Amster Rothstein & Ebenstein, LLP - Intellectual Property Law Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Fri, 27 Jan 2023 04:49:36 +0000 Floodlight Design CMS NYSBA Bright Ideas Publishes Article - Appeal of the Second Circuit’s ML Genius Holdings LLC v. Google LLC Decision May Resolve a Circuit Split on Copyright Act Preemption Tests The New York State Bar Association (NYSBA) publishes article written by ARE Partner <a href="" target="_blank">Doug Miro</a> and Associate <a href="" target="_blank">David Goldberg</a>. The article &quot;<a href="/images/file/BrightIdeas-2022-vol-31-no-2_8_5X11_WEB.pdf" target="_blank">Appeal of the Second Circuit&rsquo;s ML Genius Holdings LLC&nbsp;v. Google LLC Decision May Resolve a Circuit Split on&nbsp;Copyright Act Preemption Tests</a>&quot; was published in the NYSBA Bright Ideas, 2022, Vol. 31 No. 2.<br /><br /><a href="/images/file/BrightIdeas-2022-vol-31-no-2_8_5X11_WEB.pdf" target="_blank">Read the full article.</a> Thu, 08 Dec 2022 00:00:00 +0000 US Supreme Court Lanham Act case will hopefully return US trademark law to more stable foundations - World Trademark Review World Trademark Review posts article by Amster, Rothstein and Ebenstein's <a href="" target="_blank">Charles Macedo</a> and <a href="" target="_blank">David Goldberg</a> on the Court Lanham Act case.<br /><br />&quot;The US Supreme Court recently granted certiorari in a case that will hopefully settle conflicting Court of Appeals decisions on the cross-border reach of the Lanham Act, notes this week&rsquo;s opinion.&quot;<br /><br /><a href="" target="_blank">Read the full article</a>&nbsp;(subscription required).<br /><br /><a href="/images/file/WTR%20opinion%2026%20Nov%202022.pdf" target="_blank">PDF version</a> Sat, 26 Nov 2022 00:00:00 +0000 US Supreme Court to review a false dichotomy in Amgen v Sanofi - IAM IAM features article by&nbsp;<a href="" target="_blank">Charles R Macedo</a>, <a href="" target="_blank">Darren Haber</a>, <a href="" target="_blank">Yangfan Xu</a> and <a href="" target="_blank">Gary J. Gershik</a> of Amster, Rothstein&amp; Ebenstein LLP.<br /><br />&quot;Saturday Opinion: In its petition for certiorari, Amgen painted a picture of a Federal Circuit run amok. However, the dichotomy presented by Amgen in its petition for certiorari is a false one...&quot;<br /><br />Read the <a href="" target="_blank">full article here</a>&nbsp;(subscription required).<br /><br /><a href="/images/file/IAMopinion.pdf" target="_blank">PDF version</a><br type="_moz" /><br /><br /><br /><br /><br type="_moz" /><br /> Sat, 26 Nov 2022 00:00:00 +0000 ARE USPTO Alert: USPTO Adopts Shorter Deadline to Respond to Office Actions for Trademark Applications <p class="MsoNormal"><span style="font-family:">On November 17, 2021, the United States Patent and Trademark Office (USPTO) published a final rule implementing provisions of the Trademark Modernization Act of 2020 (TMA).</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">One important new aspect of the rule, which applies to most trademark Office Actions issued on or after December 3, 2022, cuts the deadline to respond to Office Actions in half, from six months to only three months.&nbsp; However, the rule allows for a three-month extension (of course with an extra government fee).&nbsp; This is similar to the way the USPTO deals with Office Actions for patent applications.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The new response time applies to most application filing bases, including use in commerce section 1(a), intent to use section 1(b), foreign application section 44(e), and foreign application section 44(d).&nbsp; In these situations, trademark applicants can request a single three-month extension to respond for a $125 fee.&nbsp; This would bring the total available response time back to six months.&nbsp;</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">There are two notable exceptions to this new policy.&nbsp; An applicant cannot request an extension of time if the application was filed as a Madrid Protocol section 66(a) application.&nbsp; For those foreign-based applications, the response period will remain at six months.&nbsp; Similarly, extensions are not available if the Office Action was issued before December 3, 2022, which also will automatically enjoy the full six months.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The USPTO intends to accomplish two things by shortening the response time.