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Intellectual Property Notes
Bonus Issue: Unicolors, Inc. v. H&M


Sup Ct - Knowledge included awareness of facts and law (6-3).
Unicolors, Inc. v. H&M
(2/24/22)  Decision
Unicolors sued HM for copyright infringement and other claims. Unicolors prevailed at trial, but the 9th Circuit found that an error in the registration certificate rendered it invalid. The Supreme Court reversed and remanded.

Unicolors, which holds copyrights in fabric designs, sued HM for infringement. A jury found in favor of Unicolors and denied HM's motion for judgment as a matter of law. In that motion, HM argued that the registration certificate was invalid because it contained inaccurate information. Specifically, Unicolors had filed a single application seeking registration for 31 separate works. While Unicolors argued that this was allowed so long as the works were included in the same unit of publication, HM argued that Unicolors had made some of the designs available for sale exclusively to certain customers. The trial court found that because Unicolors did not know that it had not satisfied the "single unit of publication" requirement, the purported inaccuracy could not invalidate the registration. The 9th Circuit disagreed, finding that the statutory language excused only good faith mistakes of fact, not law.

If Unicolors was not aware of the legal requirement that rendered the information in its application inaccurate, it did not include that information with knowledge of the inaccuracy, as specified by the statute. Nothing in the statutory language suggested that this straightforward conclusion should be any different because there was a mistake of law as opposed to a mistake of fact. Nearby statutory provisions helped confirm that "knowledge" referred to knowledge of the law as well as the facts. Registration applications called for information that required both legal and factual knowledge. Inaccurate information in a registration was therefore equally likely to arise from a mistake of law as a mistake of fact. Other provisions of the Copyright Act confirmed that, in this context, the word "knowledge" meant actual, subjective awareness of both the facts and the law. Those provisions suggested that if Congress had intended to impose a scienter standard other than actual knowledge, it would have said so explicitly. Cases decided before Congress enacted the statute at issue overwhelmingly held that inadvertent mistakes on registration certificates did not invalidate a copyright. Many of those cases involved mistakes of law. There was no indication that Congress intended to alter this well-established rule when it enacted the copyright registration statute, which was enacted to make it easier for non-lawyers to obtain valid copyright registrations. (Dissent: Dismissal of the writ of certiorari as improvidently granted was the proper course since Unicolors had abandoned the actual question presented here).


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