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  • Wendi Gundersen

9th Circuit Clarifies Copyright Safe Harbor & Reminds Attorneys of Litigation Basics


The Supreme Court remanded (sent this case) between Unicolors, Inc., and H & M Hennes & Mauritz, L.P., back to the Ninth Circuit after determining that the Copyright Act's safe-harbor provision, 17 U.S.C. § 411(b)(1), protects registrations that are made with factual and legal errors, so long as there was not an intent to deceive the Copyright Office.


Copyright Act safe-harbor provision:


Unicolors sued H & M for copyright infringement based on a registration that had, it later turned out, factual and legal errors. H & M argued that the safe-harbor provision could not protect the registration from the legal errors, and so, Unicolor could not sue them on the copyright.


On remand, Judge Bea, writing for the panel, explained, with the new guidance from the Supreme Court, that for the safe-harbor provision to not apply, a party challenging a registration had to show:

  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 questions were material to the registration decision by the Register of Copyrights.

In other words, fraud must have been perpetuated "on the Copyright Office by knowingly misrepresenting material facts."


The underlying facts in the record could not establish any evidence of fraud, only inaccuracies. So H & M's challenge to the trial's court's decision to protect the registration had to fail.


Preserving your record/objections at trial:


This raises a very important issue raised by this case. The failure to create and preserve a factual and objection record at trial that can ruin the chances of an appeal.


At trial, H & M failed to preserve many evidentiary issues that it then sought to raise on appeal: from the admission of Unicolors's witness testimony to the exclusion of its expert witnesses. It lost on all of these issues on appeal, not really on the merits of the evidentiary issues, but because it failed to make the necessary objections on the record,


It lost on some other issues because it failed to establish basic facts or to ensure that evidence of them ended up in the trial record.


These are fundamental aspects of making sure any trial effort will have a chance for a successful appeal, if needed.


Hiring experienced litigators with experience in both trial court and appellate court--who understand the importance of these aspects of building a case, whether as a lead counsel, an adviser as part of a multi-firm team, or supervising outside general counsel, can help avoid this sort of result.


Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. (9th Cir. Nov. 10, 2022)

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