&nbsp; Specifically, the USPTO hopes to: (i) decrease the time it takes to get a registration; and (ii) provide the flexibility to request additional time to respond to more complex Office Actions.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The shortened response time (without paying the extra fee) will have significant real-world effects for trademark practitioners and their clients.&nbsp; For example, Applicants will have less time to report and decide how to respond to an Office Action, including whether to submit written arguments based on a cited mark or marks, whether to oppose or cancel the cited mark(s), and/or whether to seek a co-existence agreement with the owner(s) of the cited mark(s).&nbsp;</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">It is important to note that this new response period applies to pending trademark applications only.&nbsp; It will not apply to post-registration office actions for things like renewals. &nbsp;Changes to the post-registration response period will be implemented on October 7, 2023, and we will report again once we learn what is in store there.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">More information is available at the&nbsp;</span><a href=""><span style="font-family:">USPTO website</span></a><span style="font-family:">.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">We will continue to monitor and report on USPTO developments and developments in this area of trademark law. &nbsp;In the meantime, please feel free to contact us to learn more.<o:p></o:p></span></p> <p class="MsoNormal"><b><span style="font-family:">About the Authors<o:p></o:p></span></b></p> <p class="MsoNormal">Douglas A. Miro and Chester Rothstein are partners, and Christopher Lisiewski is an associate at Amster, Rothstein &amp; Ebenstein LLP. &nbsp;Their practices specialize in intellectual property issues, including litigating patent, trademark, and other intellectual property disputes. &nbsp;The authors may be reached at&nbsp;<a href=""><span style="font-family:"></span></a>,&nbsp;<a href=""><span style="font-family:"></span></a>, and&nbsp;<a href=""><span style="font-family:"></span></a>.&nbsp;</p> Tue, 22 Nov 2022 00:00:00 +0000 NFTs, Cryptocurrency & the Metaverse | A new dimension for IP Charles Macedo, Max Vern and David Goldberg co-author article for The Trademark Lawyer on Trademark issues in the Metaverse; &quot;examining recent cases of conflict between platform owners over trademark infringement and conflicts involving NFTs to provide a US perspective on handling trademarks in the metaverse.&quot;<br /><br />Read the <a href="/images/file/Amster%20Rothstein_NFT_PDF.pdf" target="_blank">full article here.</a> Fri, 04 Nov 2022 00:00:00 +0000 Practical Law Practice Note by Charles R. Macedo on Appealing Patent Trial and Appeal Board Final Written Decisions This Practical Law Practice Note by Charley Macedo discusses procedural and strategic considerations involved in appealing final written decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patentability challenges under the Leahy-Smith America Invents Act (AIA).<br /><br />The article also explores grounds, timelines and practical considerations for requesting rehearing of a final written decision before the PTAB and appeal to the U.S. Court of Appeals for the Federal Circuit.<br /><br /><br /><a href="" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions</a> Fri, 22 Jul 2022 00:00:00 +0000 Charley Macedo Publishes Updated Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings<br> <a href="" target="_blank">This Practical Law Practice</a>&nbsp;Note by Charley Macedo discusses key milestones in post-grant patentability challenges at the U.S. Patent and Trademark Office under the Leahy-Smith America Invents Act (AIA). It reviews typical timelines and procedures at key milestones in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) patentability challenges before the Patent Trial and Appeal Board (PTAB).<br /><br /><a href="" target="_blank">Click here to read the full article.</a> Fri, 22 Jul 2022 00:00:00 +0000 NERDS Candy <img src="/images/image/NERDS.png" width="750" height="422" alt="" />&nbsp; Tue, 08 Dec 1998 00:00:00 +0000 ecotribe Stainless Steel Straws & Travel Cases Set - Twin Set &nbsp;<img src="/images/image/Ecotribe%20-%20Straws.jpg" width="750" height="971" alt="" /> Tue, 07 May 2019 00:00:00 +0000 Charles Macedo Quoted in IPWatchdog's Article on the American Axle U.S. Supreme Court Denial <a href="" target="_blank">Charles Macedo</a> was quoted in IPWatchdog&rsquo;s American Axle Denied: Patent Stakeholders Sound Off on SCOTUS&rsquo; Refusal to Deal with Eligibility article.