Overview
At our Copyright Roundup a few weeks ago, one of the cases we highlighted was Unicolors v. H&M, which concerned whether certain misstatements in a copyright application could result in invalidating the copyright. At the time, we were waiting on the Supreme Court’s decision following argument in November. Late last week, the Supreme Court held in a 6-3 decision that Unicolors' mistake of law, even knowing the underlying facts, did not meet the requirement for a misstatement warranting invalidating its copyright.
The Copyright Office permits applicants to seek registration for a collection of separate works with a single application, only if those works were all "included in the same unit of publication." 37 C.F.R. § 202.3(b)(4). Unicolors sought to register copyrights on 31 fabric designs in a single application, although Unicolors had made some designs available separate from others. The Copyright Act also provides that a registration remains effective even if the application contained inaccurate information unless the applicant included the inaccuracy "with knowledge that it was inaccurate" and if the Copyright Office would have denied registration if it knew of the error. 17 U.S.C. § 411(b)(1).
Unicolors claimed that it was not aware of the "single unit of publication" requirement, and contended it therefore lacked the knowledge required by Section 411. H&M, facing litigation alleging infringement of those works, sought to invalidate Unicolors’s copyright registration based on this factual error.
The district court agreed with H&M, but the Ninth Circuit held that only a good faith mistake of fact could excuse an inaccuracy.
Justice Breyer, writing for the majority, evaluated the statutory language and the legislative history, noting that the goal was to prevent infringers from escaping liability by exploiting clerical errors like checking the wrong box—an error that could stem from either a legal error or a factual error. This was particularly so because typical copyright registrants are "novelists, poets, painters, designers, and others without legal training."
Justice Thomas dissented, joined by Justice Alito and joined in part by Justice Gorsuch. Justice Thomas would have dismissed the writ of certiorari as improvidently granted. In particular, the question that the Court was asked to consider concerned a circuit split about whether deceptive or fraudulent intent was required to warrant invalidation under Section 411. Ultimately, the merits briefing, argument, and majority opinion pivoted focus to "actual knowledge" and the mistake-of-law question rather than fraudulent intent. Justice Thomas would not have decided those questions. Justice Thomas (joined by Justice Alito, but not Justice Gorsuch), also would have found that Unicolors had constructive knowledge of its legal error.
In addition to the legal issue it decided, this decision is also notable, as it is likely to be Justice Breyer's last opinion in an intellectual property matter before he retires at the end of this term (assuming confirmation of his successor).