“While the Supreme Court’s Unicolors decision strengthens protections for copyright registrations against invalidation due to legal errors, mistakes in the application process should still be avoided.”
On February 24, 2022, the U.S. Supreme Court vacated the Ninth Circuit’s ruling in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20–915 (Feb. 24, 2022). The Court held that a copyright registration applicant, if unaware of legal inaccuracies in a copyright application, does not submit those inaccuracies “knowingly” for purposes of Section 411(b)(2), and as such, does not lose the protections of the Copyright Act’s safe harbor for registrations with inaccuracies.
Undoubtedly, the decision is a win for authors that, during the copyright application process, unwittingly submit inaccurate information to the U.S. Copyright Office (e.g., because they did not understand the law, and/or were not assisted by competent copyright counsel). That said, the decision does not do away with the risks associated with honest mistakes in U.S. Copyright Office filings, and authors should take care to mitigate such risks.
Section 411(b)(1): A Safe Harbor for Honest Mistakes
Section 411(b)(1) of the Copyright Act provides a safe harbor for copyright registrations with “inaccurate information,” unless two criteria are satisfied:
- The inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
- The in accuracy of the information, if known, would have caused the register Copyrights to refuse registration.
If the “inaccurate information” was knowingly provided, Section 411(b)(2) instructs the court to request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.
Unicolors v. H&M
In 2017, after a jury found that H&M infringed Unicolors’ copyrights in various textile designs, H&M challenged the verdict by challenging the validity of the copyright registration on which it was based. Specifically, H&M asserted that Unicolors’ single-unit copyright registration was invalid because, contrary to Copyright Office regulations, not all covered designs were published as a single unit. See 37 C.F.R. § 202.3(b)(4). The district court rejected H&M’s argument and request to refer the matter to the Register of Copyrights under Section 411(b)(2), reasoning that H&M had not shown that Unicolors had intended to defraud the Copyright Office.
On appeal, the Ninth Circuit rejected the intent-to-defraud standard but found that Unicolors had submitted inaccurate information to the Copyright Office “with knowledge that it was inaccurate” for the purposes of Section 411(b)(1). In doing so, the Ninth Circuit defined the “knowledge inquiry” of Section 411(b)(1) as “whether Unicolors knew that certain designs included in the registration… were each published separately to exclusive customers” regardless of “whether Unicolors knew that including a mixture of confined and non-confined designs would run afoul of the single-unit registration requirements.” Having found that Unicolors knowingly submitted inaccurate information to the Copyright Office, the Ninth Circuit remanded with instructions to refer the matter to the Register of Copyrights under Section 411(b)(2).
The Supreme Court reversed, holding that “[i]f Unicolors was not aware of the legal requirement that rendered the information in its application inaccurate, it did not include that information in its application ‘with knowledge that it was inaccurate.’” In doing so, the Court reasoned that other sections of the Act use “knowledge” to refer to legal (as well as factual) information, i.e. Section 409. The Court also pointed to other knowledge standards in various sections of the Act, reasoning that “[t]hose provisions suggest that if Congress had intended to impose a scienter standard other than actual knowledge, it would have said so explicitly.” The Court also considered the legislative history of the Copyright Act, finding that “Congress enacted §411(b) to make it easier, not more difficult, for nonlawyers to obtain valid copyright registrations.”
Honest Mistakes in Copyright Applications after Unicolors
While the Supreme Court’s Unicolors decision strengthens protections for copyright registrations against invalidation due to legal errors, mistakes in the application process should still be avoided. In fact, even after Unicolors, Section 411(b) may not apply to honest mistakes in the copyright application process that affect only the scope (but not the validity) of a registration.
For example, in Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., the U.S. District Court for the Southern District of New York declined to apply Section 411(b) to a registration that was intended to (but did not) cover individual photos:
Although Plaintiff’s reading of section 411(b) is correct as applied to registration applications that contain unintentionally inaccurate information, see 17 U.S.C. § 411(b), the Court has found already that Corbis submitted an accurate compilation registration application. Thus, that registration does not come within the ambit of section 411(b). Plaintiff’s contention that the application was meant to cover each individual work and failure to include those names was an “inaccuracy” is unpersuasive. This Court will not read section 411 so broadly as to save “intended” registrations that never were presented to the Copyright Office to begin with
See Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., No. 09-CV-2669 LAP, 2010 WL 3958841, at *2 (S.D.N.Y. Sept. 27, 2010); but see Bean v. Houghton Mifflin Harcourt Pub. Co., 585 F. App’x 322 (9th Cir. 2014)(vacating the district court’s dismissal for improperly registering individual photos as part of a collective work).
In sum, while the Unicolors decision clearly bolsters protections for copyright registrations containing errors and may be interpreted to overrule decisions holding that some registration errors cannot be saved by Section 411(b), authors should be mindful of the potential impact of errors in copyright registration applications and take steps to avoid them.
Image Source: Deposit Photos
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