Removing copyright information doesn’t necessarily violate DMCA

The 11th Circuit has ruled that merely removing copyright management information (CMI) from photos doesn’t necessarily violate the Digital Millennium Copyright Act (DMCA).


Victor Elias is a professional photographer who specializes in taking photos of hotels and resorts in the United States, Mexico, and the Caribbean.

Elias embeds CMI within the metadata of the photos:

Creator Victor Elias Creator's Job Title Owner/Photographer Copyright Notice @Victor Elias Creator's Contact Info USA, 5301 N. Commerce Ave. Suite 4, XXX-XXX-XXXX Rights Usage Terms Rights Managed

This CMI isn’t obvious to a casual viewer. A person has to right-click on the image file and then open the "properties" or "more info" field to see the information. However, the CMI is searchable.

This CMI allows Elias to police the internet to look for infringements of his copyrights in his photos. As the court describes, he uses several methods to do this:

  1. Elias visits OTA websites, types in the names of locations where he has shot photos of a hotel, then looks for the hotels he shot, and then looks for the images;
  2. Elias Googles the hotel name plus "Victor Elias";
  3. Elias uses ImageRights software, which searches for visual image matches on the internet;
  4. Elias uses TinEye which searches for copies of images he uploads; and
  5. Elias uses Google images to search for copies of the photos. According to Elias, he also uses Google to search using keywords such as "Victor Elias" and "Victor Elias Photography," which can result in the return of pages containing keywords in the embedded metadata.

Elias licenses the hotels and resorts, allowing them to use the photos to promote their properties in unlimited quantities, for an unlimited time, and in any format, without restrictions on how the CMI could be manipulated or removed.

The licensee can use the photos to market its properties on its own websites and on third-party travel booking websites -- online travel agents ("OTAs") like Expedia and Travelocity.

In 2016, Elias discovered that there were infringing uses of his copyrighted images on the internet. He sued Ice Portal, Inc. — now a division of Shiji (US), Inc.— which acts as an intermediary between the hotels that licensed Mr. Elias's photographs and the OTAs.

As the court noted,

Shiji processed photos collected from the Hotels in the following manner. First, Shiji's software would download copies of image files from the Hotels' respective servers and store them on Shiji's server. Each image file provided to Shiji came with a separate spreadsheet file containing pertinent information about the image that would be displayed on the OTA websites, such as room type or a caption. After receiving the image files, Shiji's software would then convert the files into JPEG format, making copies of the photos in various industry-standard sizes. The conversion to JPEG format optimized the image files for faster display on OTA websites, but it came at a cost — sometimes the metadata on the image file, such as the CMI, would be erased. Finally, the JPEG copies of the photographs would be saved on Shiji's server, along with the accompanying spreadsheet file, and made available to OTAs.

When Shiji's software allegedly removed the CMI, Elias claimed that this removal violated the DMCA.

The DMCA, enacted in 1998 to “strengthen copyright protection in the digital age" provides under 17 U.S.C. § 1202(b):

(b) Removal or alteration of copyright management information. — No person shall, without the authority of the copyright owner or the law —

(1) intentionally remove or alter any copyright management information, [or] ...
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or ... having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

The district court granted summary judgment to Shiji because Elias didn’t prove that Shiji knew, or had reasonable grounds to know, that its actions would induce, enable, facilitate, or conceal a copyright infringement.

The Circuit Court noted that 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.

“Will,” said the court, is a higher standard than “may” or “might.”

Elias pointed to several pieces of evidence that he said met this standard, including:

  • A 2016 arbitration between Shiji and a competitor that "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."
  • Shiji alleged modus operandiof removing a photographer's CMI "knowing that CMI [being removed] has likely directly resulted in infringement of the Elias Images."

The Circuit Court rejected these arguments and affirmed the district court’s granting of summary judgement to Shiji, concluding that:

the 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.

Elias is seeking US Supreme Court review of the Circuit Court’s decision. The Question Presented is:

Whether a plaintiff alleging a violation of § 1202(b) is required to demonstrate that the defendant’s ‘intentional [ ] remov[al] or alter[ation]’ of CMI ‘conveyed in connection with copies of [the plaintiff’s] work’ was connected, linked or associated in some identifiable way to known instances of infringement, even though the plain language of the statute contains no such requirement.

As a practical matter, this case shows that licensees of copyrighted material should secure the right to change or remove CMI, and to sublicense that right to third parties who make use of the material.

Categories: Copyright