Amicus Curiae Brief — Unicolors, Inc., Petitioner v. H&M Hennes & Mauritz, L.P.

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No. 20-915

IN THE

Supreme Court of the United States

UNICOLORS, INC.,

Petitioner,

H&M HENNES & MAURITZ, L.P.,

Respondent.

On Writ of Certiorari

to the United States Court of Appeals

for the Ninth Circuit

BRIEF OF AMICI CURIAE

INTELLECTUAL PROPERTY LAW

PROFESSORS IN SUPPORT OF PETITIONER

Tyler T. Ochoa

Counsel of Record

SANTA CLARA UNIVERSITY

SCHOOL OF LAW

500 El Camino Real

Santa Clara, CA 95053

(408) 554-2765

ttochoa@scu.edu

Counsel for Amici Curiae

TABLE OF CONTENTS

INTEREST OF AMICI CURIAE............................. 1

SUMMARY OF ARGUMENT ................................. 1

ARGUMENT.............................................................. 3

FOR THE PAST CENTURY, CONGRESS HAS

MINIMIZED THE IMPORTANCE OF

FORMALITIES, INCLUDING COPYRIGHT

REGISTRATION, IN COPYRIGHT LAW. ........... 3

A. 1790-1909: The Age of Formalities ................ 3

B. 1909 to Today: Reducing the Role of

Formalities...................................................... 5

II. SECTION 411(B) WAS INTENDED TO MAKE

IT EASIER FOR COPYRIGHT OWNERS TO

ENFORCE THEIR COPYRIGHTS, BY MAKING

IT HARDER FOR DEFENDANTS TO

INVALIDATE REGISTRATIONS. ..................... 10

III. AN APPLICANT FOR REGISTRATION

CANNOT HAVE “KNOWLEDGE” THAT

INFORMATION IS INACCURATE WHEN IT

DEPENDS ON LAW THAT IS UNSETTLED,

CONFLICTING, AND CONFUSING. ................ 14

A. Publication is a Term of Art in Copyright

Law, So Mistakes About Whether and When

a Work Has Been “Published” Are

Common. ....................................................... 14

B. The Ninth Circuit’s Standard for an

Applicant’s “Knowledge” Is Really a

Negligence Standard in Disguise. ................ 16

C. The Ninth Circuit Found “Knowledge” in

This Case, Despite Suggesting That the

Legal Issue was a Case of First Impression,

and Without Finding Clear Error. ............... 19

IV. BOTH KNOWLEDGE AND MATERIALITY

SHOULD BE INTERPRETED LENIENTLY TO

AVOID THE CHAOS OF INVALIDATING

THOUSANDS OF REGISTRATIONS. ............... 21

A. The Analogous Patent Doctrine of

Inequitable Conduct Shows What Can

Happen If Courts Make It Too Easy To

Challenge Registrations. .............................. 21

B. Materiality is Relevant Only After a Court

Finds the Applicant Submitted Inaccurate

Information With Knowledge or Intent. ...... 25

CONCLUSION ........................................................ 28

APPENDIX .............................................................. A1

iii

TABLE OF AUTHORITIES

Cases

Academy of Motion Picture Arts & Sciences

v. Creative House Promotions, Inc., 944

F.2d 1446 (9th Cir. 1991) .................................... 18

Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d

706 (6th Cir. 1956)............................................... 10

Benham Jewelry Corp. v. Aron Basha Corp.,

45 U.S.P.Q.2d 1078 (S.D.N.Y. 1997) ................... 20

Bobbs-Merrill Co. v. Straus, 210 U.S. 339

(1908) ................................................................... 14

Caliga v. Inter Ocean Newspaper Co., 215

U.S. 182 (1909) .................................................... 14

Campbell v. Acuff-Rose Music, Inc., 510 U.S.

569 (1994) ............................................................ 13

Cardinal Film Corp. v. Beck, 248 F. 368

(S.D.N.Y. 1918) .................................................... 15

DeliverMed Holdings, LLC v. Schaltenbrand,

734 F.3d 616 (7th Cir. 2013) ......................... 27, 28

Donald Bruce & Co. v. B.H. Multi Com Corp.,

964 F. Supp. 265 (N.D. Ill. 1997) ........................ 20

Eckes v. Card Prices Update, 736 F.2d 859

(2d Cir. 1984) ................................................. 10, 11

Energy Intelligence Group v. CHS

McPherson Refinery, Inc., 304 F. Supp.

3d 1051 (D. Kan. 2018) ........................................ 27

Entertainment Research Group, Inc. v.

Genesis Creative Group, Inc., 122 F.3d

1211 (9th Cir. 1997)............................................. 24

Estate of Hogarth v. Edgar Rice Burroughs,

Inc., 342 F.3d 149 (2d Cir. 2003)......................... 24

Feist Publications, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340 (1991) ...................................... 13

Gold Value Int’l Textile, Inc. v. Sanctuary

Clothing, LLC, 925 F.3d 1140 (9th Cir.

2019)................................................................ 18-19

Harris v. Emus Records Corp., 734 F.2d 1329

(9th Cir. 1984)...................................................... 12

Hazel-Atlas Glass Co. v. Hartford-Empire

Co., 322 U.S. 238, 240 (1944), overruled

on other grounds by Standard Oil Co. v.

United States, 429 U.S. 17 (1976) ..................... 22

Hirshon v. United Artists Corp., 243 F.2d

640 (D.C. Cir. 1957). ............................................ 15

In re Napster, Inc. Copyright Litig., 191 F.

Supp. 2d 1087 (N.D. Cal. 2002) ..................... 11-12

Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d

199 (3d Cir. 1995) ................................................ 20

Keystone Driller Co. v. General Excavator

Co., 290 U.S. 240 (1933) ...................................... 22

Kepner-Tregoe, Inc. v. Vroom, 186 F.3d 283

(2d Cir. 1999) ....................................................... 14

Masquerade Novelty, Inc. v. Unique

Industries, Inc., 912 F.2d 663 (3d Cir.

1990)............................................................... 10, 11

Microsoft Corp. v. i4i, L.P., 564 U.S. 91

(2011). .................................................................. 24

National Comics Pubs., Inc. v. Fawcett

Pubs., 191 F.2d 594 (2d Cir. 1951)........................ 5

Original Appalachian Artworks, Inc. v. Toy

Loft, Inc., 489 F. Supp. 174 (N.D. Ga.

1980)..................................................................... 20

Original Appalachian Artworks, Inc. v. Toy

Loft, Inc., 684 F.2d 821 (11th Cir. 1982) .10, 12, 20

Patterson v. Century Productions, 93 F.2d

489 (2d Cir. 1937) ................................................ 15

Precision Instrument Mfg. Co. v. Automotive

Maintenance Machinery Co., 324 U.S.