<br /><br />Charley said &quot;It is disappointing to see the Court deny certiorari in this case. All factors suggest this is a case that should be heard: 1. The decisions below were seemingly contrary to Supreme Court precedent in Diehr; 2. The panel and appellate court were significantly divided; 3. Many amici argued that the Court should take it, including not just the NYIPLA, in our brief, and other IP bar associations, but even a member of Congress and former Chief Judge of the Federal Circuit and former director of the USPTO; and 4. The government, after a year of deliberation, wrote a compelling brief that the decision below was wrong and certiorari should be granted. If this is not a case for the Supreme Court, then it may instead have to become a subject of legislation.&quot;<br /><br /><a href="" target="_blank">Read the full article here.</a> Tue, 05 Jul 2022 00:00:00 +0000 In The Press:<br>Amster, Rothstein and Ebenstein inks Chrysler Building Lease<br> The New York Business Journal announces&nbsp;Amster, Rothstein and Ebenstein's signing of a new Lease in the 77-story Chrysler Building.<br /><br />Read the article <a href="" target="_blank">HERE</a>. Wed, 22 Jun 2022 00:00:00 +0000 Meta Materials acquires Optodot’s Patents and IP in a multi-million dollar deal Meta Materials Inc. today announced it is acquiring the &ldquo;Assets and Extensive IP Portfolio&ldquo; of Optodot Corp., ARE&rsquo;s client, including 67 issued and 22 pending patents, for an aggregate of $48.5 million. This comes shortly after CEO of Optodot, Dr. Steve Carlson, was recognized by the NYIPLA as 2022 Inventor of the Year for his groundbreaking innovations and patents awarded in lithium battery technologies.<br /> <br />Read the article <a href="" target="_blank">HERE</a>. Fri, 17 Jun 2022 00:00:00 +0000 Brief of New York Intellectual Property Law Association as Amicus Curiae In Andy Warhol Foundation v. Goldsmith Click to download PDF:&nbsp;<a href="/images/file/Warhol%20Amicus%20Brief%20of%20NYIPLA.pdf" target="_blank">Brief of New York Intellectual Property Law Association as Amicus Curiae&nbsp;In Andy Warhol Foundation v. Goldsmith</a> Fri, 17 Jun 2022 00:00:00 +0000 Charles Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision Charley Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law &amp; Practice on &quot;US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision.&quot;<br /><br />In the article, the authors discuss the U.S. Supreme Courts, February 24, 2002 decision in&nbsp;<em>Unicolors, Inc. v H&amp;M Hennes &amp; Mauritz, LP</em>, holding that an unintentional mistake of law is entitled to the benefit of the US Copyright Act&rsquo;s safe harbour provision, &sect; 411(b)(1)(A).<br /><br /> <a href="" target="_blank">Read the full article.</a> Sat, 28 May 2022 00:00:00 +0000 IAM turns to Partner Charley Macedo for insights on Solicitor General’s Brief in American Axle recommending the Supreme Court grant certiorari In its May 27, 2022 posting, Angela Morris from IAM turned to partner Charley Macedo for insight on the Solicitor General&rsquo;s long awaited brief in <em>American Axle v. Neapco</em>. Mr. Macedo and the firm were Counsel of Record for the New York Intellectual Property Law Association on its Amicus Brief to the Supreme Court recommending the Court to take certiorari in this case.<br /><br />In &ldquo;Applauding solicitor general&rsquo;s American Axle brief, US patent lawyers pray for Supreme Court review&rdquo;, IAM reports:<br /><div style="margin-left: 40px;"><br />Asked for his reflections, Charles Macedo, partner in Amster, Rothstein &amp; Ebenstein in New York, says <em>American Axle</em> demonstrates how &ldquo;patent eligibility law is all messed up&rdquo; and that it is the perfect case to illustrate the unexpected repercussions of <em>Alice, Myriad and Mayo</em>.<br /><br />&ldquo;If they can clarify the law on abstractness and maybe unwind a little bit of <em>Mayo and Alice</em>, that will hopefully reinvigorate development with patents and innovation. I think, unfortunately, patent eligibility has stifled a lot of interest in investment in new technologies that are novel and inventive because it can&rsquo;t be protected,&rdquo; says Macedo, who represented the New York Intellectual Property Law Association in filing an amicus brief that sided with American Axle.