Contact Us Today! (877) 276-5084

Attorney Steve® Blog

Challenging a copyright registration on grounds of a factual or legal mistake just became more difficult

Posted by Steve Vondran | Feb 28, 2022

Attorney Steve® Copyright Law Essentials - Defenses to Infringement

Breaking IP News - US Supreme Court decides a new case involving registration of copyrights and whether defects in the registration application can create issues in an infringement matter involving art on fashion designs.

PODCAST:  Watch Attorney Steve® Explain Challenging Defects in Copyright Registration (United States Supreme Court)

copyright infringement defenses

Copyright Registration and Civil Infringement Actions ("Safe Harbors")

Under federal law -17 U.S.C. 411there is a "safe harbor" for non-material, non-fraudulent mistakes (of law or fact) in copyright registration.

This section states:

(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless

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

(B)  the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration (i.e. "material").

(2). In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

According to the recent Unicolors case (see below) a United States Supreme Court case challenging harmless errors (not fraudulent or material) as part of an infringement defense is not as attractive as it once might have seen. 

This does not mean there are no other defenses to copyright infringement.

Facts of the Unicolors case

According to Oyez:

"Unicolors, Inc., a company that creates art designs for use on fabrics, created and copyrighted as part of a collection of designs a two-dimensional artwork called EH101 in 2011. In 2015, retail clothing store H&M began selling a jacket and skirt with an art design called “Xue Xu.” Unicolors sued H&M for copyright infringement, alleging that the Xue Xu design is identical to its EH101 design.  The district court rejected H&M's argument that Unicolors' copyright was invalid because it had improperly used a single copyright registration to register 31 separate works. The court noted that invalidation of a copyright requires an intent to defraud, and no such evidence was presented in this case. Further, it concluded that the application contained no inaccuracies because the separate designs in the single registration were published on the same day. A jury returned a verdict for Unicolors, finding that it owned a valid copyright in EH101, that H&M had infringed on that copyright, and that the infringement was willful.  On appeal, the U.S. Court of Appeals for the Ninth Circuit reversed, finding that there is no intent-to-defraud requirement for registration invalidation, and the district court failed to refer the matter to the Copyright Office, as required under 17 U.S.C. § 411(b)(2), when it was informed of inaccuracies in the copyright registration.  Does 17 U.S.C. § 411 require a district court to request advice from the Copyright Office when there are questions about the validity of a copyright registration but no evidence of fraud or material error?"

The US Supreme Court had to decide ultimately whether this - and other issues where mistakes are made on a copyright registration form - are worth getting the Registrar of Copyrights involved and whether this falls within section 411(b)(1) "safe harbors" even though it appears a "legal mistake" (normally, the general rule of law is "ignorance of the law is no defense."  However, the court did not see it that way.  They held that errors of FACT and errors of LAW unless knowing and material, fall within the safe harbor protections.

Court's Rationale 

In the Unicolors vs. H&M Kennes & Mauriztz, LLP case the court noted:

"Further, those who consider legislative history will find that history persuasive here. It indicates that Congress enacted §411(b) to make it easier, not more difficult, for nonlawyers to obtain valid copyright registrations. The House Report states that its purpose was to “improve intellectual property enforcement in the United States and abroad.” H. R. Rep. No. 110–617, p. 20 (2008).

It did so in part by “eliminating loopholes that might prevent enforcement of otherwise validly registered copyrights.” Ibid. The Report specifically notes that some defendants in copyright infringement cases had “argued . . . that a mistake in the registration documents, such as checking the wrong box on the registration form, renders a registration invalid and thus forecloses the availability of statutory damages.” Id., at 24. Congress intended to deny infringers the ability to “exploi[t] this potential loophole.”

Of course, an applicant for a copyright registration—especially one who is not a lawyer—might check the wrong box on the registration documents as a result of a legal, as well as a factual, error.

Given this history, it would make no sense if §411(b) left copyright registrations exposed to invalidation based on applicants' good-faith misunderstandings of the details of copyright law."

Contact a Copyright Defense Law Firm

We are a boutique copyright and IP law firm with offices in California and Arizona.  We are a leader in infringement defense in the United States having appeared in over 250 litigation cases.  Whether the case involves infringement of software, movies, television broadcasts, Strike 3 BitTorrent lawsuits, fair use, copyright small claims, jewelry, or fashion infringement, we've got you covered. 

Call us at (877) 276-5084 or fill out our contact form and we will contact you.  In this intricate area of IP and technology law, there is no substitute for experience.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

Contact us for an initial consultation!

For more information, or to discuss your case or our experience and qualifications please contact us at (877) 276-5084. Please note that our firm does not represent you unless and until a written retainer agreement is signed, and any applicable legal fees are paid. All initial conversations are general in nature. Free consultations are limited to time and availability of counsel and will depend on the type of case you are calling about (no free consultations for other lawyers). All users and potential clients are bound by our Terms of Use Policies. We look forward to working with you!
The Law Offices of Steven C. Vondran, P.C. BBB Business Review