直 Japanese PDF Font
  • Our Professionals
  • Our Work
  • Our Insights
  • Firm
  • Offices
  • Careers
Finnegan
  • Articles & Books
    • At the PTAB Blog
    • European IP Blog
    • Federal Circuit IP Blog
    • INCONTESTABLE® Blog
    • IP Health Blog
    • Prosecution First Blog
  • Events & Webinars
  • IP Updates
  • Podcasts
  • Unified Patent Court (UPC) Hub

INCONTESTABLE® Blog

SCOTUS: Inadvertent Mistake in Copyright Application Does Not Invalidate Registration

March 3, 2022

By Mary Kate Brennan

Edited by Margaret A. Esquenet

In Unicolors v. H&M, the U.S. Supreme Court held that “[l]ack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration.” Unicolors, a fabric designer, sued fast-fashion retailer H&M for selling allegedly infringing garments in the United States District Court for the Central District of California. Unicolors’ claims relied on a group copyright registration. Generally, group registration allows an applicant to pay a single fee and file one application covering multiple works if they are “included in the same unit of publication.” Here, the 31 works covered by Unicolors’ group registration were not published at the same time because they were made available to different customers at different times.


Unicolors’ Pattern


H&M’s Garment

After a jury found that the works were substantially similar, H&M moved for judgment as a matter of law. In relevant part, H&M argued that 17 U.S.C. § 411 precluded Unicolors’ suit. Specifically, H&M asserted that Unicolors’ group registration was invalid because the 31 separate designs included in its group registration were not published at the same time and Unicolors knowingly included inaccurate information on its registration application. Unicolors relied on a safe harbor provision in the Copyright Act, which “provides that a certificate of registration is valid, even though it contains inaccurate information, as long as the copyright holder lacked ‘knowledge that it was inaccurate.’ §411(b)(1)(A).” Finding that there was no evidence demonstrating that Unicolors intended to defraud the Copyright Office, the district court denied H&M’s motion, holding that “‘a registration remains effective despite containing inaccurate information’ if the registrant included the inaccurate information in the registration application without ‘knowledge that it was inaccurate.’”

H&M appealed. The Ninth Circuit held that the district court erred, reasoning that the plain language of Section 411(b) of the Copyright Act does not require the copyright owner-registrant have an “intent-to-defraud” the Copyright Office in order to invalidate a copyright registration. Rather, the Ninth Circuit found that constructive knowledge of an application’s error is sufficient to invalidate registration. Subsequently, H&M filed a petition for a writ of certiorari with the Supreme Court.

In reversing the Ninth Circuit, the Supreme Court focused on the “scope of the phrase ‘with knowledge that it was inaccurate.’” Ultimately, it disagreed with the Ninth Circuit’s interpretation that “a copyright holder cannot benefit from the safe harbor and save its copyright registration from invalidation if its lack of knowledge stems from a failure to understand the law rather than a failure to understand the facts.” Rather, the Supreme Court held that Section 411(b) does not distinguish between a mistake of law and a mistake of fact and that a lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under §411(b)(1)(A)’s safe harbor. 

The Supreme Court’s ruling may assist artists and authors filing copyright applications without the assistance of counsel. As the Supreme Court noted, Congress intended “to make it easier, not more difficult, for nonlawyers to obtain valid copyright registrations.” 

The case is Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20-195, slip op. (U.S. Feb. 24, 2022).

Tags

Supreme Court of the United States (SCOTUS), Copyright Act

Related Practices

Copyright

Related Industries

Consumer Goods and Services

Consumer Products

Related Offices

Washington, DC

Contacts

Mary Kate Brennan
Associate
Washington, DC
+ 1 202 408 4340
Email
Margaret_Esquenet
Margaret A. Esquenet
Partner
Washington, DC
+1 202 408 4007
Email

Copyright © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. 


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Related Insights

Virtual Seminar

Prosecuting Patent Applications

March 22, 2023

Virtual

Virtual Seminar

Drafting Patent Applications

March 15, 2023

Virtual

Conference

Patents & IP Summit 2022

December 7-8, 2022

Arlington

Conference

2022 ANA Masters of Advertising Law Conference

November 8-10, 2022

Hollywood

Workshop

2022 Yangtze River Delta Summit

October 28, 2022

Shanghai

Webinar

Elevating Partners of Color

October 13, 2022

Webinar

Webinar

Adding NFTs to an IP Portfolio: Risks and Rewards, Key Considerations

September 27, 2022

Webinar

At the PTAB Blog

PTAB Invalidates United Therapeutics Patent Relating to the Hypertension Drug - Tyvaso®

September 21, 2022

Conference

Carolina Patent, Trademark & Copyright Law Association Fall Meeting

September 16-17, 2022

Kiawah Island

Due to international data regulations, we’ve recently updated our privacy policy. Click here to read our privacy policy in full.

We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.

The Finnegan UPC Hub is a one-stop shop for our insights related to the Unified Patent Court (UPC).

Finnegan
Click Here
  • Privacy
  • Disclaimer
  • EEO Statement

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP