FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

UNICOLORS, INC., a California 

Corporation,

Plaintiff-Appellee,

v.

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

New York limited partnership,

Defendant-Appellant.

Nos. 18-56253

18-56548

D.C. No.

2:16-cv-02322-

AB-SK

OPINION

Appeal from the United States District Court

for the Central District of California

Andre Birotte, Jr., District Judge, Presiding

Submitted March 30, 2020*

Pasadena, California

Filed May 29, 2020

* The panel unanimously concludes this case is suitable for decision 

without oral argument. See Fed. R. App. P. 34(a)(2).
2 UNICOLORS V. H&M HENNES & MAURITZ

Before: Carlos T. Bea and Bridget S. Bade, Circuit Judges, 

and Jon P. McCalla,** District Judge.

Opinion by Judge Bea

SUMMARY***

Copyright

The panel reversed the district court’s judgment after a 

jury trial and award of attorneys’ fees in favor of the plaintiff 

in a copyright infringement action, and remanded for further 

proceedings concerning copyright registration.

The district court denied defendant’s motion for 

judgment as a matter of law on the ground that plaintiff’s 

copyright registration was invalid because it secured the 

registration by including known inaccuracies in its 

application for registration.

The panel held that under 17 U.S.C. § 411(b)(1)–(2), 

once a defendant alleges that (1) a plaintiff’s certificate of 

registration contains inaccurate information; (2) “the 

inaccurate information was included on the application for 

copyright registration;” and (3) the inaccurate information 

was included on the application “with knowledge that it was 

inaccurate,” a district court is then required to submit a 

** The Honorable Jon P. McCalla, United States District Judge for 

the Western District of Tennessee, sitting by designation.

*** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
UNICOLORS V. H&M HENNES & MAURITZ 3

request to the Register of Copyrights “to advise the court 

whether the inaccurate information, if known, would have 

caused [it] to refuse registration.” In other words, courts 

may not consider in the first instance whether the Register of 

Copyrights would have refused registration due to the 

inclusion of known inaccuracies in a registration application. 

The panel held that the district court erred in imposing 

an intent-to-defraud requirement for registration 

invalidation. The district court further erred in concluding 

that plaintiff’s application for copyright registration of a 

collection of works did not contain inaccuracies. The panel 

held that single-unit registration requires that the registrant 

first published a collection of works in a singular, bundled 

collection. The panel also concluded that the undisputed 

evidence adduced at trial showed that plaintiff included the 

inaccurate information with knowledge that it was 

inaccurate. Accordingly, the district court was required to 

request the Register of Copyrights to advise the court 

whether the inaccurate information, if known, would have 

caused the Register to refuse registration. The panel 

reversed and remanded for the district to complete this 

statutorily required request.

COUNSEL

Staci Jennifer Riordan, Aaron Brian, and Dale A. Hudson, 

Nixon Peabody LLP, Los Angeles, California, for 

Defendant-Appellant.

Stephen M. Doniger, Scott Alan Burroughs, and Trevor W. 

Barrett, Doniger / Burroughs, Venice, California, for 

Plaintiff-Appellee.
4 UNICOLORS V. H&M HENNES & MAURITZ

OPINION

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 

issue whether Unicolors has a valid copyright registration for 

its 2011 design, which is a precondition to bringing a 

copyright-infringement suit.

I

Unicolors’s business model is to create artwork, 

copyright it, print the artwork on fabric, 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 
UNICOLORS V. H&M HENNES & MAURITZ 5

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 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.

When asked about the ’400 Registration at trial, Mr. 

Pazirandeh testified that Unicolors submits collections of 

works in a single copyright registration “for saving money.” 

