Supreme Court finds bona fide error in copyright case

On February 24, 2022, the United States Supreme Court in Unicolors, Inc. v. H&M Hennes & Mauritz, LP, 211 L.Ed.2d 586 (US 2022) discussed the “knowledge” element in 17 USC 411(b) for copyright registrations. In a 6-3 decision, reversing the Ninth Circuit Court of Appeals, the High Court held that the “knowledge” requirement of Section 411(b) did not distinguish between an error of law and a error of fact, ultimately concluding that a good – faith error of law or fact can excuse an inaccuracy in a copyright registration under the safe harbor of section 411(b)(1) (A), and therefore does not preclude a copyright owner from asserting a valid claim of copyright infringement.

Context and challenges

Unicolors, Inc. creates and copyrights artwork, prints it on fabric, and markets the designed fabrics to apparel manufacturers. In some cases, however, Unicolors designs “contained” works created for a specific client. This customer is granted the exclusive right to use the confined artwork for at least a few months, during which time Unicolors does not offer to sell the artwork to other customers. In February 2011, Unicolors registered certain works of art with the US Copyright Office, including a two-dimensional geometric design, US registration number VA 1-770-400 (the 400 registration). Record 400 is a “single unit record” of 31 separate designs in a single copyright record, including geometric design EH101.

H&M Hennes & Mauritz, LP (H&M) owns and operates hundreds of retail apparel stores in the United States. At the end of 2015, H&M stores started selling a fabric jacket and skirt with an artistic pattern named “Xue Xu”. When H&M sold clothes bearing the Xue Xu artwork, Unicolors sued for copyright infringement, alleging that H&M’s sales infringed Unicolors’ copyrighted EH101 design. Unicolor claimed the works were “line by line, layer by layer” identical.

In 2016, Unicolors sued H&M for copyright infringement over the work EH101. At trial, the jury found in favor of Unicolors and awarded Unicolors nearly $800,000 in damages and attorneys’ fees and costs. H&M filed and refiled a motion for judgment as a matter of law, attacking the validity of Unicolors’ copyright registration because it wrongly filed a single registration application for 31 works distinct. H&M argued that the underlying application was defective because the 31 designs were not published in the same publishing unit and therefore Unicolors’ registration was invalid. Generally, to enforce copyright protection, the author of a work must have obtained a valid copyright registration before filing a claim of copyright infringement. If H&M were able to invalidate Unicolors’ registration, Unicolors’ claims would fail.

The District Court for the Central District of California rejected H&M’s arguments, finding that although the recording included inaccurate statements, Unicolors submitted the application without “knowing that it was inaccurate” with respect to “the unity publication record”. See Unicolors, Inc. c. Hennes, no. 2:16-cv-02322-AB (SKx), 2018 US Dist. LEXIS 230412, p. 2 (CD Cal. 25 Sept. 2018).

H&M appealed to the Ninth Circuit, which disagreed with the district court, stating that the “publishing unit” for recording purposes must first have been available to the public as a “single grouped collection”. See Unicolors, Inc. c. H&M Hennes & Mauritz, Ltd. partnership, 959 F.3d 1194, 1196 (9th Cir. 2020). Thus, the misrepresentation in Unicolors’ application reflected an error of law and not an error of fact. The Ninth Circuit held that the law only excused sincerity errors of fact, not of law, and that the inaccuracy of Unicolors’ claim was sufficient to invalidate the registration. Unicolors sought certiorari to review the Ninth Circuit’s interpretation of Section 411(b)(1)(A), and the United States Supreme Court granted the motion.

The opinion of the Supreme Court

Justice Breyer, writing for the majority, began interpreting the “knowledge” requirement of section 411(b)(1)(A) by reviewing the text of the statute to determine its meaning. ordinary. Section 411(b)(1) states that a registration is valid: “no matter if the [registration] the certificate contains inaccurate information unless … the inaccurate information was included in the application for registration of copyright knowing that it was inaccurate.” 17 USC section 411 (b)(1)(emphasis added). The majority argued that case law and the dictionary have historically defined ‘knowledge’ as ‘the fact or condition of being aware of something’. Unicolors claims that it I did not know that the application for 31 designs does not meet the “unity of publication” requirement when registering its copyright. Thus, applying the definition of “knowledge”, the Court found no difference in Unicolors’ error of law, as opposed to error of fact, in registering 31 designs for copyright registration.

Next, the Court looked to legislative intent, particularly other areas of copyright law, to confirm that “knowledge” means actual and subjective knowledge of the facts and the law. Judge Breyer asserted that Congress would have imposed a “scientific” element to Section 411(b)(1), beyond actual knowledge, requirement in the statute – but did not. He also referred to rulings made before the enactment of section 411(b)(1), which found “overwhelming[ly] only involuntary errors on the registration certificates [did] does not invalidate a copyright and therefore [did] does not prevent infringement actions. Thus, Justice Breyer concluded that Congress intended to apply the ordinary meaning of “knowledge” to define the requirement in statute.

Finally, the majority opinion considered legislative history in interpreting Section 411(b)(1). The Court found that Congress enacted Section 411(b)(1) to make it easier, rather than more difficult, for nonlawyers to obtain valid copyright registrations. HR Rep. no. 110–617, p. 20 (2008). The House report said in part that “history shows that Congress enacted Safe Harbor to make it easier to obtain and enforce copyrights and to close loopholes that might prevent enforcement of copyrights.” ‘otherwise valid copyright registrations’. Based on ordinary meaning, legislative intent and legislative history, the Court recognized that it would make no sense if Section 411(b)(1) left copyright records exposed. to invalidation due to plaintiffs’ good faith misunderstandings of the details of copyright law. . Thus, the Supreme Court reversed the Ninth Circuit’s decision, finding that Unicolors’ certificate of registration containing inaccuracies – both factual and legal – was excusable under Section 411(b)(1) of the Copyright Act.

The impact

The majority opinion in unicolours thus clarified the scope of Section 411(b)(1)(A) under the “knowledge” requirement to refer to both the facts and the law for copyright owners. The Supreme Court’s decision broadened the interpretation of Section 411(b)(1)(A) to give non-lawyers the confidence to enforce copyright protection and increase the Barrier for Copyright Defendants to Assess 411(b) Claims. arrangement.

In some cases, a copyright owner may simply invoke “lack of knowledge” to avoid the consequences of an inaccurate copyright registration application. This does not always mean that all alleged errors will be forgiven unchallenged. Whether a plaintiff acted with or without “knowledge” of an inaccuracy, however, remains a question of fact. Also, lack of knowledge is only excusable if done in “good faith”, which means willful blindness will not be excused. Accordingly, when planning their defence, a copyright defendant seeking to challenge the validity of a recording should attempt to develop evidence, both direct and circumstantial, to show that a copyright owner author has “willfully blinded” the applicable law or fact when applying for a certain work for copyright registration.

About Jessica J. Bass

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