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The Intellectual Property StrategistFeaturesCopyrightsIntellectual PropertyLitigationUnited States Supreme Court

Issues Addressed In Supreme Court 'Unicolors' Argument

By Robert W. Clarida and Thomas Kjellberg
February 01, 2022

In the September issue, we reported on the U.S. Supreme Court's grant of certiorari in Unicolors v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194 (9th Cir. 2020) (Unicolors) for the October 2021 term, docket no. 20-915. Briefing was completed in mid-October (briefs can be found at www.scotusblog.com) and oral argument was held November 8 (recording available at www.c-span.org). This article describes some of the major issues the court addressed in that argument, and will identify some questions that are likely to remain open no matter the outcome.

The issue in Unicolors is a pure question of statutory construction. 17 U.S.C. §411(b) 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—
    1. the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
    2. the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
  1. 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.

On its face, the language in §411(b) commands that where information is included on an application for registration "with knowledge that it was inaccurate" the court "shall" seek the advice of the Copyright Office in every case in which such inaccurate information "is alleged." But prior to the Ninth Circuit ruling now on appeal in Unicolors, a number of courts had grafted a degree of discretion onto the statutory language, leaving it to the district court to determine, inter alia, whether there were sufficient indicia of fraudulent intent on the applicant's part to warrant soliciting the view of the Copyright Office. This interpretation is arguably consistent with the origin of the statutory language, which was added to the Act in 2008 as part of the so-called PRO IP Act; the Copyright Office annual report for that year states that this legislation "amended section 411 of the copyright law to codify the doctrine of fraud on the Copyright Office." The Eleventh Circuit, inter alia, agreed in Roberts v. Gordy, 877 F.3d 1024 (2017), requiring a showing of "intentional or purposeful concealment of relevant information" before consulting the Copyright Office under §411(b). The Ninth Circuit rejected this intent-based approach.

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