March 22, 2022
Unicolors, Inc v. H&M Hennes & Mauritz, LP, 142 S. Ct. 941 (2022) (Breyer, J.)
Response by Jasper L. Tran†
Geo. Wash. L. Rev. On the Docket (Oct. Term 2021)
Slip Opinion | SCOTUSblog
Copyright’s Legal Mistake
Not every Supreme Court case is monumental.1 While some have certainly changed the law in drastic ways,2 the rest function to merely clarify and harmonize the law by settling ongoing disputes between the Circuits.3 Unicolors v. H&M—the only IP decision this Term—likely4 belongs to the latter majority of cases, but this copyright case is still a significant5 victory for creative artists and copyright owners, especially nonlawyers and small businesses.
Copyright law protects a work of authorship upon being fixed in a tangible medium of expression,6 but the author must still register her work in order to sue for infringement7 and to collect statutory damages.8 The Copyright Act under Section 411(b) provides a safe harbor for inaccurate information on a registration application as long as the copyright holder lacked “knowledge that it was inaccurate.”9 The narrow issue in Unicolors concerns one of scope10—whether that knowledge of inaccuracy excuses good-faith mistakes of law only (Unicolors’ situation), of fact only (Ninth Circuit’s position,11 which would exclude Unicolors’ situation), or both (other Circuits’ position12). Writing for the 6-3 majority, Justice Breyer answers both,13 resolving the circuit split in favor of the other Circuits and yet again, unsurprisingly,14 reversing the Ninth Circuit.
As is typical of a Breyer opinion,15 Unicolors illuminates the distinction between mistakes of fact and of law and explains the reasoning by virtue of a brief hypothetical. Imagine someone (named John) who sees a flash of red in a tree and blurts out, “There is a cardinal.”16 The bird, however, is a scarlet tanager.17 That simple premise sets up the issue—what kind of mistake has John made?18 If he failed to see the bird’s black wings, John may have made a “mistake about the brute facts.”19 Alternatively, if he saw the bird correctly, noting all of its relevant features, but—for not being much of a birdwatcher—did not know that a tanager, unlike a cardinal, has black wings, John may have made a “labeling mistake.”20
With that hypothetical in mind, Unicolors is seemingly a “straightforward,”21 easy case for copyright22 and fashion law. Like John, Unicolors similarly made a labeling mistake, but its labeling problem is one of law.23 Copyright law allows a single application for registration to cover multiple works only if they came from the “same unit of publication.”24 To save money,25 Unicolors filed one application seeking registration of thirty-one separate designs, each of which is a work.26 The thirty-one designs, unfortunately, originated from two different publications: Unicolors had offered some of the designs exclusively to certain customers and the rest separately to the general public.27 Unicolors CEO signed the registration application, attesting that everything was correct to the best of his knowledge but did not independently investigate its truthfulness.28 He simply trusted whoever completed the application, which could have been a secretary or a designer.29 As Unicolors typically files many copyright applications, its CEO had no recollection of the filing process and surmised that the designer felt that these designs would become successful and registered them for copyright.30 Unicolors thus made an inadvertent misunderstanding of the details of copyright law for not knowing of its failure to satisfy the requirement of “same unit of publication” when filing its registration application.31
The “prolific copyright troll”32 Unicolors sued “fast-fashion”33 H&M over a jacket34 alleging infringement of one of the thirty-one copyrighted designs and won $850,000 in front of the jury.35 After trial, H&M moved for judgment as a matter of law (JMOL), arguing that Unicolors could not maintain an infringement suit based on its invalid copyright certificate for knowingly including inaccurate information on the application by registering multiple works in one application after having made those works separately available to clients and the public.36 The district court denied H&M’s JMOL motion because copyright law’s safe harbor provision excuses Unicolors’ honest mistake of law.37 The Ninth Circuit reversed, held that the safe harbor provision excuses only good-faith mistakes of fact, not of law, and nixed Unicolors’ $850,000 award because Unicolors had known all along the relevant facts.38