806 (1945) ............................................................ 22

Reed Elsevier, Inc. v. Munchnick, 559 U.S.

154 (2010) .............................................................. 9

Russ Berrie & Co. v. Jerry Elsner Co., 482 F.

Supp. 980 (S.D.N.Y. 1980) .................. 10-11, 13-14

Star Athletica, LLC v. Varsity Brands, Inc.,

580 U.S. ___, 137 S. Ct. 1002 (2017) ................... 25

Tabra, Inc. v. Treasures de Paradise

Designs, Inc., 15 U.S.P.Q.2d 1234 (N.D.

Cal. 1990) ............................................................. 20

Therasense, Inc. v. Becton-Dickinson & Co.,

649 F.3d 1276 (Fed. Cir. 2011)....................... 22-24

Twin Books Corp. v. Walt Disney Co., 83

F.3d 1162 (9th Cir. 1996) .................................... 14

Unicolors, Inc. v. H&M Hennes & Mauritz,

L.P., 2018 WL 10307045 (C.D. Cal. Aug.

1, 2018)................................................................. 21

Unicolors, Inc. v. H&M Hennes & Mauritz,

L.P., 959 F.3d 1194 (9th Cir. 2020), cert.

granted, No. 20-915 (U.S. June 1, 2021)....... 20, 21

Washingtonian Pub. Co. v. Pearson, 306 U.S.

30 (1939) ............................................................. 6-7

Wheaton v. Peters, 33 U.S. (8 Pet.) 591

(1834) ..................................................................... 4

Whimsicality, Inc. v. Rubie’s Costume Co.,

891 F.2d 452 (2d Cir. 1989) ................................. 25

Whimsicality, Inc. v. Rubie’s Costume Co.,

836 F. Supp. 112 (S.D.N.Y. 1993) ....................... 26

Yellowcake Inc. v. Morena Music, ___ F.

Supp. 3d ___, 2021 WL 795823 (E.D. Cal.,

Mar. 2, 2021)........................................................ 27

vii

Statutes

17 U.S.C. § 101.................................................7, 16, 25

17 U.S.C. § 102(a) ....................................................... 7

17 U.S.C. § 104A ......................................................... 9

17 U.S.C. § 302(a) ....................................................... 7

17 U.S.C. § 401(a) ................................................... 7, 8

17 U.S.C. § 405(a) ....................................................... 7

17 U.S.C. § 407(a) ....................................................... 8

17 U.S.C. § 408(a) ....................................................... 8

17 U.S.C. § 408(d) ..................................................... 12

17 U.S.C. § 410(c) .................................................. 9, 24

17 U.S.C. § 411(a) ....................................................... 8

17 U.S.C. § 411(b) .............................................. passim

17 U.S.C. § 412............................................................ 9

Act of May 31, 1790, ch. 15, §§ 3-4, 1 Stat.

124 .......................................................................... 4

Act of April 29, 1802, ch. 36, §1, 2 Stat. 171 .............. 4

Act of Feb. 3, 1831, ch. 16, §§4-5, 4 Stat. 436 ............ 5

Act of July 8, 1870, ch. 230, §90, §97, 16 Stat.

198 .......................................................................... 5

viii

Act of Mar. 4, 1909, Pub. L. 60-349, ch. 320,

§9, §11, §12, §62, 35 Stat. 1075 ................... 5, 6, 15

§102, 90 Stat. 2541 ................................................ 7

Berne Convention Implementation Act of

1988, Pub. L. 100-568, §7(a), §13(a), 102

Stat. 2853 ............................................................... 8

Act of Oct. 13, 2008, Pub. L. 110-403, §1(a),

122 Stat. 4256 ...................................................... 11

Treaties

Agreement on Trade Related Aspects of

Intellectual Property Rights, Apr. 15,

1994, Marrakesh Agreement Establishing

the World Trade Organization, Annex C,

1869 U.N.T.S. 299 (1994) ...................................... 8

Berne Convention for the Protection of

Literary and Artistic Works, revised at

Paris July 24, 1971, as amended Sept. 28,

1979, entered into force for the United

States March 1, 1989, 1161 U.N.T.S. 3, S.

Treaty Doc. No. 99-27 (1986) ................................ 3

Other Authorities

HOWARD B. ABRAMS & TYLER T. OCHOA, THE

LAW OF COPYRIGHT §8:14, §§8:25-8:37

(West 2020 ed.) .............................................. 15, 16

37 C.F.R. § 1.56 (1977).............................................. 22

37 C.F.R. § 202.3(b)(4)(i)(A) (2011) .......................... 20

37 C.F.R. § 202.3(b)(4) (2021) ................................... 20

Thomas F. Cotter, Toward a Functional

Definition of Publication in Copyright

Law, 92 Minn. L. Rev. 1724 (2008) .................... 16

Fed. R. Civ. P. 60(b)(2).............................................. 26

Fed. R. Evid. 301 ....................................................... 24

H.R. Rep. No. 94-1476 (1976) ................................... 13

H.R. Rep. No. 110-617 (2008) ................................... 11

WILLIAM F. PATRY, PATRY ON COPYRIGHT

§6:30, §§6:47-6:55.40 (West 2021 ed.) ................. 16

U.S. Copyright Office, Annual Report of the

Ending September 30, 2008, at

https://www.copyright.gov/reports/

annual/2008/ar2008.pdf ................................... 12

U.S. COPYRIGHT OFFICE, COMPENDIUM OF

§808.11, §1904.1 (rev. 3d ed. 2021) ..........17, 24, 26

U.S. Copyright Office, NewsNet Issue 354,

Oct. 20, 2008, at https://www.copyright.gov/newsnet/2008/354.html .................... 12

INTEREST OF AMICI CURIAE

This brief amici curiae is submitted in support of

petitioners pursuant to Rule 37 of the Rules of this

Court.1

Amici are professors of intellectual property

law and scholars who have studied the history and

development of copyright law in the United States.

Amici have no financial interest in the parties to or

the outcome of this case. Amici share a professional

and academic interest in seeing copyright law develop

in a manner that best promotes the creation and

distribution of new works of authorship. To that end,

amici present a summary of their understanding of

the relevant history to aid the Court in its

deliberations.

A full list of amici can be found in the Appendix.

SUMMARY OF ARGUMENT

In the 18th Century, U.S. copyright law was

heavily dependent on the formalities of registration,

deposit, and notice. Beginning with the 1909

minimize the importance of formalities, including

registration. Section 411(b) is best understood, in

context, as the culmination of this century-long effort

1 The parties have consented to the filing of this brief. No counsel

for a party authored this brief in whole or in part, and no party

or counsel for a party made a monetary contribution intended to

fund its preparation or submission. No person, other than amici

or their counsel, made a monetary contribution to the preparation

or submission of this brief. Amici’s university affiliations are for

identification purposes only; amici’s universities take no position

on this case.

by Congress

formalities.

minimize

the

importance

The doctrine of fraud on the Copyright Office

arose by negative implication from cases upholding

immaterial errors were made. The language of section

411(b) can reasonably be interpreted to codify the

essential elements of the doctrine of fraud on the

“knowledge”), falsity (“inaccurate information was

included on the application”), and materiality (“would

have caused the Register of Copyrights to refuse

registration”).