Mr. Pazirandeh added that the first publication date of 

January 15, 2011 represented “when [Unicolors] present[ed] 

[the designs] to [its] salespeople.” But these salespeople are 

Unicolors employees, not the public. And the presentation 

took place at a company member-only meeting. Following 

the presentation, according to Mr. Pazirandeh, Unicolors 

would have placed non-confined designs in Unicolors’s 

showroom, making them “available for public viewing” and 

purchase. Confined designs, on the other hand, would not 

be placed in Unicolors’s showroom for the public at large to 

view.
6 UNICOLORS V. H&M HENNES & MAURITZ

H&M owns and operates hundreds of clothing retail 

stores in the United States. In fall 2015, H&M stores began 

selling a jacket and skirt made of fabric bearing an artwork 

design named “Xue Xu.” Upon discovering H&M was 

selling garments bearing the Xue Xu artwork, Unicolors 

filed this action for copyright infringement, alleging that 

H&M’s sales infringed Unicolors’s copyrighted EH101 

design. Unicolors alleges that the two works are “row by 

row, layer by layer” identical to each other.

The case proceeded to trial, at which a jury returned a 

verdict in Unicolors’s favor, finding Unicolors owned a 

valid copyright in the EH101 artwork, H&M infringed on 

that copyright by selling the contested skirt and jacket, and 

H&M’s infringement was willful. The jury awarded 

Unicolors $817,920 in profit disgorgement damages and 

$28,800 in lost profits.

H&M filed a renewed motion for judgment as a matter 

of law, or in the alternative, for a new trial. The district court 

denied H&M’s renewed motion for judgment as a matter of 

law, but conditionally granted H&M’s motion for a new trial 

subject to Unicolors accepting a remittitur of damages to 

$266,209.33. Unicolors accepted the district court’s 

remittitur and the district court entered judgment against 

H&M accordingly. Unicolors subsequently moved for 

attorneys’ fees and costs, which the district court awarded in 

the amounts of $508,709.20 and $5,856.27, respectively. 

This appeal of both the entry of judgment and award of 

attorneys’ fees in favor of Unicolors followed.

II

“To establish infringement, two elements must be 

proven: (1) ownership of a valid copyright, and (2) copying 

of constituent elements of the work that are original.” Feist 
UNICOLORS V. H&M HENNES & MAURITZ 7

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 

(1991). As to ownership, a registration certificate issued by 

the U.S. Register of Copyrights constitutes prima facie 

evidence of the validity of a plaintiff’s copyright. 17 U.S.C. 

§ 410(c).

Although proper registration benefits copyrightinfringement plaintiffs by imbuing their copyright with a 

presumption of validity, proper registration is also a burden 

of sorts, as it is “a precondition to filing an action for 

copyright infringement.” Gold Value Int’l Textile, Inc. v. 

Sanctuary Clothing, LLC, 925 F.3d 1140, 1144 (9th Cir. 

2019); see 17 U.S.C. § 411(a). Proper registration, of 

course, is not a precondition to copyright protection. 

17 U.S.C. § 408(a). But the Copyright Act expressly 

prohibits copyright owners from bringing infringement 

actions without first properly registering their work. Id.

§ 411(a). Whether a copyright is properly registered is 

rarely disputed, because the mere receipt of a registration 

certificate issued by the Register of Copyrights ordinarily 

satisfies the Copyright Act’s registration requirement. Id.

§ 411(b)(1). But possession of a registration certificate does 

not satisfy the Copyright Act’s registration requirement if 

the registrant secured the registration by knowingly 

including inaccurate information in the application for 

copyright registration that, if known by the Register of 

Copyrights, would have caused it to deny registration. Id.

In practice, once a defendant alleges that (1) a plaintiff’s 

certificate of registration contains inaccurate information; 

(2) “the inaccurate information was included on the 

application for copyright registration”; and (3) the inaccurate 

information was included on the application “with 

knowledge that it was inaccurate,” a district court is then 

required to submit a request to the Register of Copyrights “to 
8 UNICOLORS V. H&M HENNES & MAURITZ

advise the court whether the inaccurate information, if 

known, would have caused [it] to refuse registration.” Id.