The Supreme Court majority agreed with the district court and reversed, holding that if Unicolors was unaware of the law that rendered the information in its registration application inaccurate, it did not include that information “with knowledge that it was inaccurate.”39 The reason is simple: Prior case law and the dictionaries indicate that knowledge means “‘the fact or condition of being aware of something.’”40 Nothing in the statutory language suggests anything to the contrary.41 Nearby statutory provisions and other provisions of the Copyright Act confirm that knowledge refers to one of both facts and law.42 Had Congress intended to require scienter instead of actual knowledge, it could have, and would have, said so explicitly.43 The lack of statutory language to the contrary tends to confirm that Congress intended knowledge to simply bear its ordinary meaning—actual knowledge.44
Moreover, many cases (including at least one from the Ninth Circuit) prior to Congress’ enactment of Section 411(b) involved mistakes of law.45 An examination of the legislative history of Section 411(b) shows that Congress enacted Section 411(b) to make it easier, not harder, for laypersons to obtain valid copyright certificates.46 Applicants for copyright registration might very well check the wrong box on the registration applications as a result of a legal, or factual, error.47 Congress enacted Section 411(b) to deny alleged infringers the opportunity to potentially exploit this loophole and win the infringement suits on technicality.48 Needless to say, the alleged infringers may still rely on circumstantial evidence, such as the legal error’s significance, the relevant rule’s complexity, and applicants’ experience with copyright law, to prove actual knowledge—that the applicants were actually aware of, or willfully blind to, legally inaccurate information.49
The dissenters—Justices Thomas, Alito, and Gorsuch—would instead dismiss the case because Unicolors changed its position and argued a different theory (that Section 411(b) requires actual knowledge) than what it presented in its certiorari petition (that Section 411(b) requires fraudulent intent).50 Justices Thomas and Alito also express concern that the majority’s “actual-knowledge-of-law” standard is “virtually unprecedented” outside of criminal tax enforcement.51
To the extent that past results predictably indicate future performance,52 Unicolors ex ante,53 if narrowly read, would probably be a minor wrinkle case in the copyright tapestry,54 as Section 411(b) ex post was rarely invoked—only twenty-three times since its enactment in October 2008.55 Post-Unicolors, we may expectedly see more Section 411(b) invocations. Broadly read, however, Unicolors confirms the high bar for invalidating copyright registrations based on honest mistakes, whether of facts or of law, in the underlying applications. Unicolors aligns with the U.S. Copyright Office’s general inclination against excessive formality by making the copyright registration process more accessible to all creative artists, regardless of their level of familiarity with copyright law.56 To wit, Unicolors empowers creative artists to feel more confident about enforcing their copyrights without fear that blatant infringers may skate on a technicality. On the flip side, however, Unicolors may further encourage and incentivize unsophisticated creators to keep in ignorance of the intricacies of copyright law. Still, copyright holders, especially those legally sophisticated or represented by counsel, should confirm the accuracy of their registrations and resolve any inaccuracies (e.g., by amending, if available,57 or refiling) before litigation. Copyright holders should not simply turn a willfully blind eye to errors (e.g., learned post-registration but neglected to correct) and expect to avoid invalidation risks.
† Jasper L. Tran practices IP litigation with Milbank LA. The views expressed in this article are his own and not necessarily reflective of Milbank or its clients.
1 See Lawrence M. Friedman & Grant M. Hayden, American Law: An Introduction 73 (2017) (“Not every Supreme Court case makes the headlines, but every case is by some standard important and is worth at least a paragraph or two in the New York Times.”).
2 See, e.g., N.Y. Times Co. v. Sullivan, 376 U.S. 254 (1964); Roe v. Wade, 410 U.S. 113 (1973); Citizens United v. F.E.C., 558 U.S. 310 (2010); Obergefell v. Hodges, 576 U.S. 644 (2015).
3 See generally Amanda Frost, Overvaluing Uniformity, 94 Va. L. Rev. 1567 (2008); J. Clifford Wallace, The Nature and Extent of Intercircuit Conflicts: A Solution Needed for a Mountain or a Molehill?, 71 Calif. L. Rev. 913 (1983).
