Copyright Style Tips from the USSC: Knowledge is the New Colour

Suppose that John, seeing a flash of red in a tree, says, “There is a cardinal.” But he is wrong. The bird is not a cardinal; it is a scarlet tanager. John’s statement is inaccurate. But what kind of mistake has John made?

Justice Breyer for the United States Supreme Court has found that actual knowledge of a legal inaccuracy is required to render a copyright registration invalid under 17 U.S.C. §411(b)(1).

In the US, like in Canada, copyright generally vests automatically in the author of an original work. However, a US copyright must be registered in order to enforce it (see 17 U.S.C. §411(a)). A certificate of registration is presumed valid unless it contains any inaccurate information that was included “with knowledge that it was inaccurate” and the inaccuracy, if known, would have caused the Register of Copyrights to refuse registration (see 17 U.S.C. §411(b)(1)(A)).

Unicolors registered copyright in various fabric designs and sued H&M for infringement. The jury found in Unicolors’ favour, provoking H&M to move for judgment as a matter of law.

H&M alleged that Unicolors’ registration certificate was invalid because Unicolors improperly filed a single application seeking registration for 31 separate works. H&M argued that although the applicable regulations allow a single registration of multiple works that are “included in the same unit of publication”, Unicolors’ designs were not published in a single unit. Instead, Unicolors made some designs available to an exclusive group of customers and others available to the general public. H&M claimed this inaccuracy was known to Unicolors, and the Register of Copyrights would have refused to register Unicolors’ copyright had it been aware of the inaccuracy.

The US District Court for the Central District of California denied H&M’s motion, finding that Unicolors was not aware of the single unit of publication requirement (see here). The US Court of Appeals for the Ninth Circuit reversed, finding that the statute only excused good faith mistakes of fact, not law, and Unicolors had known the relevant facts (see here).

Majority Opinion

The USSC concluded that the phrase “with knowledge that it was inaccurate” refers to knowledge of the law as well as the facts.

Noting that applicants for copyright “include novelists, poets, painters, designers, and others without legal training,” Justice Breyer found that “[n]othing in the statutory language suggests that Congress wanted to forgive those applicants’ factual but not their (often esoteric) legal mistakes.” The legislative history further supported his conclusions that Congress intended “to make it easier, not more difficult, for nonlawyers to obtain valid copyright registrations,” and that Congress intended to deny copyright infringers the ability to exploit legal “loopholes” to render a copyright registration invalid.

Justice Breyer then addressed whether the Court’s interpretation “will make it too easy for copyright holders, by claiming lack of knowledge, to avoid the consequences of an inaccurate application,” by noting that courts would scrutinize such claims to determine whether the applicant was “actually aware, or willfully blind to, legally inaccurate information.” He also rejected the maxim “ignorance of the law is no excuse,” finding that it applied in the criminal law context but had no application to this civil case.

Finally, Justice Breyer responded to H&M’s concerns that neither Unicolors’ petition for certiorari, nor the Ninth Circuit’s opinion addressed this issue of “actual knowledge”. He found the “knowledge” question was “a subsidiary question fairly included in the petition’s question presented.” He therefore vacated the Ninth Circuit’s judgment and remanded the case.

Dissent

Justice Thomas, dissenting alongside Justice Alito and Justice Gorsuch, would have dismissed the writ of certiorari on the basis that the “knowledge” question was not raised by Unicolors in the courts below and was not raised in Unicolor’s petition for certiorari. Unicolors had originally asked the Supreme Court to consider “whether §411(b)(1)(A)’s ‘knowledge’ element requires ‘indicia of fraud,’” in order to resolve a split between the Eleventh Circuit and the Ninth Circuit. The Eleventh Circuit previously held that deceptive intent is required for an inaccuracy to render a copyright registration invalid, while the Ninth Circuit did not require any intent to defraud the Copyright Office. Unicolors abandoned that question, instead relying on the “actual knowledge” argument in its merits briefing that was not presented to the Courts below. For those reasons, the dissent would have dismissed the case.

With respect to the “actual knowledge” issue, Justices Thomas and Alito held that majority of the USSC “points to no other Copyright Act provision that is satisfied by actual knowledge alone. That the Court reads §411(b)(1)(A) to be the lone exception is dubious. That the Court does so without permitting any other court in the country to first consider the question is unwise.” Justice Gorsuch did not join on this final point.

A copy of the decision can be found here.