matter of law, but
`conditionally granted H&M’s motion for a new
`trial subject to Unicolors accepting a remittitur
`of damages to $266,209.33. Unicolors accepted
`the district court’s remittitur and the district
`court entered
`judgment against H&M
`accordingly. Unicolors subsequently moved for
`attorneys’ fees and costs, which the district court
`awarded in the amounts of $508,709.20 and
`$5,856.27, respectively.
`Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959
`F.3d 1194, 1195–97 (9th Cir. 2020). On appeal, this
`
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`panel reversed and remanded the district court’s
`judgment. As a matter of first impression, we
`interpreted the “single unit of publication” requirement
`of 37 C.F.R. § 202.3(b)(4)(i)(A) to require “that the
`registrant [have] first published the collection of works
`in a singular, bundled collection.”1 Id. at 1199. As “the
`undisputed evidence adduced at trial showed that
`Unicolors included the inaccurate information ‘with
`knowledge that
`it was
`inaccurate,’ 17 U.S.C.
`§ 411(b)(1)(A),”2 we held that Unicolors ran afoul of 37
`C.F.R. § 202.3(b)(4)(i)(A). We reversed and remanded
`the case back to the district court “with instructions to
`submit an inquiry to the Register of Copyrights asking
`whether the known inaccuracies contained in the ’400
`Registration, if known to the Register, would have
`caused it to refuse registration.” Id. at 1200. Critically,
`we further held that
`
`1 As before, the current version of § 202.3(b)(4) refers to
`registration “as one work” rather than “as a single work.” We use
`the language of the regulation’s version effective January 24, 2011,
`which is the operative version of the regulation in this case.
`
`2 This provision of the Copyright Act is known as the safe-harbor
`provision. It states in full that
`A certificate of registration satisfies the requirements of
`this section and section 412, regardless of whether the
`certificate contains any inaccurate information, unless—
`(A) the inaccurate information was included on the
`application for copyright registration with knowledge
`that it was inaccurate; and
`(B) the inaccuracy of the information, if known, would
`have caused the Register of Copyrights to refuse
`registration.
`17 U.S.C. § 411(b)(1).
`
`11a
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`
`the knowledge inquiry is not whether Unicolors
`knew that including a mixture of confined and
`non-confined designs would run afoul of the
`single-unit registration requirements;
`the
`inquiry is merely whether Unicolors knew that
`certain designs included in the registration were
`confined and, therefore, were each published
`separately to exclusive customers.
`Id. It was on this last point that the Supreme Court
`vacated this panel’s opinion. The Court held that
`§ 411(b), the safe-harbor provision, “does not
`distinguish between a mistake of law and a mistake of
`fact. Lack of knowledge of either fact or law can excuse
`an inaccuracy in a copyright registration.” Unicolors,
`142 S. Ct. at 945 (emphasis added). We now revisit this
`case anew.
`II. STANDARD OF REVIEW
`Orders on motions for new trial and remittitur are
`reviewed for abuse of discretion. See Oracle Corp. v.
`SAP AG, 765 F.3d 1081, 1086–87 (9th Cir. 2014).
`Factual findings underlying the district court’s decision
`are affirmed unless they are “illogical, implausible or
`without support in inferences that may be drawn from
`the record.” United States v. Hinkson, 585 F.3d 1247,
`1262 (9th Cir. 2009) (en banc). Denials of motions for
`judgment as a matter of law are reviewed de novo. See
`Dunlap v. Liberty Nat. Prods., Inc., 878 F.3d 794, 797
`(9th Cir. 2017).
`We review a district court’s decision to admit or
`exclude evidence for abuse of discretion. United States
`v. Plancarte–Alvarez, 366 F.3d 1058, 1062 (9th Cir.
`
`12a
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`
`
`2004). A district court abuses its discretion when it
`applies the incorrect legal standard or if, akin to a
`district court’s factual findings, its “application of the
`correct legal standard was (1) illogical, (2) implausible,
`or (3) without support in inferences that may be drawn
`from the facts in the record.” Hinkson, 585 F.3d at 1262
`(internal quotation marks omitted). “Such [evidentiary]
`rulings will be reversed only if the error more likely
`than not affected the verdict.” United States v. Liu, 538
`F.3d 1078, 1085 (9th Cir. 2008).
`“We review for abuse of discretion the district
`court’s formulation of the [jury] instructions and review
`de novo whether the instructions accurately state the
`law.” See Skidmore ex rel. Randy Craig Wolfe Tr. v. Led
`Zeppelin, 952 F.3d 1051, 1065 (9th Cir. 2020) (en banc).
