Unicolors, Inc. v. H&M Hennes & Mauritz, L. P.

• Decision Date: 24 February 2022
• Docket Number: 20-915
• Citation: 142 S.Ct. 941,211 L.Ed.2d 586
• Parties: UNICOLORS, INC., Petitioner v. H&M HENNES & MAURITZ, L. P.
• Court: U.S. Supreme Court

142 S.Ct. 941

211 L.Ed.2d 586

UNICOLORS, INC., Petitioner

v.H&M HENNES & MAURITZ, L. P.

No. 20-915

Supreme Court of the United States.

Argued November 8, 2021

Decided February 24, 2022

E. Joshua Rosenkranz, New York, NY, for the petitioner.

Melissa N. Patterson for the United States as amicus curiae, by special leave of the Court, supporting petitioner.

Peter K. Stris, Los Angeles, CA, for the respondent.

Scott Alan Burroughs, Stephen M. Doniger, Trevor W. Barrett, Doniger/Burroughs PC, Venice, CA, Thomas M. Bondy, Lauren A. Weber, Orrick, Herrington & Sutcliffe LLP, Washington, D.C., E. Joshua Rosenkranz, Counsel of Record, Christopher J. Cariello, Jennifer Keighley, Joseph R. Kolker, Katherine Kerrick, Orrick, Herrington & Sutcliffe LLP, New York, NY, Counsel for Petitioner.

Staci Jennifer Riordan, Dale Alfred Hudson, Aaron Michael Brian, Nixon Peabody LLP, Los Angeles, CA, Bridget Asay, Stris & Maher LLP, Montpelier, VT, Tillman J. Breckenridge, Stris & Maher LLP, Washington, DC, Peter K. Stris, Counsel of Record, Elizabeth Brannen, Rachana A. Pathak, Douglas D. Geyser, John Stokes, Stris & Maher LLP, Los Angeles, CA, Counsel for Respondent.

Justice BREYER delivered the opinion of the Court.

A valid copyright registration provides a copyright holder with important and sometimes necessary legal advantages. It is, for example, a prerequisite for bringing a "civil action for infringement" of the copyrighted work. 17 U.S.C. § 411(a). Additionally, a plaintiff in an infringement action normally cannot obtain an award of statutory damages or attorney's fees for infringement that occurred prior to registration. § 412.

To obtain registration, the author of a work must submit to the Register of Copyrights a copy of the work and an application. §§ 408, 409. The application must provide information about the work. § 409. Some of this information is purely factual, but some of it incorporates legal conclusions. Ibid. If the Register determines that the work is copyrightable and meets other statutory requirements, she will issue a certificate of registration. § 410(a). The information on this certificate reflects the information that the copyright holder provided on the application. Ibid.

Naturally, the information provided on the application for registration should be accurate. Nevertheless, the Copyright Act provides a safe harbor. It says that a certificate of registration is valid

"regardless of whether the certificate contains any inaccurate information, unless—

"(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate ; and

"(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration." § 411(b)(1) (emphasis added).

The important point for our purposes is 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).

The question before us concerns the scope of the phrase "with knowledge that it was inaccurate." The Court of Appeals for the Ninth Circuit believed 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. In our view, however, § 411(b) does not distinguish between a mistake of law and a mistake of fact. Lack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration. We therefore vacate the Court of Appeals’ contrary holding.

I

The petitioner here, Unicolors, owns copyrights in various fabric designs. App. 50–51. It sued the respondent, H&M Hennes & Mauritz, L.P. (H&M), for copyright infringement. 959 F.3d 1194, 1195 (CA9 2020). The jury found in Unicolors’ favor, but H&M asked the trial court to grant it judgment as a matter of law. Id., at 1196–1197. H&M argued, among other things, that Unicolors’ registration certificate was invalid (and that therefore Unicolors could not sue for infringement) because it contained inaccurate information. Id., at 1197–1198 ; see also § 411(a). Specifically, H&M argued that Unicolors’ registration certificate was inaccurate because Unicolors had improperly filed a single application seeking registration for 31 separate works. App. 91–92, 170–172. H&M relied on a Copyright Office regulation, which provides that a single registration can cover multiple works only if those works were "included in the same unit of publication." Id., at 170 (emphasis added); 37 C.F.R. § 202.3(b)(4) (2020). H&M argued that the 31 fabric designs covered by Unicolors’ single application (and therefore single registration) had not been published as a single unit of publication because Unicolors had initially made some of the designs available for sale exclusively to certain customers, while other designs were immediately available to the general public. App. 170–171. Because the first statutory requirement for invalidating Unicolors’ registration (a knowing inaccuracy) was satisfied, H&M argued, the District Court should move to the second requirement and ask the Register of Copyrights whether it would have refused to register Unicolors’ copyright if it had been aware of the inaccuracy. Id., at 172–173; see also §§ 411(b)(1)(B), (b)(2).

