When it comes to copyright law, infringement likely comes top of mind. You can’t take someone else’s work – be it a song, photograph, literary work, or other form of copyrightable subject matter – and use it without permission. However, there are other causes of action available to copyright holders, which they may not be aware of, that have been enacted by Congress in an effort to bring copyright law into the 21^st century.

Copyright owners regularly use metadata, social media handles, watermarks, and other conveyed information in connection with a work to identify the copyright owner, all regarded as copyright management information (CMI). Through use of this identifying information the Digital Millennium Copyright Act (DMCA) provides copyright owners with a way to ensure attribution of a particular copyrighted work.

DMCA Section 1202 makes it is unlawful to knowingly remove, alter, or provide false CMI, or distribute a work knowing that the CMI is false or has been altered. But holding a defendant liable for violating Section 1202 is easier said than done, as photographer Victor Elias learned in a recent case, Victor Elias Photography LLC v. Ice Portal Inc. (August 12, 2022), in the District Court for the Southern District of Florida.

This district court case, and its subsequent appeal to the Eleventh Circuit Court of Appeals, dives into the crucial element of intent or knowledge of wrongdoing – also called scienter – under the DMCA.

Although the DMCA was enacted twenty-four years ago, there are relatively few court of appeals decisions on issues interpreting the meaning of its language.

We examine this case with regard to how courts not only in the Eleventh Circuit, but across the country, will likely analyze liability when a party is alleged to have removed or altered a copyright owner’s CMI.

Factual Background

Victor Elias is a commercial photographer specializing in photographs of hotels and resorts for use on the properties’ websites or the websites of online travel agents (OTAs) such as Expedia or Travelocity.

Embedded in each of his digital photos, Elias supplies metadata, consisting of his name identifying him as the owner, address, social media handle, and a notice that the work is protected, all of which is considered CMI. Elias licenses the photos to the hotels for them to market the properties on their sites or on third-party OTA booking websites, and uses the photos’ embedded data to police infringement online.

Ice Portal, Inc. (now a division of Shiji (US), Inc.) (Shiji) is an intermediary that connects hotels to OTAs by obtaining copies of hotel photographs, such as Elias’ photographs, and making them available to the OTAs. Shiji’s standard operating procedure is to download photographs from the hotel servers and convert them into smaller digital files for faster display on OTA websites. In the process, metadata attached to the photographs is erased, including Elias’s CMI.

In 2016, Elias discovered unauthorized copies of his photographs posted on various third-party websites without his CMI, although he acknowledged that he had no knowledge of where the third-party websites obtained the images. In 2019, Elias filed suit against Shiji for violations of DMCA Sections 1202(a) and 1202(b) alleging Shiji’s removal of the CMI in Elias’s copyrighted photos. The district court granted summary judgment in favor of Shiji, and Elias appealed.

The Court of Appeal’s Analysis

The Eleventh Circuit sought to interpret the language of the DMCA in its analysis of Sections 1202(a) and 1202(b).

The statute states, in pertinent part, that one cannot intentionally remove or alter any copyright management information, or distribute copies of works (i) knowing that copyright management information has been removed or altered, or (ii) knowing, or having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement.

Merely removing CMI is insufficient for imposing liability; proof of intent to distribute altered or false CMI, or intent to distribute knowing that it will induce, enable, facilitate, or conceal an infringement, is also required. In its decision analyzing the requisite intent needed, in what’s been called the “double-scienter requirement,” the Eleventh Circuit looked to the available guidance from the Second and Ninth Circuits.

Double-Scienter

To be held liable under the DMCA, a defendant must have acted while (1) knowing that copyright management information has been removed or altered, and (2) knowing, or having reasonable grounds to know, that such distribution will induce, enable, facilitate, or conceal an infringement.

Here, Elias failed on meeting both requirements. Elias did not proffer sufficient evidence that Shiji had reason to know that its photo processing software removed CMI, or that such removal would induce, enable, facilitate, or conceal any infringement.

Elias, in part, relied upon evidence of infringing photographs found on third-party websites to show that Shiji’s removal of the CMI enabled or facilitated infringement, as required under the DMCA. The court, however, called this argument tenuous, finding no connection between Shiji’s software and the infringing third-party websites.

“Elias [ ] argues that the at-issue photographs on the OTA websites have been stripped of CMI, and the infringing images he found on non-party websites have also been stripped of CMI; therefore, the infringing parties must have pulled the images from OTA websites.” But the court rightfully called this argument speculative and entirely unsupported.

Furthermore, Elias identified no evidence indicating that Shiji's distribution of the photographs ever induced enabled, facilitated, or concealed an infringement.

Therefore, the Eleventh Circuit affirmed the grant of summary judgment in favor of Shiji given Elias’ failure to meet his burden of proof on these issues.

Conclusion

The Eleventh Circuit’s analysis of the double-scienter requirement may well become the standard analysis that courts will apply when considering Section 1202 of the DMCA.

Although a beneficial tool to prevent, or protect against, the spread of infringing works on the internet, being successful in proving a DMCA claim requires more than mere generalities and inferences to find liability in the part of a party that removed CMI from a digital work. Elias might have succeeded if he were able to (i) prove that Shiji knew its software was stripping CMI and (ii) prove some identifiable connection between Shiji’s actions and the third-party infringement. However, relying on assumptions, as Elias did, will not pass muster.