`Even if a district court erred in formulating jury
`instructions, the panel must “consider the issued
`instructions as a whole,” such that “reversal is not
`warranted if the error is more probably than not
`harmless.” Id. (internal quotation marks omitted).
`Finally, we review questions of law concerning
`entitlement to attorneys’ fees de novo and factual
`findings underlying those determinations for clear
`error. Thomas v. City of Tacoma, 410 F.3d 644, 647
`(9th Cir. 2005).
`
`III. ANALYSIS
`On appeal, H&M asserts several arguments relating
`to the district court’s handling of this case before,
`during, and after trial. However, as we previously
`noted, a threshold issue was whether Unicolors
`possessed a valid copyright in the ’400 Registration. 17
`
`13a
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`U.S.C. § 411(a) (“[N]o civil action for infringement . . .
`shall be instituted until . . . registration of the
`copyright claim has been made in accordance with this
`title.”); Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154,
`157 (2010) (Registration is generally required “before
`suing for copyright infringement.”). We therefore first
`analyze the validity of Unicolors’s copyright in its ’400
`Registration and then we turn to the other arguments
`H&M raises on appeal.
`A. Unicolors holds a valid copyright in the ’400
`Registration
`1. Legal standard under the safe-harbor provision
`Because a valid copyright is a precondition for a
`copyright owner to bring an infringement action in
`court, the validity of a copyright registration is a
`pivotal threshold question that a court must resolve
`before reaching any other issues. The effect of
`inaccurate information in a registration application on
`the validity of the registration is governed by the safe-
`harbor provision, which is codified at 17 U.S.C.
`§ 411(b)(1). As noted above, § 411(b)(1) saves a
`copyright registration
`from
`invalidity when
`its
`application contains errors unless the registrant
`knowingly transmitted inaccurate material facts to the
`Register of Copyrights. DeliverMed Holdings, LLC v.
`Schaltenbrand, 734 F.3d 616, 625 n.3 (7th Cir. 2013).
`The scope of an inaccuracy’s materiality is determined
`by making a statutorily mandated request of “the
`Register of Copyrights to advise the court whether the
`inaccurate information, if known, would have caused
`the Register . . . to refuse registration.” 17 U.S.C.
`§ 411(b)(2); Roberts v. Gordy, 877 F.3d 1024, 1029 (11th
`
`14a
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`
`Cir. 2017). Before making such a request, a court must
`first establish whether the registrant had the proper
`“knowledge” of the inaccuracy under § 411(b)(1)(A).
`DeliverMed, 734 F.3d at 625 (advising courts to analyze
`§ 411(b)(1)(A)’s requirements prior to making a
`§ 411(b)(2) request to the Register of Copyrights given
`the provision’s “obvious potential for abuse” as a delay
`tactic); Beatriz Ball, L.L.C. v. Barbagallo Co., 40 F.4th
`308, 316 n.5 (5th Cir. 2022) (same). We had previously
`disagreed with the district court’s reasoning that
`Unicolors lacked the requisite knowledge under the
`safe-harbor provision because we denied that the
`statute encoded an “intent-to-defraud requirement”
`and held that “knowledge” referred only to a
`registrant’s knowledge of the facts not to the
`registrant’s knowledge of the law that the registrant
`intended to evade. Unicolors, 959 F.3d at 1198, 1200
`(relying on Gold Value Int’l Textile, Inc. v. Sanctuary
`Clothing, LLC, 925 F.3d 1140, 1147 (9th Cir. 2019) for
`both propositions). The Supreme Court’s reversal in
`this case requires that we revisit both holdings.
`First, in contrast to our prior holding, it is now clear
`that “[l]ack of knowledge of either fact or law can
`excuse an inaccuracy in a copyright registration.”
`Unicolors, 142 S. Ct. at 945 (emphasis added).3 Thus,
`prior to making a materiality determination, a court
`must assess if the registrant submitted his application
`
`3 Because we relied on the same distinction in Gold Value, to the
`extent that its holding concluded that a party’s knowledge of the
`law is irrelevant under § 411(b), it is “clearly irreconcilable” with
`the Supreme Court’s analysis here and is thereby abrogated. See
`Miller v. Gammie, 335 F.3d 889, 900 (9th Cir. 2003) (en banc).
`
`15a
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`
`with knowledge that the information was factually
`inaccurate and with knowledge that the application
`failed to comply with the governing legal requirements.