4 For instance, when deciding Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), a Supreme Court justice considered it a “minor case” that would simply follow the prior 35 U.S.C. § 101 framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). See Jasper L. Tran, Two Years After Alice v. CLS Bank, 98 J. Pat. & Trademark Off. Soc’y 354, 357 (2016). The reality, however, unfolds in the opposite direction, as Alice has been a major force in patent eligibility determinations under § 101 since 2014. See Jasper L. Tran, Alice at Seven, 101 J. Pat. & Trademark Off. Soc’y 454, 455 (2021); see also Albemarle Paper Co. v. Moody, 422 U.S. 405, 448 (1975) (Blackmun, J., concurring) (“The simple truth is that . . . most attempts to predict the future, will never be completely accurate.”); Frank H. Easterbrook, When Is It Worthwhile to Use Courts to Search for Exclusionary Conduct, 2003 Colum. Bus. L. Rev. 345, 357 (2003) (quoting Yogi Berra) (“‘It is always hard to make predictions, especially about the future.’ Instead of making predictions,” just “wait to see what happens.”).
5 See Friedman & Hayden, supra note 2, at 73.
6 17 U.S.C. § 102.
7 17 U.S.C. § 411; see also Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 886 (2019) (holding that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright,” not when the claimant submits the application to the Copyright Office).
8 17 U.S.C. § 412.
9 17 U.S.C. § 411(b)(1)(A).
10 Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., 142 S. Ct. 941, 945 (2022).
11 Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140, 1147 (9th Cir. 2019) (rejecting the argument that Section 411(b) codifies the fraud on the Copyright Office defense, and holding instead that the statute’s “knowledge” language requires knowledge only of the underlying facts, not “knowledge of the law”); Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194, 1198 (9th Cir. 2020) (finding no “intent-to-defraud requirement”).
12 Roberts v. Gordy, 877 F.3d 1024, 1029–30 (11th Cir. 2017) (holding that Section 411(b) “codifies the defense of Fraud on the Copyright Office” because applicant’s “knowledge” of inaccuracies requires “intentional or purposeful concealment of relevant information”); MidlevelU, Inc. v. ACI Info. Grp., 989 F.3d 1205, 1220 (11th Cir. 2021) (same); see also DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 625 n.3 (7th Cir. 2013) (same); and Bruhn NewTech, Inc. v. United States, 144 Fed. Cl. 755 (2019) (same).
13 Unicolors, 142 S. Ct. at 945 (“Lack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration.”).
14 See, e.g., Kevin M. Scott, Supreme Court Reversals of the Ninth Circuit, 48 Ariz. L. Rev. 341, 352 (2006) (“Ninth Circuit’s predicted number of reversals is significantly greater than that for any other circuit, even after controlling for circuit size, ideological distance, ideological heterogeneity, and circuit workload); Richard A. Posner, Is the Ninth Circuit Too Large? A Statistical Study of Judicial Quality, 29 J. Legal Stud. 711, 713 (2000) (“Ninth Circuit has the highest rate of summary reversal by the Supreme Court”); Marybeth Herald, Reversed, Vacated, and Split: The Supreme Court, the Ninth Circuit, and the Congress, 77 Or. L. Rev. 405 (1998) (same). But see, e.g., Erwin Chemerinsky, The Myth of the Liberal Ninth Circuit, 37 Loy. L.A. L. Rev. 1, 1 (2003) (“Ninth Circuit is almost exactly at the median among circuits in reversal rates.”).