“Publication” is a term of art in copyright law,

resulting in a complex and sometimes contradictory

body of case law. Uncertainty regarding the definition

of “publication” matters, because an application for

whether and when a work has been “published.” In

effect, however, the Ninth Circuit’s recent case law

holds that an applicant with knowledge of the facts

should have known that that the legal standard of

“publication” was satisfied. This is a negligence

standard in all but name, and it is inconsistent with

the language of the statute (“with knowledge that it

was inaccurate”).

In interpreting section 411(b), this Court should

take care not to water down the standards of intent

and materiality prescribed by Congress, lest it

inadvertently re-create the kinds of problems encountered in the analogous context of fraud on the Patent

Office (also known as “inequitable conduct”).

ARGUMENT

FOR THE PAST CENTURY, CONGRESS

HAS MINIMIZED THE IMPORTANCE OF

FORMALITIES, INCLUDING COPYRIGHT

REGISTRATION, IN COPYRIGHT LAW.

The Berne Convention, the major international

treaty concerning copyright protection, provides that

“The enjoyment and the exercise of these rights shall

not be subject to any formality.”2 But before the 1909

and notice were critical to the validity and existence

of a federal statutory copyright in the United States.

Beginning with the 1909 Act, in order to pave the way

for eventual U.S. adherence to the Berne Convention,

Congress slowly began to minimize the importance of

formalities, including registration, in federal

context, as the culmination of this century-long effort

by Congress to minimize the importance of

formalities.

A. 1790-1909: The Age of Formalities

To be “entitled to the benefit of this act,” the

district court before publication, to publish notice of

2 Berne Convention for the Protection of Literary and Artistic

Works, revised at Paris July 24, 1971, as amended Sept. 28, 1979,

entered into force for the United States March 1, 1989, 1161

U.N.T.S. 3, S. Treaty Doc. No. 99-27 (1986) [hereinafter Berne

Convention], art. 5(2), available at https://wipolex.wipo.int/

en/text/283698 (last visited August 1, 2021).

the registration for four weeks in one or more

newspapers within two months of registration, and to

deposit a copy of the published work with the

Secretary of State within six months of publication.3

The 1802 amendment required that the author or

owner, “before he shall be entitled to the benefit of the

[1790] act, … he shall, in addition to the requisites

enjoined in the third and fourth sections of said act,”

publish a notice of the registration on the work itself.4

In Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834),

this Court held that, according to the plain language

of these acts, these conditions were mandatory.5 “[W]e

are not at liberty to say they are unimportant and may

be dispensed with,”6 it said, concluding that “every

requisite in both acts is essential to the title.”7

The Copyright Act of 1831 likewise provided

“[t]hat no person shall be entitled to the benefit of this

act, unless he shall” register the title of the work with

the clerk of the district court before publication,

deposit a copy of the published work within three

months of publication, and publish notice of the

3 Act of May 31, 1790, ch. 15, §3 (registration and notice), §4

(deposit), 1 Stat. 124, 125.

4 Act of April 29, 1802, ch. 36, §1, 2 Stat. 171 (emphasis added).

5 Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663-64 (1834) (“No one

can deny that when the legislature are about to vest an exclusive

right in an author or an inventor, they have the power to

prescribe the conditions on which such right shall be enjoyed, and

that no one can avail himself of such right who does not

substantially comply with the requisitions of the law.”).

6 Id. at 664.

7 Id. at 665.

edition published during the term.”8

The 1870 Copyright Act carried these formalities

forward. It provided “That no person shall be entitled

to a copyright unless he shall, before publication,”

Congress, and deposit two copies of the work with the

Librarian of Congress within ten days of publication.9

Publishing notice of the registration on the work itself

was no longer a condition of owning a copyright;

instead, it became a condition of “maintain[ing] an

action for the infringement of his copyright.”10

B. 1909 to Today: Reducing the Role of

Formalities

The 1909 Act considerably changed the role of

may secure copyright for his work by publication

thereof with the notice of copyright required by this

Act.”11 Registration of the copyright and deposit of

two copies of the best published edition were no longer

8 Act of Feb. 3, 1831, ch. 16, §§4-5, 4 Stat. 436, 437.

9 Act of July 8, 1870, ch. 230, §90, 16 Stat. 198, 213.

10 Act of July 8, 1870, ch. 230, §97, 16 Stat. 198, 214.

11 Act of Mar. 4, 1909, Pub. L. 60-349, ch. 320, §9, 35 Stat. 1075,

1077 (codified in 1947 at 17 U.S.C. §10, repealed 1978).

Publication without proper notice placed the work in the public

domain. National Comics Pubs., Inc. v. Fawcett Pubs., 191 F.2d

594, 598 (2d Cir. 1951) (“It is of course true that the publication

of a copyrightable ‘work’ puts that ‘work’ into the public domain

except so far as it may be protected by [statutory] copyright.”).

required to obtain a copyright.12 Congress, however,

continued to require registration and deposit as a

condition of “maintain[ing]” an infringement action.13

In 1939, this Court confirmed that registration

and deposit were no longer mandatory conditions to

obtain a copyright (even though they were required to

file an infringement action). In Washingtonian Pub.

Co. v. Pearson, 306 U.S. 30 (1939), the work at issue

was published with proper notice in December 1931,

but registration and deposit did not occur until

February 1933, fourteen months later, and six months

after the infringement commenced. The Court first

remarked on the general intent of the statute with

regard to formalities:

The Act of 1909 is a complete revision of the

both in scheme and language. It introduced many

changes and was intended definitely to grant

valuable, enforceable rights to authors,

publishers,

etc.,

without

burdensome

requirements ….

Under the old Act deposit of the work was

essential to the existence of copyright. This

requirement caused serious difficulties and

unfortunate losses…. It is no longer necessary to

deposit anything to secure a copyright of a

12 There was one exception: registration was still required to

secure a federal statutory copyright for an unpublished work. Act

of Mar. 4, 1909, Pub. L. 60-349, ch. 320, §11, 35 Stat. 1075, 1078

(codified in 1947 at 17 U.S.C. §12, repealed 1978).

13 Act of Mar. 4, 1909, Pub. L. 60-349, ch. 320, §12, 35 Stat. 1075,

1078 (codified in 1947 at 17 U.S.C. §13, repealed 1978).

published work, but only to publish with the

notice of copyright.