The District Court denied H&M's motion. Id., at 202. Among other things, it noted 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." Id., at 180–181 (internal quotation marks omitted). Because Unicolors did not know that it had failed to satisfy the "single unit of publication" requirement when it filed its application, the purported inaccuracy could not invalidate the registration. Id., at 182.

The Ninth Circuit disagreed. It agreed with H&M that Unicolors had failed to satisfy the "single unit of publication" requirement (because it offered some of the 31 designs exclusively to certain customers). 959 F.3d, at 1198–1200. But did Unicolors know about this inaccuracy? In the Ninth Circuit's view, it did not matter whether Unicolors did or did not know that it had failed to satisfy the "single unit of publication" requirement. Id., at 1200. That was because, in the Ninth Circuit's view, the statute excused only good-faith mistakes of fact, not law. Ibid. And Unicolors had known the relevant facts, namely, that some of the 31 designs had initially been reserved for certain customers. Ibid.

Unicolors sought certiorari, asking us to review the Ninth Circuit's interpretation of § 411(b)(1)(A). We granted the petition.

II

A brief analogy may help explain the issue we must decide. 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?

John may have failed to see the bird's black wings. In that case, he has made a mistake about the brute facts. Or John may have seen the bird perfectly well, noting all of its relevant features, but, not being much of a birdwatcher, he may not have known that a tanager (unlike a cardinal) has black wings. In that case, John has made a labeling mistake. He saw the bird correctly, but does not know how to label what he saw. Here, 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." The labeling problem here is one of law. Does that difference matter here? Cf. United States v. Fifty-Three (53) Eclectus Parrots , 685 F.2d 1131, 1137 (CA9 1982). We think it does not.

Our reasons are straightforward. For one thing, we follow the text of the statute. See Hardt v. Reliance Standard Life Ins. Co. , 560 U.S. 242, 251, 130 S.Ct. 2149, 176 L.Ed.2d 998 (2010). Section 411(b)(1) says that Unicolors’ registration is valid "regardless of whether the [registration] certificate contains any inaccurate information, unless ... the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate." Both case law and the dictionary tell us that "knowledge" has historically "meant and still means ‘the fact or condition of being aware of something.’ " Intel Corp. Investment Policy Comm. v. Sulyma , 589 U. S. ––––, ––––, 140 S.Ct. 768, 776, 206 L.Ed.2d 103 (2020) (quoting Webster's Seventh New Collegiate Dictionary 469 (1967)); see also Black's Law Dictionary 888 (8th ed. 2004); New Oxford American Dictionary 938 (def. 2) (2d ed. 2005); Webster's New College Dictionary 625 (3d ed. 2008).

Unicolors says that, when it submitted its registration application, it was not aware (as the Ninth Circuit would later hold) that the 31 designs it was registering together did not satisfy the "single unit of publication" requirement. If Unicolors was not aware of the legal requirement that rendered the information in its application inaccurate, it did not include that information in its application "with knowledge that it was inaccurate ." § 411(b)(1)(A) (emphasis added). Nothing in the statutory language suggests that this straightforward conclusion should be any different simply because there was a mistake of law as opposed to a mistake of fact.

To the contrary, nearby statutory provisions help confirm that here "knowledge" refers to knowledge of the law as well as the facts. Registration applications call for information that requires both legal and factual knowledge. See, e.g., § 409(4) (whether a work was made "for hire"); § 409(8) (when and where the work was "published"); § 409(9) (whether the work is "a compilation or derivative work"). Inaccurate information in a registration is...