15 Justice Breyer sometimes posed hypotheticals to counsel during oral arguments, which might not end up in the actual opinions themselves. See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (looking-at-finger hypothetical for patenting a process of judging when a patient is taking too little or too much of a given drug: “Suppose I discover that if I take aspirin, someone takes aspirin, I discover they have to take aspirin for a headache, and, you know, I see an amazing thing: If you look at a person’s little finger, and you notice the color, it shows the aspirin, you need a little more; unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature.” But that is not what the doctor did. The doctor applied the law by looking at the little finger.); Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008) (bicycle-pedals hypothetical for patent dispute over computer chips: “Imagine that I want to buy some bicycle pedals, so I go to the bicycle shop. These are fabulous pedals. The inventor has licensed somebody to make them, and he sold them to the shop, make and sell them. He sold them to the shop. I go buy the pedals. I put it in my bicycle. I start pedaling down the road. Now, we don’t want 19 patent inspectors chasing me or all of the other companies and there are many doctrines in the law designed to stop that.”); KSR Int’l v. Teleflex, Inc., 550 U.S. 398 (2007) (raccoons hypothetical in patent dispute over gas pedals: “I grant you I’m not an expert, but it looks at about the same level as I have a sensor on my garage door at the lower hinge for when the car is coming in and out, and the raccoons are eating it. So I think of the brainstorm of putting it on the upper hinge, ok? Now I just think that, ‘how could I get a patent for that?’”); Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205 (2000) (grape-hairbrush hypothetical for trademark protection from knockoffs: “Imagine you made a hair brush in the shape of a grape . . . . It’s called the grape hairbrush, and that’s it.”).
16 Unicolors, 142 S. Ct. at 946.
17 Id.
18 Id.
19 Id.
20 Id.
21 Id.
22 See Stephen Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, and Computer Programs, 84 Harv. L. Rev. 281 (1970); see also Stephen Breyer, Copyright: A Rejoinder, 20 UCLA L. Rev. 75 (1972) (defending his Uneasy Case for Copyright article).
23 Unicolors, 142 S. Ct. at 946.
24 37 C.F.R. § 202.3(b)(4).
25 Brief for Petitioner at 47, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Aug. 3, 2021).
26 Unicolors, 142 S. Ct. at 941.
27 Brief for Petitioner at 47, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Aug. 3, 2021).
28 Id.
29 Id.
30 Id.
31 See 37 C.F.R. § 202.3(b)(4).
32 Brief for Respondent at 6, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Sept. 21, 2021) ; see also Design Basics, LLC v. Kerstiens Homes & Designs, Inc., 1 F.4th 502, 503 (7th Cir. 2021) (Recently, “a cottage industry of opportunistic copyright holders—earning the derisive moniker ‘intellectual property trolls’—has emerged, in which a troll enforces copyrights not to protect expression, but to extract payments through litigation.”). See generally Shyamkrishna Balganesh, The Uneasy Case against Copyright Trolls, 86 S. Cal. L. Rev. 723 (2013); Matthew Sag, Copyright Trolling, an Empirical Study, 100 Iowa L. Rev. 1105 (2015). For instance, Unicolors filed nearly 100 copyright infringement suits in 2016 and over 30 new cases in 2017, most of which settled early, against big-name retailers like Century 21, Kohl’s, Nordstrom, Urban Outfitters, and Zara. Unicolors v. H&M: A Fast Fashion Copycat and Alleged “Copyright Troll”, TFL (Dec. 7, 2017).
33 Reply Brief for Petitioner at 2, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Oct. 14, 2021).
34 For comparison of H&M’s accused product to Unicolors’ copyrighted design, see Brief for Petitioner at 12, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Aug. 3, 2021).
35 Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., 142 S. Ct. 941, 942 (2022).
36 Id.
37 Id.
38 Id.
39 Id. at 944.
40 Id. at 946–48 (quoting Intel Corp. Inv. Pol’y Comm. v. Sulyma, 140 S. Ct. 768, 776 (2020); Webster’s Seventh New Collegiate Dictionary 469 (1967); Black’s Law Dictionary 888 (8th ed. 2004); New Oxford American Dictionary 938 (def. 2) (2d ed. 2005); Webster’s New College Dictionary 625 (3d ed. 2008)).
