APPENDIX
`APPENDIX
`
`
`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
`
`
`
`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
`
`3a
`
`
`
`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
`
`4a
`
`
`
`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
`
`5a
`
`
`
`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
`
`7a
`
`
`
`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
`
`
`
`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
`
`9a
`
`
`
`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
`
`10a
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`
`
`“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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
