With respect to the removal or alteration of copyright management information (“CMI”), the DMCA requires proof that the defendant knew, or had reasonable grounds to know, that its conduct “will” induce, enable, facilitate, or conceal an infringement. 17 U.S.C. § 1202(b).

To establish a CMI violation under Section 1202(b)(3), a plaintiff must prove: (1) the existence of CMI in connection with a copyrighted work; and (2) that a defendant “distribute[d] . . . works [or] copies of works”; (3) while “knowing that copyright management information has been removed or altered without authority of the copyright owner or the law”8; and (4) while “knowing or . . . having reasonable grounds to know” that such distribution “will induce, enable, facilitate, or conceal an infringement.” Mango v. BuzzFeed, Inc., 970 F.3d 167, 171 (2d Cir. 2020).

The last two of these elements represent a “so-called ‘double-scienter requirement.'” Id. “[T]he defendant . . . must have actual knowledge that CMI ‘has been removed or altered without authority of the copyright owner or the law,' as well as actual or constructive knowledge that such distribution ‘will induce, enable, facilitate, or conceal an infringement.'” Id. (quoting 17 U.S.C. § 1202(b)(3)); see also Stevens v. Corelogic, Inc., 899 F.3d 666, 673 (9th Cir. 2018) (explaining that both Section 1202(b)(1) and (3) “require the defendant to possess the mental state of knowing, or having a reasonable basis to know, that his actions ‘will induce, enable, facilitate, or conceal' infringement”).

Thus, a plaintiff bringing a Section 1202(b) claim must make an affirmative showing, such as by demonstrating a past “pattern of conduct” or “modus operandi,” that the defendant was aware [of] or had reasonable grounds to be aware of the probable future impact of its actions. Stevens, 899 F.3d at 674.

CMI Scrubbed for Online Travel Agents

The Eleventh Circuit affirmed this approach in Victor Elias Photography, LLC v. Ice Portal, Inc., No. 21-11892 (11th Cir. Aug. 12, 2022).

Commercial photographer Victor Elias specializes in taking photographs of hotels. His name and other information is inserted in the metadata of the image files that he sends to his clients. Those clients receive broad licenses to use the photographs to promote their hotel properties “in unlimited quantities, for an unlimited time, and in any format – without a restriction on how the photographs' CMI could be manipulated or removed.”

Because CMI is embedded within the image file, an individual must make several “clicks” on the file to access this information. Specifically, the person viewing the file would have to right-click on the image file and then open the “properties” or “more info” field to access the information.

Ice Portal, Inc. (now a division of Shiji (US), Inc. (“Shiji”)) acts as an intermediary between the hotels that licensed Mr. Elias's photographs and online travel agents (“OTAs”) like Expedia and Travelocity.

In optimizing the photographs for use by the OTAs, Shiji's software allegedly removed certain copyright-related information that Mr. Elias had embedded within the metadata of the photographs.

The district court correctly granted summary judgment to Shiji because Elias did not show an essential element of its CMI claim – namely, that Shiji knew, or had reasonable grounds to know, that its actions would induce, enable, facilitate, or conceal a copyright infringement.

Use of CMI to Police Copyright Infringement

In affirming the summary judgment, the Eleventh Circuit found no indication in the record that Shiji knew at the relevant time that copyright owners use CMI to police copyright infringement on the Internet (although Shiji likely will not be able to rely on this fact if accused of another CMI violation in the future).

Third-Party Infringement

Also, although Elias found infringing images stripped of his CMI on other non-party website, there was no evidence linking Shiji's actions of removing the photographs' CMI with those third-party instances of infringement. The Eleventh Circuit found this connection too speculative and “tenuous” to support a CMI violation. See Stevens, 899 F.3d at 673 (rejecting liability when an infringer “might” be able to use copyrighted works undetected because such an assertion “simply identifies a general possibility that exists whenever CMI is removed”).

[T]he statute's plain language requires some identifiable connection between the defendant's actions and the infringement or the likelihood of infringement. To hold otherwise would create a standard under which the defendant would always know that its actions would “induce, enable, facilitate, or conceal” infringement because distributing protected images wrongly cleansed of CMI would always make infringement easier in some general sense. See Stevens, 899 F.3d at 673, 674 (finding that a mere showing of CMI removal, leading to the possibility that an infringer could use the photos undetected, is insufficient to meet Section 1202(b)'s second scienter requirement because “it simply identifies a general possibility that exists whenever CMI is removed” and “Section 1202(b) must have a more specific application than the universal possibility of encouraging infringement”). This reading would effectively collapse the first and second scienter requirements.

A Tempting Inference from Arbitration

In a prior arbitration proceeding between Shiji and a competitor, Leonardo Worldwide Corporation, in the OTA photo distribution business; Leonardo claimed that Shiji improperly accessed Leonardo's image database, downloaded and processed multiple images through Shiji's own software that scrubbed them of CMI that had been inserted by Leonardo, and then re-published the images on Shiji's website.

Elias argued that Leonardo's claims in the arbitration had “put [Shiji] on notice and imbued [Shiji] with the necessary mental state to violate § 1202 in the future where, as here, [Shiji's] metadata stripping system was challenged by [a] copyright owner.”

The Eleventh Circuit noted that this was “a tempting inference to make.” But the Leonardo arbitration, at most, only “gave Shiji knowledge that its software was scrubbing CMI from some of the extended attributes of the images – and, in fact, different extended attributes than the ones at issue here.” There was no indication that Shiji learned that copyright owners routinely rely on embedded CMI to police infringements of their works on the internet or that would-be infringers prefer to utilize images from OTAs because they have already been cleansed of CMI.

The Eleventh Circuit also found the facts of the arbitration distinguishable because it “had nothing to do with whether Shiji's role as an intermediary image optimizer might induce or enable infringement by a third party.”

We limit our holding to an affirmation of the district court's conclusion that Leonardo's particular accusations in this case did not give Shiji reasonable grounds to know that its software's removal of CMI, and the subsequent distribution of photographs stripped of CMI, would induce, enable, facilitate, or conceal the infringement of Elias LLC's copyrighted works.

Concluding that there was no genuine issue of material fact as to whether Shiji knew, or had reasonable grounds to know, that its actions of stripping CMI from images being distributing would “induce, enable, facilitate, or conceal an infringement”; summary judgment was affirmed.

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.