San Diego Copyrights: Knowingly Including Inaccurate Information in Your Copyright Application Will Invalidate Your Copyright

The US Ninth Circuit Court of Appeals recently affirmed that knowingly including inaccurate information in your copyright application will result in your copyright being held invalid. See Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC, Case No. 17-55818 (US 9th Cir. June 4, 2019). The case provides an example where seeking the advice and counsel of an experienced San Diego corporate attorney during the copyright application process would have helped achieve a more desirable result. Copyright law is complex.

The case involved fabric designs. The plaintiff — Gold Value International Textile, Inc., doing business as Fiesta Fabric — brought a lawsuit against the defendant — Sanctuary Clothing, LLC — claiming that Sanctuary copied its fabric design. Further, Sanctuary then sold the fabric with the copied design which was then used to manufacture blouses which were sold by certain retail outlets. In general, artistic designs — like those found in fabric designs — are protected by copyright law. Under the law, copyrights come into existence at the moment that the creative work is authored. However, in order to bring a lawsuit for infringement and to obtain money damages, the author or owner of a copyright must first register the copyright under the federal Copyright Act. See 17 U.S.C. § 101 et seq.

In defending claims of copyright infringement, many defendants seek to challenge the validity of the copyright registration. This is what happened in the Gold Value International case. In response to the lawsuit, Sanctuary filed a counterclaim, seeking invalidation of Fiesta’s copyright. In particular, Sanctuary argued that the fabric pattern at issue — designated as “pattern 1461” — had been listed in the copyright application as “unpublished” when, in fact, the design had been “published” prior to its registration. The distinction between “published” and “unpublished” is an important distinction to the Copyright Office. Claiming that a work is “unpublished” when it is not, is a clear “error” and, if the Copyright Office discovers the error, the Copyright Office will deny registration of the copyright. The published/unpublished distinction becomes particularly problematic when designs and artistic works are registered as part of a group. Under the regulations, on a single copyright application and with payment of a single fee, an author or an owner may seek to register a group of unpublished works as a single work. However, no published works can be included. If there are published works among the group, then the whole registration can be invalidated.

This is precisely what happened with the Fiesta Fabric design. Pattern 1461 was included in an application for a group copyright registration. Fiesta Fabric’s application stated that all the works were unpublished. However, prior to applying for its copyright, various lengths of pattern 1461 had been sold. Selling a design is a form of “publishing.” Further, selling a design also constitutes knowledge that the design was published. As such, including pattern 1461 in an application for “unpublished” designs was an error which would have caused the Copyright Office to deny the application.

Based on the foregoing facts, the trial court invalidated Fiesta Fabric’s copyright. As a result, Sanctuary was not held liable for copyright infringement. The Ninth Circuit affirmed.

Contact San Diego Corporate Law

If you need legal advice and services related to registering copyrights or protecting your company’s other intellectual property, contact Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard focuses his practice on business law, transactional, and corporate matters, and he proudly provides legal services to business owners in San Diego and the surrounding communities. Mr. Leonard can be reached at (858) 483-9200 or via email. Like us on Facebook.

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