§ 411(b)(1)–(2). In other words, courts may not consider in 

the first instance whether the Register of Copyrights would 

have refused registration due to the inclusion of known 

inaccuracies in a registration application.

Here, following the unfavorable verdict, H&M filed a 

renewed motion for judgment as a matter of law that 

contended, in relevant part, that Unicolors’s ’400 

Registration covering the EH101 work was invalid because 

Unicolors secured the registration by including known 

inaccuracies in its application for registration. In particular, 

H&M noted that Unicolors used a single copyright 

registration to register thirty-one separate works, one of 

which was EH101. But to register a collection of works as a 

“single unit” as Unicolors did, H&M maintained that the 

works must have been first sold or offered for sale in some 

integrated manner. And because the undisputed evidence 

adduced at trial showed that Unicolors included in the ’400 

Registration at least nine confined works that were sold 

separately and exclusively to individual customers, H&M 

argued that the collection of works identified in the ’400 

Registration were not first sold together and at the same 

time. In turn, H&M contended the district court should find 

the ’400 Registration invalid and enter judgment in favor of 

H&M.

The district court rejected H&M’s argument for 

invalidating the ’400 Registration for two reasons. First, the 

district court held that invalidation required a showing at 

trial that Unicolors intended to defraud the Copyright Office, 

and found no evidence introduced at trial showed such an 

intent. Second, the district court held that although 

Unicolors may have marketed and sold various works 
UNICOLORS V. H&M HENNES & MAURITZ 9

included in the ’400 Registration separately, that did not 

mean all of the works were not first made available to the 

public—i.e., published—on the same day.

Both the district court’s reasons for denying H&M 

judgment as a matter of law are flawed. To be sure, several 

opinions from this Court have implied that there is an intentto-defraud requirement for registration invalidation. See 

L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 

853–54 (9th Cir. 2012); see also Lamps Plus, Inc. v. Seattle 

Lighting Fixture Co., 345 F.3d 1140, 1145 (9th Cir. 2003) 

(stating that inaccuracies “do not invalidate a copyright . . . 

[unless] the claimant intended to defraud the Copyright 

Office by making the misstatement”) (quoting Urantia 

Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)); 

Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486–87 

(9th Cir. 2000) (same), overruled on other grounds by 

Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020) (en 

banc); Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc., 

777 F.2d 485, 487 (9th Cir. 1985) (“Absent fraud, a 

misstatement or clerical error in the registration application 

. . . will not invalidate the copyright . . . .”) (internal 

quotation marks omitted), overruling on other grounds 

recognized by Apple Computer, Inc. v. Microsoft Corp., 

35 F.3d 1435, 1448 (9th Cir. 1994); 2 M. Nimmer & D. 

Nimmer, Nimmer on Copyright § 7.20[B][1] (2019). But we 

recently clarified that there is no such intent-to-defraud 

requirement. See Gold Value Int’l Textile, Inc., 925 F.3d at 

1147 (9th Cir. 2019).

The district court further erred in concluding that 

Unicolors’s application for copyright registration did not 

contain inaccuracies despite the inclusion of confined 

designs because single-unit registration requires merely that 

all works identified in the application be published on the 
10 UNICOLORS V. H&M HENNES & MAURITZ

same date. Under the Copyright Act, an author may register 

a collection of published works “as a single work,” so that 

the registrant need pay only one filing fee. 37 C.F.R. 

§ 202.3(b)(4) (effective January 24, 2011).1 To register such 

a collection of published works, the works must have been 

“included in a single unit of publication.” Id. 

§ 202.3(b)(4)(i)(A) “Publication” under the Copyright Act 

is defined as the initial “distribution” or “offering to 

distribute” the “work to the public by sale or other transfer 

of ownership, or by rental, lease, or lending.” 17 U.S.C. 

§ 101. As we have explained, publication includes when 

copies of a work are “made available to the general public 

. . . even if a sale or other such disposition does not in fact 

occur.” Am. Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 

(9th Cir. 1981) (quoting 1 M. Nimmer & D. Nimmer, 

Nimmer on Copyright § 4.04 at 4-18 to 4-19 (1978)). The 

confined designs, however, were not placed in the showroom 

for sale at the same time. And this court has never previously 

addressed what it means to publish multiple works as a 

“single unit.”2

We conclude that the plain meaning of “single unit” in 

§ 202.3(b)(4)(i)(A) requires that the registrant first 

published the collection of works in a singular, bundled 

1 The current version of § 202.3(b)(4) refers to registration “as one 

work” rather than “as a single work.” We use the language of the 

regulation’s version effective January 24, 2011, which is the operative 

version in this case.

2 The Third Circuit discussed the single-unit requirement in a 

published opinion, but that case provides no help to the matter at hand. 

See Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 204–06 (3d Cir. 

2005) (mentioning the single-unit registration option and concluding the 

individual works need not be “related,” but not explaining what it means 

for works to be part of a “single unit”).
UNICOLORS V. H&M HENNES & MAURITZ 11

collection. The relevant language of the regulation provides, 

in full:

For the purpose of registration on a single 

application and upon payment of a single 

registration fee, the following shall be 

considered a single work:

(A) In the case of published works: all 

copyrightable elements that are otherwise 

recognizable as self-contained works, that 

are included in a single unit of publication, 

and in which the copyright claimant is the 

same[.]

37 C.F.R. § 202.3(b)(4)(i)(A) (emphasis added). The plain 

meaning of the word “single” unsurprisingly commands a 

sense of singularity. See Single, Merriam-Webster 

Dictionary, https://www.merriam-webster.com/dictionary/s

ingle (defining “single” as “unaccompanied by others”). 

The plain meaning of “unit” is no different. See Unit, 

Merriam-Webster Dictionary, https://www.merriamwebster.com/dictionary/unit (defining “unit” as “a single 

thing, person, or group that is a constituent of a whole”). 

Together, the two words suggest that a “single unit of 

publication” refers to some singular, bundled item that 

contains all works identified in the registration.

The proverbial toolkit of statutory interpretation 

reinforces that a collection of published works that make up 

“a single unit of publication” must have been first published 

as part of some singular, bundled collection. The principle 

of noscitur a sociis—“it is known by its associates” or “birds 

of a feather flock together”—instructs that words in statutes 

are given more precise content by neighboring words. 
12 UNICOLORS V. H&M HENNES & MAURITZ

See Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 740 

(2017); see also Antonin Scalia & Bryan A. Garner, 

Reading Law: The Interpretation of Legal Texts, 195–98 

(2012) (describing noscitur a sociis and explaining its 

meaning as “birds of a feather flock together”). Here, 

§ 202.3(b)(4)(i)(A) refers to “copyrightable elements that 

are otherwise recognizable as self-contained works, which 

are included in a single unit of publication.” (emphasis 

added). By referring to “elements” that are “otherwise . . . 

self-contained works,” the regulation unambiguously 

contemplates that a “single-unit of publication” does not 

cover separate self-contained works, but instead covers the 

unification of such works that otherwise could be selfcontained.3

For these reasons, we hold that a collection of works 

does not qualify as a “single unit of publication” unless all 

individual works of the collection were first published as a 

singular, bundled unit. Therefore, it is an inaccuracy for a 

registrant like Unicolors to register a collection of works 

(such as the works identified in the ’400 Registration) as a 

single-unit publication when the works were not initially 

3 Even if the term “single unit” were ambiguous, we would hold the 

term has the same meaning. If it were ambiguous, we would look to how 

the U.S. Copyright Office has defined the term in its internal manual,

Compendium of Copyright Office Practices (“Compendium”), which is 

entitled to Skidmore deference. Inhale, Inc. v. Starbuzz Tobacco, Inc., 

755 F.3d 1038, 1041–42 & n.2 (9th Cir. 2014). The Compendium details 

that the “single unit of publication” option applies to a collection of 

published works “first distributed to the public in the packaged unit.” 

