Justices require actual knowledge that application was erroneous to invalidate copyright filing

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OPINION ANALYSIS
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Thursday’s opinion in Unicolors v. H&M resolves a narrow question of copyright law: when an error in an application for copyright registration is sufficiently serious to invalidate the subsequent registration. Justice Stephen Breyer’s opinion for a 6-3 court holds that such an error invalidates the registration only if the applicant had actual knowledge that the application was inaccurate.

Copyright registration is largely a formality, because a work of authorship is protected under copyright law the moment that it is fixed in any “tangible medium of expression,” without regard to any later registration or other activity by the author. The main reasons that registration is important are that the author cannot bring a civil action for infringement until it has registered the work and that the author cannot recover statutory damages for infringement that occurred before registration. Also, the author will have difficulty in selling an unregistered copyright, because the purchaser cannot record notice of the transfer with the Register of Copyrights until the work in question has been registered.

The issue in this case is what happens when the application for registration includes incorrect information. Section 411(b) of the Copyright Act forgives any errors in the application “unless [the applicant had] knowledge that it was inaccurate.” The issue that the court resolved is whether that actual-knowledge requirement applies to all errors in the application or only to factual errors. The issue arises because the applicant here (Unicolors) made no factual errors in the application, but apparently made a legal mistake. Specifically, it filed a single application for 31 fabric designs, relying on a regulation that permitted a filing for multiple works only if they had been “in the same unit of publication.” Because Unicolors had distributed some of those designs to the general public and others exclusively to favored customers, the designs did not qualify under that regulation. It is not clear, though, that Unicolors understood how the regulation applied to the facts of its particular situation.

Breyer’s opinion is brief and emphasizes, as is common for him, a memorable hypothetical. He imagines somebody (John) who sees a flash of red in a tree and says that it is a cardinal, mistakenly, when the bird in fact is a scarlet tanager. Breyer explains: “John may have failed to see the bird’s black wings. In that case, he has made a mistake about the brute facts.” Alternatively, if John saw “the bird perfectly well, noting all of its relevant features,” it is possible that “not being much of a birdwatcher, he may not have known that a tanager (unlike a cardinal) has black wings.” For Breyer, that is a “labeling mistake,” because John “saw the bird correctly, but does not know how to label what he saw.”

Turning from the hypothetical to the case, Breyer explains that “Unicolors’ mistake is a mistake of labeling. But unlike John (who might consult an ornithologist about the birds), Unicolors must look to judges and lawyers as experts regarding the proper scope of the label ‘single unit of publication.’” For Breyer, the question in the case is whether “that difference matter[s] here,” and he concludes: “We think it does not.”

He starts from the text of the statute, which requires “knowledge” of the error in the application. He cites earlier cases and several dictionaries to support the conclusion that “‘knowledge’ … means the fact or condition of being aware of something.”

More broadly, he points to the general practice of the Copyright Act, which frequently uses standards much weaker than actual knowledge, such as whether a person had “reasonable grounds to know” something or was “aware of facts or circumstances from which [something] is apparent.” Citing four such provisions, he reasons that “[t]he absence of similar language in the statutory provision before us tends to confirm our conclusion that Congress intended ‘knowledge’ here to bear its ordinary meaning.”

Breyer also notes the wealth of case law decided before Congress enacted Section 411, which had “overwhelmingly held that inadvertent mistakes [should] not invalidate a copyright,” as well as legislative history indicating an intent to “make it easier, not more difficult, for nonlawyers to obtain valid copyright registrations.” For Breyer, “it would make no sense if § 411(b) left copyright registrations exposed to invalidation based on … misunderstandings of the details of copyright law.”

Breyer closes the opinion with a few pages addressing the argument of the dissent (by Justice Clarence Thomas, joined by Justices Samuel Alito and Neil Gorsuch). Thomas argued that the court’s opinion decides a question that had not properly been presented in the petition for a writ of certiorari. Breyer and the majority respond that the knowledge question was close enough to the question presented in the petition to qualify as a “subsidiary question fairly included” in the question presented and that the lower court in fact decided the question. For the majority of six, that is enough to justify proceeding to a decision.

As I noted above, Unicolors resolves a narrow question. Indeed, as the dissent points out, the question that the court answers is not even one on which there is any disagreement in the lower courts. There is every reason to think that Unicolors will fade from view in the not-so-distant future.



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