Dissecting A "Cert": Will Unicolors Have Its Final Day in the Supreme Court?

*** The writing does not, and is not intended to, constitute legal advice by any means***

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In the previous post, I went to great lengths to explain what has led Unicolors to file a petition for a writ of certiorari to the Supreme Court in its almost soul-searching legal battle the textile design company has been waging against H&M. Today, as I promised, I'm going to go over the nitty-gritty details of the petition. Unicolors retained Doniger, a boutique law firm priding itself on "representing and protecting artists worldwide". Having read the petition in its entirety, I think the law firm did an excellent job of explaining to the Court why the case is ripe for intervention.

The petition starts with a section on Questions Presented. Questions Presented, as its name plainly indicates, presents questions that the petitioner asks the Court to review. The rest of the petition centers around articulating its positions on the Questions Presented and their legal basis.

1. Did the Ninth Circuit err in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that 17 U.S.C. §411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration? 

2. Did the Ninth Circuit misapply the publication standard by both applying Copyright Office requirements that were not in place at the time of registration and analyzing publication as of the date of registration as opposed to the lateral registration application date, and if so, did the evidence support referral to the Copyright Office?

As I made clear in the previous post, the battle is all about a rule that deals with "a single-unit of publication". According to this rule, a registrant can group together multiple works under a single application if they are "published on the same date". H&M's argument in the appellate court was that Unicolors grouped together public works and "confined" works (withheld from public view), and that's not what "published on the same date" means for the purposes of the statute. In order to prevail in a putative Supreme Court oral argument, Unicolors needs to convince the nine Justices that its good-faith error in the application should not operate to invalidate the copyright registration certificate that's rightfully obtained. Counsel for Unicolors advances three main argument for such position.

First, Pro-IP Act (The Prioritizing Resources and Organization for Intellectual Property Act of 2008, Pub. L. 110-403) is a legislative attempt to close the loophole in the copyright statute whereby IP "thieves" go around spotting mistakes to invalidate registrations with inconsequential errors. The petition specifically points out that the Copyright Office has consistently interpreted the Pro-IP Act to "codify the doctrine of fraud" with respect to 17 U.S.C. §411. Therefore, courts should require a finding of fraud.

Second, having laid the basis for the fraud requirement, the petition then states that the Ninth Circuit has deepened the continuing circuit split by reading out the statute the requirement. In the Eleventh Circuit, a showing of "intentional or purposeful concealment of relevant information" is necessary to render a registration invalid. Pointing to a circuit split makes sense because the Supreme Court's job is to cure the divide if inaction would result in a divergence that isn't in line with justice.

Last, the petition emphasizes that the Ninth Circuit has departed from its own precedent for no good reason. One of the H&M's arguments, which the Ninth Circuit ultimately accepted, was that Unicolors did not "publish" 31 designs concurrently, rendering them ineligible for a single application. However, in an earlier case, the Ninth Circuit sided with a fabric company that had submitted a single application on factually similar grounds. The Ninth Circuit held that, as long as there is no intent to defraud, invalidation is not warranted, especially when the alleged errors were subsequently corrected upon notice. See L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 854 (9th Cir. 2012).

What I really liked about this petition was that it was readable. It didn't contain any legalese. Furthermore, the complaint included a section on "Statutory Provisions Involved", which was helpful because the case now primarily invovles the interpretation and application of a statute. The organization flowed really nicely, too. I believe everyone should be able to follow their arguments without much difficulty. The petition for a writ of certiorari isn't meant for a full-blown argumentation. Its main job is to persuade the Court why it has to hear the case. If 4 out of 9 Justices are convinced, we'll see briefs and amici briefs on each side. I can't make predictions, but I really hope the Supreme Court decides to intervene. So let's pray for the supreme intervention.