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United States Court of Appeals for the Ninth Circuit
March 30, 20201, Submitted, Pasadena, California; May 29, 2020, Filed
Nos. 18-56253, 18-56548
[*1195] BEA, Circuit Judge:
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 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. On appeal, however, we must decide a threshold [*1196] issue whether Unicolors has a valid copyright registration for its 2011 design, which is a precondition to bringing a copyright-infringement suit.
Unicolors's business model is to create artwork, copyright it, print the artwork on fabric, [**4] 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 thirty-one separate designs in a single registration, one of which [**5] 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.
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959 F.3d 1194 *; 2020 U.S. App. LEXIS 17097 **; Copy. L. Rep. (CCH) P31,656; 2020 U.S.P.Q.2D (BNA) 10599; 2020 WL 2781317
UNICOLORS, INC., a California Corporation, Plaintiff-Appellee, v. H&MHENNES &MAURITZ, L.P., a New York limited partnership, Defendant-Appellant.
Subsequent History: As Corrected June 2, 2020.
Rehearing denied by, Rehearing denied by, En banc Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 2020 U.S. App. LEXIS 25103 (9th Cir. Cal., Aug. 7, 2020)
Costs and fees proceeding at, Motion denied by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 2020 U.S. App. LEXIS 29135 (9th Cir. Cal., Sept. 14, 2020)
US Supreme Court certiorari granted by, in part Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 141 S. Ct. 2698, 210 L. Ed. 2d 869, 2021 U.S. LEXIS 2770, 2021 WL 2194846 (U.S., June 1, 2021)
Vacated by, Remanded by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 2022 U.S. LEXIS 1226 (U.S., Feb. 24, 2022)
Prior History: [**1] Appeal from the United States District Court for the Central District of California. D.C. No. 2:16-cv-02322-AB-SK. Andre Birotte, Jr., District Judge, Presiding.
Unicolors, Inc. v. Hennes, 2018 U.S. Dist. LEXIS 230412, 2018 WL 6016989 (C.D. Cal., Sept. 25, 2018)
Disposition: REVERSED AND REMANDED.
registration, designs, Register, district court, confined, collection, single unit, customers, infringement, invalid, inaccurate information, inaccuracies, singular, artwork, matter of law, self-contained, single-unit, garments, bundled
Copyright Law, Copyright Infringement Actions, Civil Infringement Actions, Elements, Jurisdiction, Registration Requirement, Deposit & Registration Requirements, Registration, Refusal to Accept Registration, Formalities, Registration, Governments, Legislation, Interpretation