`However, that does not end matters because the
`Supreme Court also discussed whether § 411(b) saved
`a copyright registration from invalidation when there
`was no “indicia of fraud.” Unicolors, 142 S. Ct. at
`948–49. In the Court’s view, whether the safe-harbor
`provision protected innocent mistakes of law in
`addition to innocent mistakes of fact constituted “a
`subsidiary question fairly included in the petition[ for
`certiorari]’s question presented” regarding fraud, id. at
`949 (internal quotation marks omitted), because fraud
`is properly defined as “[a] knowing misrepresentation
`. . . of a material fact,” id. (quoting Black’s Law
`Dictionary 802 (11th ed. 2019)) (emphasis and
`alterations in original). This linking of the Court’s
`interpretation of § 411(b) to the legal definition of fraud
`is in tension with our holding in Gold Value as well as
`our application of that holding in our now vacated
`opinion. In Gold Value, we had rejected the argument
`that § 411(b) required a showing of an intent to
`defraud, 925 F.3d at 1147, thereby disagreeing with
`our sister courts that the 2008 revision of the
`Copyright Act “codifie[d] the defense of Fraud on the
`Copyright Office.” Roberts, 877 F.3d at 1029.4
`
`4 DeliverMed, 734 F.3d at 618, 624, 625 n.3; cf. Energy Intelligence
`Grp., Inc. v. Kanye Anderson Capital Advisors, L.P., 948 F.3d 261,
`267 n.4 (5th Cir. 2020); Mon Cheri Bridals, Inc. v. Wen Wu, 383
`F. App’x 228, 232 (3d Cir. 2010). Notably, the Copyright Office
`adopted the same position as our sister courts immediately
`following the 2008 revision of the Copyright Act. U.S. Copyright
`
`16a
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`
`“Fraud on the Copyright Office” was a judicial
`doctrine that courts had developed under the 1909
`Copyright Act to protect registration certificates from
`invalidity for “inadvertent mistakes” unless “the
`claimant intended to defraud the Copyright Office by
`making the misstatement.” Urantia Found. v.
`Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)
`(explaining the universal practice of protecting
`copyright registrations from innocent mistakes); see
`also 2 Melville B. Nimmer & David Nimmer, Nimmer
`on Copyright § 7.20[B] (Matthew Bender rev. ed. 2022)
`(same). Although the 1909 Act was no longer in force
`after Congress revised the statute by enacting the
`Prioritizing Resources and Organization
`for
`Intellectual Property Act of 2008, Pub. L. No. 110–403,
`122 Stat. 4256 (“PRO-IP Act”), our court consistently
`treated the newly added safe-harbor provision as
`preserving the status quo: § 411(b) became the
`statutory hook for applying the initially judicially-
`implied fraud on the Copyright Office doctrine
`whenever an alleged infringer challenged a registration
`certificate as
`invalid because
`the registration
`application had contained inaccuracies. See Unicolors,
`Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 991 (9th
`Cir. 2017); L.A. Printex Indus., Inc. v. Aeropostale, Inc.,
`676 F.3d 841, 854 (9th Cir. 2012); United Fabrics Int’l,
`Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1259 (9th Cir.
`2011).
`
`Office, Annual Report of the Register of Copyrights, Fiscal Year
`Ending September 30, 2008 13 (2008), https://www.copyright.gov/
`reports/annual/2008/ar2008.pdf
`(contending
`that Congress
`“amend[ed] section 411 of the copyright law to codify the doctrine
`of fraud on the Copyright Office in the registration process”).
`
`17a
`
`
`
`Gold Value and our previous decision in this case
`took a different tack because the statute employed the
`word
`“knowledge” rather
`than
`“fraud” when
`articulating what a challenger would need to show
`before a court declared a registration invalid. 925 F.3d
`at 1147 & n.4. But, we were able to find a distinction
`between fraud and knowledge only by concluding that
`the statute required knowledge of solely factual errors
`regardless of a party’s knowledge of the law: a
`registrant could have knowledge of the inaccuracy by
`being aware of the facts without intending to defraud
`the Copyright Office by presuming—incorrectly—that
`those
`facts complied with
`the relevant
`legal
`requirements. Id. at 1147 (“[T]he term ‘knowingly’ does
`not necessarily have any reference to a culpable state
`of mind . . . [and] ‘the knowledge requisite to knowing
`violation of a statute is factual knowledge as
`distinguished from knowledge of the law.’” (emphasis
`added) (quoting Bryan v. United States, 524 U.S. 184,
`192 (1998) (citations omitted))). However, because we
`now know § 411(b) requires knowledge of both
`mistakes of law and of fact, there is no daylight
`between a court’s determination that a party had
`knowledge of the legal and factual inaccuracies and a
`finding that the party committed fraud on the
`Copyright Office.
