Big Little Copyright Lies

An application to register tells the Copyright Office about you, your work and why you’re entitled to register a copyright. To further this goal, the Copyright Act requires that you include only accurate information in your copyright application. Gold Value International Textile d/b/a Fiesta Fabrics learned the consequences of not following this rule the hard way.

Fiesta registered the copyright for a group of textile designs. Fiesta had distributed samples of some of the fabric designs to get production contracts. Then it sold about 190 yards of one fabric with the design. In its copyright application, Fiesta claimed the designs were unpublished.

Fiesta sued Sanctuary Clothing, Inc. and others for allegedly selling a blouse with an infringing textile design. Sanctuary counterclaimed seeking invalidation of Fiesta’s copyright. Sanctuary argued that Fiesta included previously published designs in its application to register an unpublished collection. Fiesta further argued that this inaccurate information regarding publication required invalidation of the registration. Fiesta argued that it didn’t consider the sample distribution and small sale of the design to be “publication”. But that argument was rejected. The District Court couldn’t get a clear handle on whether Fiesta’s inaccurate information was enough to invalidate the registration. Congress passed a law in 2008 that only invalidates the copyright if: (1) the applicant knew that the information was inaccurate; and (2) the inaccurate information would have caused the Register of Copyrights to refuse registration. So the District Court submitted an inquiry to the Register of Copyrights. The Register of Copyrights responded that she would have refused registration because a copyright registration cannot contain a mix of published and unpublished works. And if the Register had known that the application was trying to register a mix of published and unpublished works, she would have refused registration.

The District Court held that Fiesta knowingly included inaccurate information in its copyright application that required invalidation. Not only did the District Court invalidate the copyright, it found that Sanctuary was a prevailing party and entered a judgment for attorneys’ fees in Sanctuary’s favor.

Fiesta appealed to the Ninth Circuit Court of Appeals who affirmed the District Court’s judgment.

WHY YOU SHOULD KNOW THIS. Copyright registration isn’t a perquisite to copyright ownership. But, your copyright has to be registered before you can sue for infringement. So, of course, you have to be careful when you fill out the application to register a copyright. If you discover an error, you can file an application for supplementary registration to correct the error. And this is better done sooner rather than later.