Id. at 36-37 (emphasis added, internal quote omitted).

In response to the argument that the copyright

owner failed to deposit two copies “promptly” after

publication, as required by the statute, the Court said:

Congress intended that prompt deposit when

deemed necessary should be enforced … by the

delay will not destroy the right to sue. Such

forfeitures are never to be inferred from doubtful

language.

Id. at 42.

The 1976 Copyright Act came into effect on

January 1, 1978.14 Under the 1976 Act, federal

“original work of authorship” as soon as it is “fixed in

any tangible medium of expression.”15 As enacted,

proper notice was still required when a work was

“published,”16 but the Act allowed omission of such

notice to be “cured” in some circumstances.17 The Act

14 Copyright Act of 1976, Pub. L. 94-553, § 102, 90 Stat. 2541,

2598.

15 17 U.S.C. §102(a); see also 17 U.S.C. §302(a) (“Copyright in a

work created on or after January 1, 1978, subsists from its

creation …”); 17 U.S.C. §101 (“A work is ‘created’ when it is fixed

in a copy or phonorecord for the first time”).

16 17 U.S.C. §401(a), as enacted in Copyright Act of 1976, Pub. L.

94-553, §101, 90 Stat. 2541, 2576.

17 17 U.S.C. §405(a), as enacted in Copyright Act of 1976, Pub. L.

94-553, § 101, 90 Stat. 2541, 2578.

expressly states that, like deposit, “registration is not

a condition of copyright protection.”18 As enacted,

however, registration was still a prerequisite to filing

an infringement suit.19

When the United States adhered to the Berne

Convention, effective March 1, 1989,20 it eliminated

the requirement that proper notice be placed on

published copies.21 For “Berne Convention works

whose country of origin is not the United States,” it

eliminated the prerequisite that a work be registered

before filing an infringement action.22 A decade later,

Congress further limited the registration prerequisite

to “United States works” only.23

Finally, after the United States signed the TRIPS

Agreement,24 it restored the copyright in works of

18 17 U.S.C. §408(a); see also 17 U.S.C. §407(a) (deposit).

19 17 U.S.C. §411(a), as enacted in Copyright Act of 1976, Pub. L.

94-553, § 101, 90 Stat. 2541, 2583 (“Subject to the provisions of

subsection (b), no action for infringement of the copyright in any

work shall be instituted until registration of the copyright claim

has been made in accordance with this title.”).

20 See Berne Convention Implementation Act of 1988, Pub. L.

100-568, §13(a), 102 Stat. 2853, 2861; 53 Fed. Reg. 48748 (Dec. 2,

1988).

21 See Berne Convention Implementation Act of 1988, Pub. L.

100-568, §7(a), 102 Stat. 2853, 2857, codified at 17 U.S.C. §401(a).

22 See Berne Convention Implementation Act of 1988, Pub. L.

100-568, §7(a), 102 Stat. 2853, 2857, codified at 17 U.S.C. §411(a).

23 17 U.S.C. §411(a) (current version).

24 Agreement on Trade Related Aspects of Intellectual Property

Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the

World Trade Organization, Annex C, 1869 U.N.T.S. 299 (1994).

foreign origin that had previously been forfeited for

failure to comply with copyright formalities.25

Thus, by the time Congress enacted the provision

at issue here, it had slowly but steadily reduced the

importance of copyright formalities over the course of

the 20th Century. This Court has followed Congress’

lead, holding that failure to comply with §411(a)’s

registration precondition does not deprive a federal

court of subject-matter jurisdiction. Reed Elsevier, Inc.

v. Munchnick, 559 U.S. 154 (2010). Congress continues to encourage prompt registration, through a

combination of carrots (presumption of validity,26 and

statutory damages and attorneys’ fees27) and sticks

(registration is required before filing suit, for United

States works only28). At the same time, Congress has

made it absolutely clear that “registration is not a

condition of copyright protection.”29 It would be

inconsistent with this express statutory command to

bar an infringement action for an inadvertent mistake

in the registration process.

25 17 U.S.C. §104A.

26 17 U.S.C. §410(c).

27 17 U.S.C. §412.

28 17 U.S.C. §411(a).

29 17 U.S.C. §408(a) (emphasis added).

II. SECTION 411(b) WAS INTENDED TO

MAKE IT EASIER FOR COPYRIGHT

OWNERS TO ENFORCE THEIR

COPYRIGHTS, BY MAKING IT HARDER

FOR DEFENDANTS TO INVALIDATE

REGISTRATIONS.

The doctrine of fraud on the Copyright Office

arose by negative implication from cases upholding

immaterial errors were made. In Advisers, Inc. v.

Wiesen-Hart, Inc., 238 F.2d 706 (6th Cir. 1956), for

example, the court upheld a registration that listed a

publication date of December 9, 1953 (the date of

distribution to retail customers), when the book had

actually been published in August 1953 (when the

books were shipped to distributors). The court said:

“an innocent misstatement, or a clerical error, in the

affidavit and certificate of registration, unaccompanied by fraud or intent to extend the statutory

period of copyright protection, does not invalidate the

supporting an infringement action.” Id. at 708

(emphasis added). Accord, Original Appalachian

Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828

(11th Cir. 1982); Eckes v. Card Prices Update, 736

F.2d 859, 862 (2d Cir. 1984); Masquerade Novelty, Inc.

v. Unique Industries, Inc., 912 F.2d 663, 668 n.5 (3d

Cir. 1990).

The converse proposition, that a registration may

be invalidated by fraud on the Copyright Office, arose

from the logical inference that an intent to defraud

can be inferred from the intentional submission of

false and material information on the application for

registration. In Russ Berrie & Co. v. Jerry Elsner Co.,

482 F. Supp. 980 (S.D.N.Y. 1980), for example, the

plaintiff had made only trivial changes to the design

of a stuffed gorilla that was in the public domain. The

court criticized the plaintiff for intentionally failing to

disclose this material information in its application:

“The knowing failure to advise the Copyright Office of

facts which might have occasioned a rejection of the

application constitute[s] reason for holding the

registration invalid and thus incapable of supporting

an infringement action.” Id. at 988. Accord, Eckes, 736

F.2d at 861-62; Masquerade, 912 F.3d at 667.

The statutory provision before the Court, 17

U.S.C. § 411(b), was added to the Copyright Act in

2008 as part of “Prioritizing Resources and Organization for Intellectual Property Act” (the PRO-IP Act).30

According to the legislative history, § 411(b) was one

of a “a number of changes to copyright and trademark

law that will enhance the ability of intellectual property rights holders to enforce their rights.” H.R. Rep.