</div><br /><a href="" target="_blank">Read the article</a>&nbsp;(Subscription required)<br /><br />Mr. Macedo and the firm have long been thought leaders and strong advocates in the field of patent-eligibility. Fri, 27 May 2022 00:00:00 +0000 NYSBA Bright Ideas Publishes Article - The Metaverse: From Science Fiction to Commercial Reality—Protecting Intellectual Property in the Virtual Landscape The New York State Bar Association (NYSBA) publishes article written by ARE Partners <a href="" target="_blank">Charles Macedo</a> and <a href="" target="_blank">Doug Miro</a> and Law Clerk Thomas Hart. The article &quot;<a href="/images/file/Macedo%20Miro%20Hart-%20TheMetaverse-%20BrightIdeas2022v31n1-%20REPRINT.pdf" target="_blank">The Metaverse: From Science Fiction to Commercial Reality&mdash;Protecting Intellectual Property in the Virtual Landscape</a>&quot; was published in the NYSBA <em>Bright Ideas</em>, 2022, Vol. 31 No. 1.<br /><br /><a href="/images/file/Macedo%20Miro%20Hart-%20TheMetaverse-%20BrightIdeas2022v31n1-%20REPRINT.pdf" target="_blank">Read the full article.</a><br type="_moz" /> Tue, 10 May 2022 00:00:00 +0000 NFTs – Protection of Trademarks in the Realm of Blockchain Max Vern, Partner and Head of the International Department at Amster, Rothstein &amp; Ebenstein LLP, concentrates on the practical aspects of the NFT phenomenon which is engaging trademark rights holders on a magnitude rarely seen before. To read the full article <a href="" target="_blank">click here</a>. Wed, 20 Apr 2022 00:00:00 +0000 World Trademark Review again includes Amster, Rothstein & Ebenstein LLP among WTR 1000 Recommended Firm 2022 Amster Rothstein &amp; Ebenstein LLP is proud to again be<strong> ranked and recognized by the World Trademark Review as a &ldquo;WTR 1000 Recommended Firm 2022&rdquo;. This prestigious honor once again places the firm</strong> among the world&rsquo;s recommended firms in trademark prosecution and strategy &amp; enforcement and litigation.<br /> <br />WTR1000 &ndash; the World&rsquo;s Leading Trademark Professionals &ndash; is a unique guide that identifies top trademark professionals in key jurisdictions around the globe. The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive &lsquo;go-to&rsquo; resource for those seeking world-class legal trademark expertise. For more information, please see <a href="" target="_blank"> </a><br /> <br />Amster Rothstein &amp; Ebenstein LLP is an intellectual property boutique that focuses exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, blockchain, artificial intelligence, fashion and retail, agrochemicals, pharmaceuticals, biotechnology, medical devices, battery technology, toys, entertainment, housewares, ceramics, and consumer electronics. For more information, please see <a href="" target="_blank"></a>.<br /> Wed, 06 Apr 2022 00:00:00 +0000 Charles Macedo and David Goldberg Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on Round-up of US copyright - Journal of Intellectual Property Law &amp; Practice, jpy129, <a href="" target="_blank"></a><br /><br /><strong>Extract</strong><br /><br />Charles Macedo and David Goldberg authored a brief in Google v. Oracle for the New York Intellectual Property Law Association in an amicus brief in Support of Neither Party, filed in the US Court of Appeals for the Federal Circuit.<br /><br /><strong>I. Introduction<br /></strong><br />Last year, we forecasted in Review of some of the most important cases of the year in US copyright law 2020, 16 JIPLP 6, that the US Supreme Court&rsquo;s ruling in Google v Oracle would be one to watch because of its potential impact on the doctrine of fair use. We also discussed a Supreme Court opinion, Allen v Cooper, which seemingly allowed US states to violate personal copyrights because of their sovereign immunity from suit. This article considers the actual impact that the Oracle opinion has had since its release in 2021, developments in unauthorized state use of copyrighted material and legislative and other developments in 2021....<br /><br /><a href="" target="_blank">Full Article</a><br type="_moz" /> Sat, 02 Apr 2022 00:00:00 +0000 ARE Copyright Alert: Supreme Court Rules That Unintentional Mistakes of Law, Like Mistakes of Fact, Are Entitled to Be Considered Under the Copyright Registration Safe Harbor Provision On February 24, 2002, the Supreme Court held that an unintentional mistake of law was entitled to the benefit of the Copyright Act&rsquo;s safe harbor provision, &sect; 411(b)(1)(A). <i>Unicolors, Inc. v. H&amp;M Hennes &amp; Mauritz, L.P., </i>No. 20-915, 595 U.S. <u>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </u>&nbsp;(Feb. 24, 2022).Justice Breyer delivered the opinion of the Court in a 6-3 decision, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Kavanaugh, and Barrett. In dissent, Justice Thomas was joined by Justice Alito and Justice Gorsuch in part.