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DMCA development: Standard for removal of digital copyright info comes into focus

February / March 2023 IP Newsletter

The U.S. Court of Appeals for the Eleventh Circuit is making it tough for digital copyright holders to allege violations of the Digital Millennium Copyright Act (DMCA) based on the removal of copyright management information (CMI). In doing so, the court agreed with other appellate courts that a plaintiff must establish “double scienter” by the defendant.

Photographer snaps at CMI removal

The plaintiff is a professional photographer who specializes in photographing hotels and resorts. He registers his photos with the U.S. Copyright Office. Between 2013 and 2017, the plaintiff took photos for hotels owned by two well-known hotel chains. He inserted his CMI in the metadata within the image files sent to the clients. The hotels had broad licenses to use the images to promote their properties on their websites, as well as on third-party travel booking websites (known as OTAs).

The hotels used a company that acts as an intermediatory between hotel chains and OTAs, making photos from the former available to the latter. Of the more than 9,400 images the company processed for the hotels, 220 were taken by the plaintiff.

During the processing of image files, metadata — including the CMI — sometimes were erased. In September 2016, the plaintiff found unauthorized copies of his photos posted on non-OTA websites without his CMI. He then discovered that his CMI also was stripped out of these images on OTA websites.

The plaintiff sued the intermediary, alleging it had violated the DMCA by stripping the CMI. The trial court dismissed the case before trial, finding the plaintiff couldn’t satisfy the “second scienter requirement” of the statute. The plaintiff appealed to the Eleventh Circuit.

Double-scienter requirement clicks with court

Section 1202(b) of the DMCA generally prohibits the removal or alteration of CMI. It also bars distributing works knowing that CMI has been removed or altered without authorization. Although the DMCA was enacted in 1998, the Eleventh Circuit hadn’t previously interpreted this provision.

The court initially found that the statute requires proof that the defendant knew, or had reasonable grounds to know, that its conduct will induce, enable, facilitate or conceal an infringement. Use of the term “will,” the court said, indicates a degree of likelihood or certainty.

The court then turned to the opinions of other courts of appeals. The Second Circuit has held that, to show a distribution violation, a plaintiff must show that the defendant 1) knew that CMI had been removed or altered without authorization, and 2) knew or had reasonable grounds to know that the distribution will induce, enable, facilitate or conceal an infringement. The Eleventh Circuit agreed with this interpretation.

The plaintiff argued for a standard by which a defendant that knowingly removes CMI without consent can be held liable if it knows, or has reasonable grounds to know, that its actions make infringement generally possible or easier to accomplish. But the court found that plaintiffs must provide evidence supporting the inference that future infringement is likely to occur as a result of the removal or alteration of CMI.

Turning to the evidence, the Eleventh Circuit concluded that the plaintiff didn’t satisfy the second scienter requirement. Among other things, it noted the lack of evidence that the intermediary knew copyright owners use CMI to police online infringement, so the plaintiff couldn’t show the intermediary knew or had reason to know removing CMI could conceal an infringement. The court observed, too, that an infringer can remove CMI itself. And no evidence linked the intermediary’s removal of CMI with the examples of infringement the plaintiff found online.

The current picture

With its ruling, the Eleventh Circuit joins the Second and Ninth Circuits in requiring “double scienter.” Copyright holders alleging DMCA violations may face a tougher challenge in those courts than in others.