No. 110-617, at 23 (2008) (emphasis added). Section

411(b) was intended to deter claims “in litigation that

a mistake in the registration documents, such as

checking the wrong box on the registration form,

renders a registration invalid and thus forecloses the

availability of statutory damages.” Id. at 24.

Supporting this point, the House Report (id. at 24

n.15) cited In re Napster, Inc. Copyright Litig., 191 F.

Supp. 2d 1087, 1099 (N.D. Cal. 2002), in which

Napster argued that record companies had

improperly claimed some sound recordings as worksmade-for-hire

its

registrations,

thereby

30 Act of Oct. 13, 2008, Pub. L. 110-403, §1(a), 122 Stat. 4256.

invalidating the presumption of ownership for those

sound recordings. The argument was rejected:

It is a well-established principle that errors in

plaintiffs’

certificates

not

automatically invalidate the certificates and

their corresponding presumption of ownership.

See 17 U.S.C. § 408(d) (allowing the filing of a

supplementary registration to correct any

errors)…. “Absent intent to defraud and

prejudice, inaccuracies in copyright registration

do not bar actions for infringement.” Harris v.

Emus Records Corp., 734 F.2d 1329, 1335 (9th

Cir. 1984)…. Unless Napster can show that

plaintiffs defrauded the Copyright Office in a

manner that prejudiced Napster, the alleged

inconsistencies in plaintiffs’ certificates do not

rebut the presumption of ownership.

Id. at 1099-1100.

At the time of §411(b)’s passage, the Copyright

Office, which had worked closely with the House and

Senate Committees on the legislation, stated that the

purpose of § 411(b) was “to codify the doctrine of fraud

on the Copyright Office in the registration process.”

U.S. Copyright Office, Annual Report of the Register

of Copyrights, Fiscal Year Ending September 30,

2008, at 12–13 (2008), at https://www.copyright.gov/

reports/annual/2008/ar2008.pdf; U.S. Copyright

Office, NewsNet Issue 354, Oct. 20, 2008, at https://

www.copyright.gov/newsnet/2008/354.html.

The language of section 411(b) can reasonably be

interpreted to codify the judicially-created doctrine of

fraud on the Copyright Office. The essential elements

of the doctrine are the intentional submission of false

and material information on the application for registration. See Original Appalachian Artworks, 684 F.2d

at 828 (“While these cases establish that omissions or

misrepresentations in a copyright application can

render the registration invalid, a common element

among them has been intentional or purposeful

concealment of relevant information.”). Section 411(b)

likewise requires intent (inferred from the applicant’s

“knowledge”), falsity (“inaccurate information was

included on the application”), and materiality (“would

have caused the Register of Copyrights to refuse

registration”).

There is absolutely nothing indicating that

Congress intended the wording of § 411(b) to modify

the court-developed doctrine that the legislative

history cites with approval,31 or to make it easier to

invalidate registrations. Indeed, if anything, the

language of section 411(b) can be interpreted to make

it harder to invalidate erroneous copyright registrations, in two respects. First, some courts had interpreted “material” to mean information that was

merely “relevant” or that “might have occasioned a

rejection of the application,” Russ Berrie & Co., 482 F.

31 In at least two other instances, this Court has accepted state-

ments in the legislative history indicating that Congress intended

to codify judicially-created doctrines, despite a change in

statutory language. See Feist Publications, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340, 355 (1991) (change from “all the writings of an

author” in the 1909 Act to “original works of authorship” in the

1976 Act was merely intended “to maintain the established

standards of originality”; emphasis added by the Court);

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994)

(newly codified §107 was intended “to restate the present judicial

doctrine of fair use, not to change, narrow, or enlarge it in any

way”) (quoting H.R. Rep. No. 94-1476, at 66 (1976)).

Supp. At 988 (emphasis added); whereas section

411(b) requires false information that “would have

caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b) (emphasis added). Second,

section 411(b)(2) directs courts to consult the Register

of Copyrights on the issue of materiality. (See Part

IV.B., below.)

III. AN APPLICANT FOR REGISTRATION

CANNOT HAVE “KNOWLEDGE” THAT

INFORMATION IS INACCURATE WHEN IT

DEPENDS ON LAW THAT IS UNSETTLED,

CONFLICTING, AND CONFUSING.

A. Publication is a Term of Art in Copyright

Law, So Mistakes About Whether and When

a Work Has Been “Published” Are Common.

“Under the 1909 Act, an unpublished work was

protected by state common law copyright from the

moment of its creation until it was either published or

until it received protection under the federal copyright

scheme.” Twin Books Corp. v. Walt Disney Co., 83 F.3d

1162, 1165 (9th Cir. 1996); see also Caliga v. Inter

Ocean Newspaper Co., 215 U.S. 182, 188 (1909) (“At

common law, the exclusive right to copy existed in the

author until he permitted a general publication.”). “If

the [work] was then published in compliance with the

Act, including notice of copyright, it received statutory

notice, the common law copyright was forfeited, and

the material entered the public domain.” KepnerTregoe, Inc. v. Vroom, 186 F.3d 283, 287-88 (2d Cir.

1999). See also Twin Books, 83 F.3d at 1165; cf. BobbsMerrill Co. v. Straus, 210 U.S. 339, 347 (1908) (“when

a work is published in print, the owner’s common-law

rights are lost; and, unless the publication be in

accordance with the requirements of the statute, the

statutory right is not secured.”) (internal quotes and

citation omitted). “Publication,” therefore, marked the

dividing line between state and federal copyright

protection, and publication with notice marked the

dividing line between federal statutory copyright

protection and the public domain.

The 1909 Act defined “date of publication,” as “the

earliest date when copies of the first authorized

edition were placed on sale, sold, or publicly distributed by the proprietor of the copyright or under his

authority.”32 But because the consequences of publication without proper notice were so drastic, courts

held that this definition “was an enactment to fix the

date from which the copyright term should begin to

run, and not a general definition of what constituted

publication.” Cardinal Film Corp. v. Beck, 248 F. 368,

368 (S.D.N.Y. 1918); accord, Patterson v. Century

Productions, 93 F.2d 489, 492 (2d Cir. 1937); Hirshon

v. United Artists Corp., 243 F.2d 640, 644 (D.C. Cir.

1957). “What constitutes publication … must be determined, therefore, in each case by considering its facts

in the light of the policy of the Copyright Act.”

Hirshon, 243 F.2d at 644.

As a result, a complex and sometimes contradictory body of case law arose around the definition of

“publication.” See HOWARD B. ABRAMS & TYLER T.

OCHOA, THE LAW OF COPYRIGHT §8:14 (West 2020 ed.)

