Decision in Unicolors v. H&M an Important Win for Creators

Justice Breyer, in the waning days of his tenure, wrote an opinion last week that will be of significant help to copyright owners. Historically a critic of copyright, it was Breyer who wrote the convoluted majority opinion in Google v. Oracle, which elided a core copyrightability question presented (the protection of APIs) by shoehorning the question into the second prong of a fair use analysis. But in Unicolors v. H&M, Breyer wrote the 6-3 opinion upholding a basic principle of justice and common sense—namely, that innocent, administrative mistakes should not void the ability to enforce one’s copyright rights.

For background, designer Unicolors sued retailer H&M for infringement of several of its protected textile designs. Unicolors prevailed in district court, but the Ninth Circuit Court of Appeals reversed, siding with H&M’s argument that Unicolors’s copyright registration was invalid because it contained inaccurate information—specifically a mix of “published” and “unpublished” works as a group of “unpublished” works.

Under §411 of the copyright law, an applicant who knowingly provides inaccurate information on an application may risk having that registration invalidated in the course of a lawsuit. But the statute also contains a safe harbor, expressing Congress’s understanding that non-expert applicants would make innocent errors and should not have their registrations invalidated as a result. To complicate matters, the Ninth Circuit “determined that it did not matter whether Unicolors was aware that it had failed to satisfy the single unit publication requirement, because the safe harbor excuses only good-faith mistakes of fact, not law,” states the SCOTUS opinion.

The reasons the Ninth Circuit’s finding was vexing is twofold. First, the meaning of “published” under the copyright law remains one of the more confusing definitions for many attorneys, let alone laymen authors of works. Second, even if the layman applicant is confident he understands the definition of “published,” is a statement about the publication status one of fact or law, as a layman would understand it? And all this for a purely administrative function at the Copyright Office. Fortunately, the SCOTUS opinion last week held that “411(b) does not distinguish between a mistake of law and a mistake of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under §411(b)(1)(A)’s safe harbor.”

As stated at oral arguments by counsel for Unicolors, it was unreasonable to allege that the company had “knowingly” provided inaccurate information to the Copyright Office just to save $65 for an additional registration fee. But for the independent creator, like the photographer who makes an average $30,000/year for her photo work, those fees add up, and the ability to register a group of images on a single application makes a difference. And this same class of creators is even more likely than a big business to commit errors of law or fact. Consequently, the SCOTUS ruling in Unicolors provides significant relief to the same creators who are already at a disadvantage when enforcing their copyright rights.

One could delve a little deeper into this opinion (and the dissent) to unpack the distinctions among “actual knowledge,” “constructive knowledge,” and “intent to defraud,” but that’s an unnecessary slog. More importantly, these nuanced terms of art among legal professionals, in this case, amount to variations on the common understanding of lie versus mistake for us mortals. And the very mortal author, artist, or creator seeking to protect her work is lucky just to understand the basics of registration with the U.S. Copyright Office. (Is a play a “literary work” or a “work of the performing arts” and is it “published” if it has been performed on stage?). So, yes, the most liberal interpretation of the statutory safe harbor in the registration process is the only one which achieves both reason and justice.

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