Photogs lose DMCA case over metadata removal

January 09, 2019
Patterson Thuente IP

More than two decades after its enactment, portions of the Digital Millennium Copyright Act (DMCA) continue to confound both copyright holders and accused infringers. What, for example, must a copyright holder establish to win a lawsuit over removal of copyright management information (CMI)? The U.S. Court of Appeals for the Ninth Circuit provided some clarity on the issue in a case involving digital photographs.

The developing case

The plaintiffs were professional real estate photographers who license photos of listed properties to real estate agents. The agents use CoreLogic software to upload the photos to Multiple Listing Services (MLS) databases of listed properties.

The software resizes large image files using prewritten code that can’t read certain data from them. As a result, the metadata attached to the images isn’t retained after resizing.

The photographers sued CoreLogic, alleging that the company removed CMI—that conveys the copyright owner and the nature of the copyright—from their photos and distributed them without the information. The trial court dismissed the case before trial, and the photographers appealed.

The court’s focus

The DMCA generally prohibits the removal or alteration of CMI, as well as the distribution of copies of works with removed or altered CMI. The statute requires the defendant to possess the mental state of knowing, or having a reasonable basis to know, that his or her actions “will induce, enable, facilitate, or conceal infringement.”

The Ninth Circuit found that the photographers didn’t satisfy this requirement. The plaintiffs argued only that, because one method of identifying an infringing photograph had been impaired, someone might be able to use their photos undetected — a general possibility that exists whenever CMI is removed.

But the court rejected this showing as insufficient. According to the court, the mental state requirement requires specific allegations as to how identifiable infringements “will” be affected by the removal or alteration.

Because the DMCA is written in the future tense, the photographers weren’t required to show that any specific infringement had already occurred. Nor did they need to show certainty as to a future act of infringement. But a plaintiff must make an affirmative showing that the defendant was aware of the probable future impact of its actions. This can be done by demonstrating a past pattern of conduct or modus operandi.

Applied here, the court found that the photographers needed to provide evidence from which one could infer that future infringement was likely to occur as a result of the removal or alteration of CMI. Instead, the court concluded that the evidence didn’t support such an inference.

One photographer, for example, testified that he’d never looked at any metadata information on any MLS system photograph before the lawsuit began. On the two occasions he became aware of unauthorized use of his photos, he learned of it from the real estate agent who commissioned the photographs.

The other photographer similarly testified that he’d never looked at the metadata on an MLS listing photo and didn’t think the information could be pulled off a listing. Their testimony “undermined any ostensible relationship between the removal of CMI metadata and their policing of infringement.”

Further, the photographers identified no instance in which the removal of CMI metadata from a photograph ever induced, enabled, facilitated or concealed an infringement. And, the court pointed out, a party that intends to use a copyrighted photograph undetected could remove any CMI metadata, thereby precluding detection through a search for the associated metadata.

Photo finish

The Ninth Circuit affirmed the trial court, making one aspect of the DMCA crystal clear: The mere possibility of encouraging infringement isn’t enough to support allegations of infringement based on the removal or alteration of CMI. 

Stevens v. CoreLogic, Inc., No. 16-56089, June 20, 2018, 9th Cir.

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