(“While a number of broad generalities emerge from a

32 Act of Mar. 4, 1909, Pub. L. 60-349, ch. 320, §62, 35 Stat. 1075,

1087-88 (codified in 1947 at 17 U.S.C. §26, repealed 1978).

review of the cases concerning publication, an

exception or contradiction of most if not all of the

generalities about publication can also be found.”);

WILLIAM F. PATRY, PATRY ON COPYRIGHT §6:30 (West

2021 ed.):

Because of the draconian penalty of loss of all

protection—federal and state—for publication without a proper notice, courts deciding

cases under the pre-1976 Act statutes turned

“publication” into a technical construct not

always coterminous with the general notion of

“making public,” or even with the statutory

notion of divestment of common-law rights.

The definition of “publication” in the 1976 Act is

essentially a codification of some of the complex case

law that arose under the 1909 Act. See 17 U.S.C. § 101

(definition of “publication”). Nonetheless, “many

interpretive puzzles remain. The cases themselves

suggest that the meaning of the term is often

unpredictable, and that outcomes may be driven more

by the desire to achieve certain results than by

conformity with settled principles.” Thomas F. Cotter,

Toward a Functional Definition of Publication in

See generally ABRAMS & OCHOA, §§8:25-8:37

(surveying case law on “publication” under the 1976

Act); PATRY ON COPYRIGHT §§6:47-6:55.40 (same).

B. The Ninth Circuit’s Standard for an

Applicant’s “Knowledge” Is Really a

Negligence Standard in Disguise.

Uncertainty regarding the definition of “publication” matters in this case because an application for

whether or not the work has been “published,” and to

list the date and nation of first publication. As the U.S.

The applicant—not the U.S. Copyright

Office—must determine whether a work is

published or unpublished…. Determining

whether a work is published or unpublished

should be based on U.S. copyright law under

Title 17…. The Office will not give specific

legal advice on whether a particular work has

or has not been published. However, if an

assertion is clearly contrary to facts known by

the Office, a claim may be questioned, or in

certain situations, refused.

U.S. COPYRIGHT OFFICE, COMPENDIUM OF COPYRIGHT

OFFICE PRACTICES §1904.1 (rev. 3d ed. 2021).33

Because of the many uncertainties concerning the

definition of publication, determining whether, when

and where a work was first “published” is a daunting

task, fraught with potential hazards, even for an

experienced attorney. For a layperson, confronting

this issue for the first time, the possibility of an

erroneous interpretation of the law is exponentially

larger. Yet under the Ninth Circuit’s decisions in this

case and in Gold Value, a mistake concerning the law

is categorically irrelevant to whether “inaccurate

information” has been included on the application.

This is an absurd interpretation of section 411(b) that

33 Chapter 19 of the Compendium (14 pages) “provides a defini-

tion and discussion of publication for works created or first

published on or after January 1, 1978,” id. at §1901, and the

words “publish,” “published” or “publication” appear 4663 times

in the Compendium (in only 1300 pages).

will lead to innumerable invalidations of registrations.

In Gold Value Int’l Textile, Inc. v. Sanctuary

Clothing, LLC, 925 F.3d 1140 (9th Cir. 2019), plaintiff

Fiesta Fabrics registered a collection of 33 “unpublished” fabric designs. Before the application date,

however, Fiesta had sold samples (190 yards) of one of

the designs to “a limited group of existing and

potential customers for the limited purpose of

securing full production contracts for hundreds or

thousands of yards of fabric.” Id. at 1142. Fiesta’s

president “testified that he knew that sample fabric

bearing the 1461 Design had been sold prior to

approving the copyright registration application, but

that he did not consider sampling to be publication.”

Id. at 1142-43. After the district court invalidated its

first registration, Fiesta filed a second application for

the design as a “published” work. The district court

denied leave to amend to add the new registration.

On appeal, Fiesta argued that “any publication of

the 1461 Design was a ‘limited’ distribution for

promotional purposes and did not constitute legal

publication under the limited publication doctrine.”

Id. at 1145.34 Because Fiesta’s second application was

inconsistent with its first application, however, the

Ninth Circuit held that “Fiesta admitted that this

allegedly limited distribution constituted legal

publication,” id. at 1146 (emphasis added), despite the

34 See Academy of Motion Picture Arts & Sciences v. Creative

House Promotions, Inc., 944 F.2d 1446, 1452 (9th Cir. 1991) (“[A]

publication is ‘limited’ ... when tangible copies of the work are

distributed both (1) to a ‘definitely selected group,’ and (2) for a

limited purpose, without the right of further reproduction,

distribution or sale.”).

fact that Fiesta submitted the second application only

because the district court had invalidated the first one.

Heads I win, tails you lose.

With regard to intent, the Ninth Circuit held that

“knowledge” of the legal definition of publication was

irrelevant: “Although Fiesta asserts that it did not

believe that such sales constituted publication as a

matter of law, … the knowledge requisite to knowing

violation of a statute is factual knowledge as

distinguished from knowledge of the law.” Id. at 1147

(internal citation omitted). Because “Fiesta was

admittedly aware of the facts regarding its fabric

sales,” the Ninth Circuit held that its application

“cannot be characterized as an inadvertent or good

faith mistake.” Id. at 1148 (emphasis added).

In effect, the Ninth Circuit’s standard holds that

an applicant with knowledge of the facts should have

known that that the legal standard of “publication”

was satisfied. This is a negligence standard in all but

name, and it is completely inconsistent with Congress’

direction that only intentional misrepresentations

(“with knowledge that it was inaccurate”) should

invalidate a registration.

C. The Ninth Circuit Found “Knowledge” in

This Case, Despite Suggesting That the

Legal Issue was a Case of First Impression,

and Without Finding Clear Error.

The case before the Court involves both the legal

definition of “publication” and a Copyright Office

regulation that permits “copyrightable elements that

are otherwise recognizable as self-contained works” to

be registered as one work in one application, if they

“are included in a single unit of publication.” 37 C.F.R.

§ 202.3(b)(4)(i)(A) (2011) (emphasis added).35

The Ninth Circuit acknowledged that “this

court has never previously addressed what it means to

publish multiple works as a ‘single unit.’” Unicolors,

Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194,

1199 (9th Cir. 2020), cert. granted, No. 20-915 (U.S.

June 1, 2021) (emphasis added). It also indicated that

the only known precedent outside the circuit on this

question was neither relevant nor helpful. Id. at n.2.

In fact, however, there were numerous precedents on

the issue, all of them suggesting a lenient interpretation of “single unit of publication,” but depending on

different criteria. See Kay Berry, Inc. v. Taylor Gifts,

Inc., 421 F.3d 199, 204-06 (3d Cir. 1995) (works need

not be related, but were included in a single catalog);

Donald Bruce & Co. v. B.H. Multi Com Corp., 964 F.