<div>&nbsp;</div> <div>This Decision clarifies that not only mistakes of fact made during the application process, but also mistakes of law, are entitled to evaluation under the Copyright Act&rsquo;s safe harbor provision.</div> <div>&nbsp;</div> <div><b>Background</b></div> <div>&nbsp;</div> <div>Unicolors, the owner of various fabric design copyrights, filed a copyright infringement suit against the clothing retailer H&amp;M Hennes &amp; Mauritz (H&amp;M). The jury initially found for Unicolors, but H&amp;M contended that Unicolors knowingly gave inaccurate information in its copyright registration application, which rendered the resulting registration invalid.</div> <div>&nbsp;</div> <div>The inaccurate information alleged by H&amp;M was that Unicolors filed a single application covered 31 separate works, when Copyright Office regulations provides that only works which were included in the same unit of publication can be covered by a single application. Because Unicolors sold some of its designs exclusively to certain customers and allowed other designs to be made available to the public, H&amp;M argued that it could not, as a matter of law, be from the same unit of publication. Therefore, the inaccuracy was knowingly made, and the copyright registration should have been referred to the Register of Copyrights under &sect; 411(b) of Title 17 to determine whether the inaccuracy would have rendered the registration invalid.</div> <div>&nbsp;</div> <div>The safe harbor provision, Section 411 (b), states that:</div> <div>&nbsp;</div> <div>(b) &hellip;</div> <div style="text-indent: -0.25in; margin-left: 40px;">(1)<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;">&nbsp;&nbsp; </span>A certificate of registration satisfies the requirements&hellip;, <b><i>regardless of whether the certificate contains any inaccurate information</i></b>, unless &ndash;</div> <div style="margin-left:1.25in;text-indent:-.25in;">(A)The inaccurate information was included on the application for copyright registration <b><i>with knowledge that it was inaccurate</i></b>; and</div> <div style="margin-left:1.25in;&#10;text-indent:-.25in;">(B)The inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.</div> <div>&nbsp;</div> <div>17 U.S.C. &sect; 411(b)(1)(A) &amp; (B) (emphasis added).</div> <div>&nbsp;</div> <div>The District Court disagreed with H&amp;M and stated that because Unicolors error was not made knowingly, the registration was valid.<span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"> <i><span style="border:none windowtext 1.0pt;padding:0in">Unicolors, Inc. v H &amp; M Hennes</span></i>, 2017 U.S. Dist. LEXIS 226934 (C.D. Cal. June 8, 2017). </span>&nbsp;However, on appeal, the Ninth Circuit reversed the decision and agreed with H&amp;M that the registration should have been referred to the Register. <i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Unicolors, Inc. v. H&amp;M Hennes &amp; Mauritz, LP</span></i><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, 959 F. 3d 1194 at 1200 (9th Cir. 2020). </span>The circuit court reasoned that regardless of whether Unicolors mistake was made knowingly or unknowingly, it was a mistake of law, which did not fall within the definition of the statute, and thus should not be considered under &sect; 411. <i>Id.</i></div> <div>&nbsp;</div> <div>Unicolors sought certiorari on the interpretation of &sect; 411(b)(1)(A), which granted on the question of whether the Ninth Circuit&rsquo;s interpretation of &sect; 411(b)(1)(A) was accurate.</div> <div>&nbsp;</div> <div><b>ANALYSIS</b></div> <div>&nbsp;</div> <div><b>The Majority Opinion (Authored by Justice Breyer)</b></div> <div>&nbsp;</div> <div>In <i>Unicolors, </i>the majority of the Supreme Court held in an opinion authored by Justice Breyer that the plain reading of the statute does not limit the law to just mistakes of facts. &nbsp;Nothing within the statute states that the inaccuracies must have to do with facts and not law. <i>Unicolors</i>, slip op. at 5. Further, the Supreme Court held that the word knowledge &ldquo;meant and still means the fact or condition of being aware of something.&rdquo; <i>Intel Corp Investment Policy Comm. v. Sulyma</i>, 140 S. Ct. 768 (2020). Unicolors claimed that it was unaware of the legal requirement and so it could not have known that its copyright application was inaccurate.