41 Unicolors, 142 S. Ct. at 947.
42 Id. at 947 (citing 17 U.S.C. §§ 409(4) (whether work was made “for hire”); 409(8) (when and where work was “published”); 409(9) (whether work is “a compilation or derivative work”); 121A(a) (safe harbor for entities that “did not know or have reasonable grounds to know” that exported works would be used by ineligible persons); 512(c)(1)(A) (safe harbor for Internet service providers who are not actually aware of infringing activities on their systems and are “not aware of facts or circumstances from which infringing activity is apparent”); 901(a)(8) (“‘notice of protection’” requires “actual knowledge . . . or reasonable grounds to believe” that “work is protected”); 1202(b) (civil remedies for certain acts performed by a person who knows or has “reasonable grounds to know” that s/he was facilitating infringement); 1401(c)(6)(C)(ii) (for purposes of paragraph regarding the “[u]nauthorized use of pre-1972 sound recordings,” “knowing” includes one who “has actual knowledge,” “acts in deliberate ignorance of the truth or falsity of the information,” or “acts in grossly negligent disregard of the truth or falsity of the information”)).
43 Id. at 947.
44 Id. (citing Nken v. Holder, 556 U. S. 418, 430 (2009)).
45 Id. at 947–48 (citing Urantia Found. v. Maaherra, 114 F. 3d 955, 961, 963 (9th Cir. 1997); Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F. 3d 586, 591 (7th Cir. 2003); Advisers, Inc. v. Wiesen-Hart, Inc., 238 F. 2d 706, 707–08 (6th Cir. 1956) (per curiam)).
46 Id. at 948.
47 Id.
48 Id.
49 Id. (citing Intel Corp. Inv. Pol’y Comm. v. Sulyma, 140 S. Ct. 768, 779 (2020)). And the legal maxim that “ignorance of the law is no excuse,” which normally applies to criminal cases, does not apply to civil cases like this one “concerning the scope of a safe harbor that arises from ignorance of collateral legal requirements.” Id. (citing Rehaif v. United States, 139 S. Ct. 2191, 2198 (2019) (“That maxim does not normally apply where a defendant’s mistaken impression about a collateral legal question causes him to misunderstand his conduct’s significance, thereby negating an element of the offense.”)).
50 Id. at 949 (Thomas, J., dissenting).
51 Id. at 951–52 (Thomas, J., dissenting) (citing Cheek v. United States, 498 U. S. 192, 201–03 (1991)).
52 See, e.g., Des Moines Gas Co. v. Des Moines, 238 U.S. 153, 164 (1915) (A business’ “books show that it has had a steady growth for many years in the past, and everything indicates that it will continue in the future.”); Michael C. Blumm, The Northwest’s Hydroelectric Heritage: Prologue to the Pacific Northwest Electric Power Planning and Conservation Act, 58 Wash. L. Rev. 175, 240 (1983). But see supra note 5; Jasper L. Tran, The Law and 3D Printing, 31 J. Marshall J. Info. Tech. & Privacy L. 505, 511 (2015) (“Past performance in law and 3D printing scholarship may not [necessarily] predict future returns in the field”).
53 See generally Barbara H. Fried, Ex Ante/Ex Post, 13 J. Contemp. Legal Issues 123 (2003); Mark A. Lemley, Ex Ante Versus Ex Post Justifications for Intellectual Property, 71 U. Chi. L. Rev. 129 (2004).
54 See, e.g., Ronald Mann, Justices Require Actual Knowledge that Application Was Erroneous to Invalidate Copyright Filing, SCOTUSblog (Feb. 24, 2022) (“There is every reason to think that Unicolors will fade from view in the not-so-distant future.”).
55 Brief for Respondent at 6, Unicolors, Inc. v. H&M Hennes & Mauritz, LP., No. 20-915 (U.S. filed Sept. 21, 2021).
56 See, e.g., Unicolors, 142 S. Ct. at 948–49; Maria A. Pallante, The Curious Case of Copyright Formalities, 28 Berkeley Tech. L.J. 1415, 1423 (2013) (“[T]o the extent a measure of formalities can make the law in the twenty-first century more navigable and effective for all involved, including for authors, they will be of continued interest to the Copyright Office.”).
57 See 37 C.F.R. § 202.6; U.S. Copyright Office, Compendium of U.S. Copyright Office Practices ch. 1800, § 1802 (Jan. 28, 2021).
Recommended Citation
Jasper L. Tran, Response, Copyright’s Legal Mistake, Geo. Wash. L. Rev. On the Docket (Mar. 22, 2022), https://www.gwlr.org/copyrights-legal-mistake.