Supp. 265, 268-69 (N.D. Ill. 1997) (disputed fact issue

whether rings were sold as a line of jewelry, but finding inadvertent error was not material); Benham Jewelry Corp. v. Aron Basha Corp., 45 U.S.P.Q.2d 1078

(S.D.N.Y. 1997) (12 related pendants sold separately

but marketed as a single line); Original Appalachian

Artworks, Inc. v. Toy Loft, Inc., 489 F. Supp. 174, 180

(N.D. Ga. 1980) (dolls sold separately but marketed as

a single line), aff’d, 684 F.2d 821, 828 (11th Cir. 1982)

(different registration error was inadvertent). But see

Tabra, Inc. v. Treasures de Paradise Designs, Inc., 15

U.S.P.Q.2d 1234 (N.D. Cal. 1990) (denying preliminary injunction on multiple grounds, including single

registration of “unrelated” jewelry designs).

35 The same language is now codified, with only minor changes,

at 37 C.F.R. § 202.3(b)(4) (2021).

The point, of course, is not that the Petitioner in

this case was aware of or should have been aware of

these cases. The point is that even an experienced

attorney who found these cases might easily be

uncertain whether a group of works were or were not

included in a “single unit of publication.” Petitioner’s

president, who lacked any legal training, certainly

cannot be said to have stated that they were “with

knowledge that” his opinion was “inaccurate.”36

IV. BOTH KNOWLEDGE AND MATERIALITY

SHOULD BE INTERPRETED LENIENTLY

TO AVOID THE CHAOS OF INVALIDATING THOUSANDS OF REGISTRATIONS.

A. The Analogous Patent Doctrine of

Inequitable Conduct Shows What Can

Happen If Courts Make It Too Easy To

Challenge Registrations.

The doctrine of fraud on the Copyright Office can

be analogized to the doctrine of fraud on the Patent

Office, also known as the doctrine of inequitable

36 Indeed, the trial court found “no evidence indicating that Uni-

colors knew the 400 Registration contained false information.”

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 2018 WL

10307045, at *4 (C.D. Cal. Aug. 1, 2018) (emphasis added). The

Ninth Circuit’s finding to the contrary was not based on any

finding of clear error, but solely on testimony as to Unicolors’

general business practices: “Unicolors would have placed nonconfined designs in [its] showroom, making them ‘available for

public viewing’ and purchase. Confined designs, on the other

hand, would not be placed in [its] showroom for the public at large

to view.” 959 F.3d. at 1196 (emphasis added). Note the conditional tense of the testimony that the appellate panel relied on.

conduct. “Inequitable conduct is an equitable defense

to patent infringement that, if proved, bars enforcement of a patent.” Therasense, Inc. v. BectonDickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011)

(en banc). As the Federal Circuit explained, “[t]his

judge-made doctrine evolved from a trio of Supreme

Court cases that applied the doctrine of unclean hands

to dismiss patent cases involving egregious

misconduct.” Id. “Each of these unclean hands cases

before the Supreme Court dealt with particularly

egregious misconduct, including perjury, the

manufacture of false evidence, and the suppression of

evidence.” Id. at 1287. See Keystone Driller Co. v.

General Excavator Co., 290 U.S. 240, 243 (1933);

Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322

U.S. 238, 240, 245 (1944), overruled on other grounds

by Standard Oil Co. v. United States, 429 U.S. 17

(1976); and Precision Instrument Mfg. Co. v.

Automotive Maintenance Machinery Co., 324 U.S. 806,

816-20 (1945).

As the doctrine evolved, “inequitable conduct

came to require a finding of both intent to deceive and

materiality.” Therasense, 649 F.3d at 1287. Over time,

however, the Federal Circuit began to water these

elements down. As the court in Therasense explained:

In the past, this court has espoused low

standards for meeting the intent requirement,

finding it satisfied based on gross negligence or

even negligence…. This court has also previously

adopted a broad view of materiality…. [See] 37

C.F.R. § 1.56 (1977) (a reference is material if

“there is a substantial likelihood that a

reasonable examiner would consider it important

in deciding whether to allow the application to

issue as a patent”). Further weakening the

showing needed to establish inequitable conduct,

this court … [began to hold] patents

unenforceable based on a reduced showing of

intent if the record contained a strong showing of

materiality, and vice versa. In effect, this change

conflated, and diluted, the standards for both

intent and materiality.

Id. at 1287-88.

Although the Federal Circuit “embraced these

reduced standards for intent and materiality” with

the best of intentions, “to foster full disclosure to the

PTO,” id. at 1288, the Therasense opinion vividly

describes what happened next: “Left unfettered, the

inequitable conduct doctrine … plagued not only the

courts but also the entire patent system.” Id. at 1289.

“Because the doctrine focuses on the moral turpitude

of the patentee with ruinous consequences for the

reputation of his patent attorney, it discourages

settlement and deflects attention from the merits of

validity and infringement issues…. Inequitable

conduct disputes also increase the complexity,

duration and cost of patent infringement litigation

that is already notorious for its complexity and high

cost.” Id. at 1288. Summarizing these and additional

negative consequences, the Federal Circuit concluded:

While honesty at the PTO is essential, low

standards for intent and materiality have

inadvertently led to many unintended consequences, among them, increased adjudication

cost and complexity, reduced likelihood of

settlement, burdened courts, strained PTO

resources, increased PTO backlog, and impaired

patent quality. This court now tightens the

standards for finding both intent and materiality

in order to redirect a doctrine that has been

overused to the detriment of the public.

Id. at 1290 (emphasis added).

There are, of course, significant differences

between the patent and copyright systems. In particular, the system of prior art search, substantive

examination, and grant in the Patent Office results in

a presumption of validity that can only be overcome

by clear and convincing evidence. Microsoft Corp. v.

i4i, L.P., 564 U.S. 91, 95 (2011). By contrast, the

17 U.S.C. § 408(a), and it examines applications only

“to determine whether they satisfy the statutory

requirements for registrability, including copyrightability, and otherwise comply with the Office’s

regulations.” U.S. COPYRIGHT OFFICE, COMPENDIUM

OF COPYRIGHT OFFICE PRACTICES §101.3(A) (rev. 3d ed.

2021). Thus, the presumption of validity for

copyrights in 17 U.S.C. § 410(c) is only a “bursting

bubble” presumption that orders the burdens of

producing evidence. Fed. R. Evid. 301; Estate of

Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149,

166-67 (2d Cir. 2003); Entertainment Research Group,

Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211,

1217-18 (9th Cir. 1997). Nonetheless, in interpreting

section 411(b), this Court should take care not to

water down the standards of intent and materiality

prescribed by Congress, lest it inadvertently re-create

(on a lesser scale) the kinds of problems encountered

in the analogous context of fraud on the Patent Office.

B. Materiality is Relevant Only After a Court

Finds the Applicant Submitted Inaccurate

Information With Knowledge or Intent.