</div> <div>&nbsp;</div> <div>Additionally, the registration process requires both knowledge of facts and law. A mistake can be made of either the law or facts, and the statute does not distinguish the difference between the two. The majority opinion goes on to state that if &ldquo;Congress had intended to impose a scienter standard other than actual knowledge, it would have said so explicitly.&rdquo; <i>Unicolors</i>, slip op. at 6. There is no indication that such a distinction was desired by Congress. Rather, &sect; 411 (b) was enacted to facilitate to registration process and so would not align with the statute&rsquo;s purpose if it were to only allow for mistakes of facts. <i>Id.</i>, at 7.</div> <div>&nbsp;</div> <div>H&amp;M raised three arguments against Unicolors&rsquo; interpretation of the statute, which were quickly disposed of by the majority opinion.</div> <div>&nbsp;</div> <div>First, H&amp;M argued that Unicolors&rsquo; interpretation would make it easy for copyright applicants to claim lack of knowledge to avoid refusal of registration. The Court disagreed and stated that the circumstantial evidence along with evidence of willful blindless can support a finding of actual knowledge. <i>Id.</i>, at 8.</div> <div>&nbsp;</div> <div>Second, H&amp;M also argued that the legal maxim &ldquo;ignorance of the law is no excuse&rdquo; should apply in this case. The Court again disagreed stating that the maxim was normally applied in circumstances where the defendant already has the requisite mental state for a crime. <i>Id.</i>, at 8, <i>see also Rehaif v. United States</i>, 139 U.S. 2191 (2019). It was not applicable in a <br /> &ldquo;civil case concerning the scope of a safe harbor that arises from ignorance of collateral legal requirements.&rdquo; <i>Unicolors</i>, slip op. at 8.</div> <div>&nbsp;</div> <div>Third, H&amp;M raised the issue that the question addressed in argument before the Court was not presented in either the Ninth Circuit&rsquo;s Decision or Unicolors&rsquo; Petition. However, the Court stated that the Ninth Circuit addressed the issue implicitly when it determined that the knowledge of facts was sufficient under &sect; 411. <i>Id.</i> Also, the petition included a question of whether a registration may be invalidated even though there was no &ldquo;indicia of fraud.&rdquo; <i>Id. </i>The Court&rsquo;s analysis of whether fraud was present was relied on the knowledge of misrepresentation of a material fact. Therefore, the Court determined the question of knowledge was a &ldquo;subsidiary question fairly included&rdquo; and was properly raised. <i>Id.</i></div> <div>&nbsp;</div> <div>In sum, the majority held that &ldquo;Section 411(b) does not distinguish between mistakes of law and mistakes of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under &sect; 411(b)(1)(A)&rsquo;s safe harbor.&rdquo; <i>Id.</i>, at 1-2.</div> <div>&nbsp;</div> <div><b>The Dissent (Authored by Justice Thomas)</b></div> <div>&nbsp;</div> <div>Justice Thomas, joined by Justice Alito and Justice Gorsuch in part, dissented based on the third argument raised by H&amp;M, stating that the questions presented by Unicolors were not initially raised by the petitioner and were new arguments. Because there was no circuit split on the question addressed by the majority and the arguments were all novel, the dissent argued, the Petition should have been dismissed as having been improvidentially granted. Further, the Court misapplied Rule 14.1(a) to consider whether the argument was fairly included. Because there was no such prior question raised, the question addressed by the majority could not have been fairly included.</div> <div>&nbsp;</div> <div><b>Conclusion</b></div> <div>&nbsp;</div> <div>In <i>Unicolors</i>, the Court held that Section 411 (b)(1)(A)&rsquo;s safe harbor is not limited to mistakes of fact. This Decision may broaden the scope of safe harbor protection for Copyright owners, although the focus of disputes on safe harbor availability may now shift towards the scope of copyright owners&rsquo; legal knowledge, which may raise thorny evidentiary issues.</div> <div>&nbsp;</div> <div>&nbsp;* <a href="" target="_blank">Charles R. Macedo</a> and <a href="" target="_blank">Chester Rothstein</a> are Partners, <a href="" target="_blank">David P. Goldberg</a> is an Associate, and Alice Lee is a Law Clerk with Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on patent, trademark, and copyright law. They can be reached at <a href=""></a>, <a href=""></a>, <a href=""></a> and <a href=""></a>.</div> Thu, 17 Mar 2022 00:00:00 +0000