Compendium § 1103. In other words, a single unit of publication refers 

to separately copyrightable works “that are physically bundled together 

and distributed to the public as a unit, such as a board game containing 

instructions, a game board, and sculpted playing pieces.” Id. The 

Compendium’s definition for “single unit” thus aligns with what we 

ascribe as its unambiguous and plain meaning.
UNICOLORS V. H&M HENNES & MAURITZ 13

published as a singular, bundled collection. At a minimum, 

the confined works included in the ’400 Registration were 

initially made available only to individual, exclusive 

customers.

The undisputed evidence adduced at trial further shows 

that H&M included the inaccurate information “with 

knowledge that it was inaccurate.” 17 U.S.C. 

§ 411(b)(1)(A). And the knowledge inquiry is not whether 

Unicolors knew that including a mixture of confined and 

non-confined designs would run afoul of the single-unit 

registration requirements; the inquiry is merely whether 

Unicolors knew that certain designs included in the 

registration were confined and, therefore, were each 

published separately to exclusive customers. See Gold 

Value Int’l Textile, Inc., 925 F.3d at 1147. At trial, Unicolors 

admitted to having such knowledge.

Although Unicolors’s application for the ’400 

Registration contained known inaccuracies, that does not 

mean H&M was entitled to judgment as a matter of law. 

Rather, the district court was required to “request the 

Register of Copyrights to advise the court whether the 

inaccurate information, if known, would have caused the 

Register . . . to refuse registration.” 17 U.S.C. § 411(b)(2). 

Because the district court did not make the statutorily 

required request, we remand the case so that the district court 

can complete this requirement before deciding whether 

Unicolors’s registration is invalid, which would require 

dismissing Unicolors’s claims and entering judgment in 

favor of H&M.

III

For the foregoing reasons, we reverse the district court’s 

entry of judgment and award of attorneys’ fees in favor of 
14 UNICOLORS V. H&M HENNES & MAURITZ

Unicolors and remand to the district court with instructions 

to submit an inquiry to the Register of Copyrights asking 

whether the known inaccuracies contained in the ’400 

Registration application detailed above, if known to the 

Register of Copyrights, would have caused it to refuse 

registration. Because the validity of Unicolors’s copyright 

registration is a threshold issue, we do not consider here the 

many other questions presented on appeal.4 In the event the 

district court determines on remand—and after submitting 

the necessary inquiry to the Register of Copyrights—that 

Unicolors has a valid copyright registration in EH101, this 

panel retains jurisdiction over any subsequent appeal to 

review that determination and, if necessary, to decide 

remaining questions presented in this appeal.

REVERSED AND REMANDED.

4 As the Supreme Court has explained, the Copyright Act’s 

registration requirement is not a jurisdictional requirement; rather, it is a 

claim-processing rule. Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 

163–66 (2010). That does not change that Unicolors’s compliance with 

the Copyright Act’s registration requirement is a threshold matter. As 

the Supreme Court recently clarified, a claim-processing rule can still be 

“mandatory,” which means “that a court must enforce the rule if a party 

‘properly raise[s]’ it.” Fort Bend Cty. v. Davis, 139 S. Ct. 1843, 1849 

(2019) (alteration in original) (quoting Eberhart v. United States, 

546 U.S. 12, 19 (2005) (per curiam)). The Fort Bend County Court even 

noted that “the Copyright Act’s requirement that parties register their 

copyrights” is one such mandatory claim-processing rule. Id. Here, the 

parties do not dispute that H&M properly raised its challenge to 

Unicolors’s compliance with the Copyright Act’s registration 

requirement.