`As the Supreme Court explained, our prior analysis
`was erroneous because treating § 411(b) as not
`excusing inadvertent legal errors meant that our
`holding did not “always require knowledge of the
`misrepresentation in the registration application,” as
`is required by statute, and which the Court explained
`is the equivalent of not “requir[ing] the typical
`
`18a
`
`
`
`elements of fraud.” Unicolors, 142 S. Ct. at 949. And
`the Court reached this conclusion by finding that
`Congress’s passage of the PRO-IP Act did not upset the
`prior caselaw’s application of fraud on the Copyright
`Office under the 1909 Copyright Act. Id. at 947–48.
`After favorably quoting our explanation of the doctrine
`in Urantia and noting its widespread adoption, the
`Court held that there was “no indication that Congress
`intended to alter this well-established rule when it
`enacted § 411(b).” Unicolors, 142 S. Ct. at 947–48
`(quoting Urantia, 114 F.3d at 963). Thus, rather than
`upend the framework by using the word “knowledge,”
`as we held in Gold Value and applied in our prior
`decision in this case, the Supreme Court’s analysis
`further suggests that the PRO-IP Act codified this
`doctrine in the safe-harbor provision. See Davis v.
`Mich. Dep’t of Treasury, 489 U.S. 803, 813 (1989)
`(“When Congress codifies a judicially defined concept,
`it is presumed, absent an express statement to the
`contrary, that Congress intended to adopt the
`interpretation placed on that concept by the courts.”).
`Thus, the clear implication of the Supreme Court’s
`holding in this case is that a proper construction of the
`safe-harbor provision’s broad protection of copyright
`registrants leads to the conclusion that the PRO-IP Act
`was intended to codify the fraud on the Copyright
`Office doctrine.5 As a result, our holding in Gold
`
`5 We note that this comes with two small caveats. First, a colorable
`argument might have been made under the original fraud on the
`Copyright Office doctrine that a registration should be invalidated
`when it contained nonmaterial “clerical error[s]” and was
`“[]accompanied by fraud.” Advisers, Inc. v. Wiesen-Hart, Inc., 238
`
`19a
`
`
`
`Value—and our prior reliance on it—is clearly
`irreconcilable with the Supreme Court’s analysis and
`thus has been abrogated to the extent that it held that
`the safe-harbor provision does not require a showing of
`fraud. See Miller v. Gammie, 335 F.3d 889, 900 (9th
`Cir. 2003) (en banc).
`We therefore hold that a party seeking to invalidate
`a copyright registration under § 411(b) must
`demonstrate that (1) the registrant submitted a
`registration application containing inaccuracies, (2) the
`registrant knew that the application failed to comply
`with the requisite legal requirements, and (3) the
`inaccuracies
`in question were material to the
`registration decision by the Register of Copyrights.
`Roberts, 877 F.3d at 1030. Put differently, a
`
`F.2d 706, 708 (6th Cir. 1956). But that outcome is unambiguously
`foreclosed by the language in the safe-harbor provision, which
`invalidates a registration only if the knowing misrepresentations
`are material. 17 U.S.C. § 411(b)(1)(B) (requiring a court to find
`that the error “if known, would have caused the Register of
`Copyrights” to change the registration decision). Second, our
`holding in Urantia introduced prejudice to the alleged infringer as
`another means for a court to invalidate a copyright when the
`registration application contained inaccurate information. 114 F.3d
`at 963 (holding that innocent mistakes “do not invalidate a
`copyright . . . unless the alleged infringer has relied to its
`detriment on the mistake”). But for the same reason as the
`previous caveat, this prior holding is foreclosed: “[p]rejudice has no
`relevance to the fraud on the Copyright Office inquiry” under the
`provision’s unambiguous language. DeliverMed, 734 F.3d at 625
`n.3; cf. Morgan v. Sundance, Inc., 142 S. Ct. 1708, 1714 (2022)
`(relying on the Federal Arbitration Act’s unambiguous language to
`hold that courts should not imply a prejudice requirement when
`evaluating whether a party waived his right to compel arbitration).
`
`20a
`
`
`
`registration is invalid under § 411(b) if the registrant
`perpetrated fraud on the Copyright Office by knowingly
`misrepresenting material facts.
`2. Existence of the inaccuracy in Unicolors’s ’400
`Registration
`Thus, to evaluate the validity of Unicolors’s ’400
`Registration, our first step is to assess whether its
`application contained an inaccuracy. Our previous
`decision in this case evaluated this question by
`analyzing what, at the time, was a matter of first
`impression: “what it means to publish multiple works
`as a ‘single unit’” under 37 C.F.R. § 202