17 U.S.C. § 411(b)(2) provides: “In any case in

which inaccurate information … is alleged, the court

shall request the Register of Copyrights to advise the

court whether the inaccurate information, if known,

would have caused the Register of Copyrights to

refuse registration.” Although not stated in the

legislative history, this subsection may have been

inspired by the embarrassing episode in Whimsicality,

Inc. v. Rubie’s Costume Co., 891 F.2d 452 (2d Cir.

1989), in which the Second Circuit erroneously invalidated a registration based on “fraud on the Copyright

Office” because of its misunderstanding of Copyright

Office procedures.

In registering six of its animal costumes, plaintiff

Whimsicality described the works as “soft sculptures”

rather than as “costumes.” 891 F.2d at 454. The

district court held the costumes were not protected by

graphic, or sculptural features that can be identified

separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17

U.S.C. § 101 (definition of “pictorial, graphic, and

sculptural works”); see generally Star Athletica, LLC

v. Varsity Brands, Inc., 580 U.S. ___, 137 S. Ct. 1002

(2017). The Second Circuit affirmed on the alternative

ground that Whimsicality had committed “fraud on

the Copyright Office,” because “[i]t was aware … that

an application for costumes as such would be

rejected.” 891 F.2d at 455-56.

On remand, however, the plaintiff submitted an

affidavit from Copyright Office Examiner Frank

Vitalos, Section Head of the Visual Arts Section of the

United States Copyright Office. In it, he explained

“that the use of the term ‘soft sculpture’ on the registration applications was within the practice routinely

allowed by the Copyright Office, and that he decided

to issue the registrations after finding separable

artistic content in the works.” Whimsicality, Inc. v.

Rubie’s Costume Co., 836 F. Supp. 112, 115 (S.D.N.Y.

1993).37 Vitalos further declared that the “description

of the works as soft sculpture did not and does not

constitute a representation to the Copyright Office

that the works in question have no useful function,”

id., and that “Whimsicality did not misrepresent the

nature of the works in question to the Copyright

Office.” Id. at 118. Based on this new evidence, the

district court granted relief from the judgment under

Federal Rule of Civil Procedure 60(b)(2). It found that

“Whimsicality’s [alleged] ‘bad faith’ did not involve

affirmative misstatements or the withholding of

material information from the copyright examiner,”

and that “no reasonable Copyright Office examiner

would have been misled by the Whimsicality applications and accompanying deposits.” 836 F. Supp. at

120. Consequently, the court held that “there was no

fraud on the copyright office in connection with the

registration of the six Whimsicality costumes in

question.” Id. at 120-21.

37 See also U.S. COPYRIGHT OFFICE, COMPENDIUM OF COPYRIGHT

OFFICE PRACTICES §808.11(D) (rev. 3d ed. 2021) (explaining that

where the applicant claims there are separable artistic “features”

in costumes, “the authorship should be specifically described,

such as … ‘soft sculpture’ (in the case of a puppet or animal

costume).”).

Although input from the Copyright Office is valuable and necessary, courts have nonetheless recognized that the §411(b) mechanism has “obvious

potential for abuse.” DeliverMed Holdings, LLC v.

Schaltenbrand, 734 F.3d 616, 625 (7th Cir. 2013). See

also Energy Intelligence Group v. CHS McPherson

Refinery, Inc., 304 F. Supp. 3d 1051, 1055 (D. Kan.

2018) (“this procedure creates a serious potential for

abuse because it allows infringers to delay proceedings simply by alleging technical violations of the

underlying copyright registrations.”). If mere

allegations are sufficient to trigger the court’s duty to

make a § 411(b)(2) request to the Copyright Office, it

gives infringers a blueprint for an effective stalling

tactic, one that will exacerbate delays as more

defendants use it and the Copyright Office is

inundated with § 411(b)(2) queries.

Instead, courts have sensibly conducted their

own assessment of any such allegations before

sending a query to the Copyright Office. See

DeliverMed, 734 F.3d at 625 (“courts can demand that

the party seeking invalidation first establish that the

other preconditions to invalidity are satisfied before

obtaining the Register’s advice on materiality.”);

Energy Intelligence, 304 F. Supp. 3d at 1055-56

(“before seeking the Register’s advice on materiality,

the party seeking invalidation of the copyright must

first establish the preconditions to invalidity”);

Yellowcake Inc. v. Morena Music, ___ F. Supp. 3d ___,

2021 WL 795823, at *19 (E.D. Cal., Mar. 2, 2021)

(ordering copyright owner “to respond to

the

challenges to the validity of its registrations” before

query to Copyright Office). The Copyright Office itself

has recommended that “before asking the Register

whether she would have refused to register a

whether there is in fact a misstatement of fact.”

DeliverMed, 734 F.3d at 625 (quoting the Register’s

response).

CONCLUSION

Since the 1909 Act, Congress has slowly but

steadily reduced the United States’ reliance on

formalities as a condition of copyright protection.

Section 411(b) continued this trend by codifying, for

the first time, the doctrine of fraud on the Copyright

Office, and strengthening the element of materiality.

An applicant cannot be said to have “knowledge” that

the publication status of a work is inaccurate when

the case law on the legal standard of “publication” is

in a confused and contradictory state. The Ninth

Circuit’s standard of “knowledge, which precludes any

inquiry into legal matters, is in effect a negligence

standard, because it compels a finding that an

applicant should have known what the legal definition

of “publication” is. If the Ninth Circuit’s standard is

upheld, it can reasonably be predicted that chaos will

ensue, as happened when the Federal Circuit briefly

adopted a similar watered-down standard in patent

law.

The judgment of the court of appeals should be

reversed, and the case should be remanded to

determine whether any errors on the application were

intentional, taking legal knowledge into account,

before asking the Register to opine on whether the

error was “material” under subsection 411(b)(2).

Respectfully submitted,

Tyler T. Ochoa

Counsel of Record

SANTA CLARA UNIVERSITY

SCHOOL OF LAW

500 El Camino Real

Santa Clara, CA 95053

(408) 554-2765

ttochoa@scu.edu

August 10, 2021

APPENDIX

Amici curiae are the intellectual property law

professors listed below. Affiliation is provided for

identification purposes only; all signatories are

participating in their individual capacity and not on

behalf of their institutions.

Professor Tyler T. Ochoa

High Tech Law Institute

Santa Clara University School of Law

Professor Phillip Edward Page

South Texas College of Law Houston

Professor Srividhya Ragavan

Texas A&M University School of Law

Assistant Professor Zvi S. Rosen

Southern Illinois University School of Law

and 2015-2016 Abraham L. Kaminstein

Scholar-in-Residence, U.S. Copyright Office

Professor Susan Scafidi

Founder and Director, Fashion Law Institute

Fordham University School of Law

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.