Skip to main content
AdvocacyCopyrightPhotography News

“What if it is not a Cardinal”?

By March 7, 2022No Comments

Good News in U.S. Supreme Court Copyright Ruling

Illustration showing the scales of justice, a judge, and a gavel. Image by Mohamed Hassan, Pixabay license.
Image by Mohamed Hassan, Pixabay license.

By Sean Fitzgerald, Co-Chair NANPA Advocacy Committee

What happens if a creator registers their work with the Copyright Office but made a mistake in the application? Section 411(b) of copyright law was intended to provide that creator with a “safe harbor” in which the registration of a work would remain valid in a subsequent infringement lawsuit unless the applicant knowingly included inaccurate information that would have caused the Copyright Office to refuse the registration.

Unfortunately, §411(b) is vaguely written and some courts have used the statute to invalidate registrations even when the mistake was innocent and even harmless. Quite predictably, defendants in infringement cases have learned to put the application itself on trial by looking for any error that might invalidate the registration. Instead of a safe harbor, §411(b) became a dangerous waters through which creators had to navigate while pursuing infringers.

Unicolor v. H&M

After years of abuse, the U.S. Supreme Court finally addressed the safe harbor issue in Unicolors, Inc. v. H&M Hennes & Mauritz, LP., issued February 24.

Unicolors, a fabric and design firm, sued clothing retailer H&M for copyright infringement of thirty-one designs it had previously registered with the Copyright Office in a registration. After Unicolors won the infringement action, H&M challenged the validity of Unicolors’ copyright registration, claiming that the registration contained known inaccuracies as to when the group of designs were published. H&M argued that Unicolors had no standing to bring the case because a valid registration is needed to bring a copyright infringement suit in federal court and the errors in its application invalidated the registration. The 9th Circuit agreed with H&M, and Unicolors appealed to the Supreme Court.NANPA joined in an amicus brief filed by the American Society of Media Photographers (ASMP) and other creators and argued that such technical errors should not invalidate a registration as the 9th Circuit had concluded.  In a 6-3 decision, the Supreme Court agreed, holding that the application errors did not invalidate the registration.

How Far Does the Safe Harbor Extend?

The key issue before the Court was whether §411(b)’s safe harbor only applied to mistakes of fact or whether it also applied to mistakes of law. Unicolors’ errors were based in part on a flawed interpretation of copyright law. Writing for the majority, Justice Breyer explained the issue with a bird-watching analogy:

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.

The Court concluded that the §411(b) safe harbor does not distinguish between a mistake of law and a mistake of fact and an honest mistake as to either in a copyright registration will not invalidate a registration. Or in Justice Breyer’s formulation, if you can honestly say you thought the red bird was a cardinal, and not a tanager, it is ok if you were wrong!

So, why is this ruling great news for photographers?

Innocent Mistakes are No Longer Catastrophic

To sue for copyright infringement, the work at issue must first be registered with the Copyright Office. And if the work was registered before the infringement, the infringed party is eligible for several huge benefits should they prevail, including statutory damages and attorneys’ fees.  See Copyright Alliance The loss of those benefits in a later infringement action because of an error in the registration application is simply disastrous.

Unfortunately, it is quite easy to make mistakes in the application and this is especially true when it comes to listing the publication status of images. Under copyright law, creators must list whether the image is “unpublished” or “published”, and if published, the date and nation of first publication. As the Copyright Office itself has admitted, “the distinction between published and unpublished works is ‘‘so complex and divergent from an intuitive and colloquial understanding of the terms that it serves as a barrier to registration.” To make matters worse, the Copyright Office does not currently allow mixing published and unpublished works in the same registration and doing so has caused invalidation of group registrations.

But Unicolors marks a sea change for creators as it returns the §411(b) safe harbor to its originally intended purpose. While photographersmust still try to correctly list the publication status and other factual and legal elements of their application, should they wrongly call a tanager a cardinal, as Justice Breyer puts it, they no longer risk the invalidation of their registration and potential loss of their infringement claim.

We also hope that the cost of copyright litigation will drop as defendants spend less time trying to invalidate registrations based on innocent errors in the application.

NANPA advocates and fights for the intellectual property rights of nature photographers. Learn more about our work and about copyright issues here.