The United States Supreme Court recently issued a decision in the copyright infringement lawsuit, Unicolors v. H&M. This case revolved around the interpretation of the "safe harbor" provision in the United States Copyright Act, specifically 17 U.S.C. § 411(b)(1)(A),relating to applications for registration which have inadvertently inaccurate information. The question that the Court faced was whether inaccurate information in a copyright registration could be excused based on a mistake of law or only based upon a mistake of fact. Ultimately, the Supreme Court ruled that the safe harbor provision does not differentiate between a mistake of law and a mistake of fact. Therefore, a copyright applicant's lack of either factual or legal knowledge could excuse inaccurate information in a copyright registration under the safe harbor provision.
Bringing A Copyright Infringement Claim
To begin a copyright infringement lawsuit, a plaintiff must possess a valid copyright registration. To obtain a registration, the author of the work sought to have copyright protection has to submit an application and a "deposit copy" of the work to the Copyright Office. If the application contains mistakes or inaccurate information, the Copyright Act provides a safe harbor under 17 U.S.C. § 411(b)(1). This safe harbor provision states that a certificate of registration is valid regardless of whether the certificate contains any inaccurate information unless there was knowledge that the information was inaccurate, and the inaccurate information, if known, would have caused the Copyright Register to refuse registration.
Unicolors V. H&M
In the case of Unicolors v. H&M, the Court analyzed the term "knowledge that it was inaccurate." H&M argued that Unicolors's lack of knowledge of the law, discussed below, opposed to Unicolors's lack of knowledge of the facts, invalidated the copyright registration. H&M urged that the Court should move to the second requirement of the safe harbor exception, which is whether the Register of Copyrights would have refused Unicolors's registration had it known of the inaccurate information.
In 2017, Unicolors sued H&M for copyright infringement concerning several of its fabric designs. The designs in question related to a single registration application that Unicolors had filed for 31 separate designs. H&M argued that Unicolors knowingly included inaccurate information in its copyright application for the works that were the focus of the lawsuit. Therefore, Unicolors's application was invalid since Unicolors failed to meet the "same unit of publication" requirement, which was governed by U.S. Copyright Office regulations that provide that a single application for multiple works may cover multiple works only if they were "in the same unit of publication." See 37 CFR §202.3(b)(4) (2020).
The Court's Decision
After a jury trial before the United States District Court for the Central District of California, the jury returned a judgment in favor of Unicolors. The jury found that Unicolors was unaware of its failure to satisfy the "same unit of publication" requirement. Therefore, Unicolors's copyright registration remained valid under the safe harbor provision, and Unicolors's lack of knowledge concerning the regulations did not invalidate its copyright registration.
The Ninth Circuit reversed the District Court's decision, holding that it did not matter whether Unicolors was aware of its failure to satisfy the requirement because the safe harbor provision excuses only good-faith mistakes of fact, not law. The Ninth Circuit sided with H&M regarding its argument to move to the second requirement of the safe harbor provision and remanded to the District Court with instructions to submit an inquiry to the Register of Copyrights asking whether the Register would have refused Unicolors's copyright registration had it known of the inaccuracies.
The United States Supreme Court ultimately ruled in favor of Unicolors, holding that both mistakes of law and facts were protected by the safe harbor provision. The Court provided three bases for its holding: relevant precedent and statutory language, statutory interpretation and congressional intent, and the practical effects of the decision.
Impact Of The Case
This decision clarifies that a lack of knowledge of either the law or the facts is equally excusable under the safe harbor provision of the Copyright Act. This case also serves as a reminder that copyright registrations are essential for those who wish to bring a copyright infringement lawsuit and that any inaccuracies in the registration may be excused under the safe harbor provision unless the registrant knew the information was incorrect.
Conclusion
The Supreme Court's decision in Unicolors v. H&M clarified that mistakes of law and fact can both be protected by the safe harbor provision found at 17 U.S.C. § 411(b)(1)(A) of the Copyright Act. This ruling highlights the need for experienced legal counsel when navigating copyright registration and infringement lawsuits. Individuals seeking to register their should seek advice from experienced copyright lawyers to avoid costly mistakes and unnecessary litigation.
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