The Eleventh Circuit’s adoption of a heightened standard that makes it harder for copyright owners to win certain Digital Millennium Copyright Act lawsuits has important implications for digital artists licensing their work, attorneys say.
The Aug. 12 ruling of first impression established a high bar for a travel photographer to show that a visual content service wrongfully removed copyright management information, or CMI, from the metadata embedded in his photos of hotels and resorts. CMI — which usually identifies the author, their contact information, and the terms and conditions of use — has become a prevalent mechanism among artists to enforce their copyright protections.
Joining two other federal appeals courts, the US Court of Appeals for the Eleventh Circuit said DMCA liability is triggered when a defendant both knows that it removed CMI and knows that the removal will likely cause or conceal a specific instance of infringement in the future.
For some attorneys, the ruling suggests that photographers and other digital creators who license their work should include explicit language in their agreements prohibiting removal of CMI.
“It makes sense to include in any kind of license agreement a promise not to remove CMI just because it makes it much harder to police downstream infringement,” said Trace Jackson, an intellectual property attorney at Rogers Towers PA
CMI and Metadata
The case before the Eleventh Circuit involved a travel photographer, Victor Elias, who specializes in taking photographs of hotels and resorts throughout North America. He then licenses the photos back to the properties to be used in promotional material and on their websites.
The licensing agreements were “broad,” the appeals court said, and didn’t refer to the CMI that Elias embedded into the metadata of his photos. The metadata of an image file is usually accessible when an individual right clicks the image, and opens the “properties” or “more info” field.
The use of metadata as a strategy for enforcing copyrights is “becoming more of an industry standard at this point,” said Scott Burroughs of the firm Doniger Burroughs, which specializes in intellectual property and art law.
“The only avenue to make sure the rights are protected is to include CMI, either as a gutter credit, or a watermark, or in the metadata,” he said. “That allows the artist to maintain their association di lei with their work di lei.”
Elias employed a variety of methods to search for unauthorized uses of his photos online, including search engines that specifically return keywords found in image file metadata.
The dispute arose when the hotels began using Elias’ photos on online travel agency sites like
Elias sued Ice Portal, arguing that its removal of CMI would “induce, enable, facilitate, or conceal” copyright infringement in violation of the DMCA.
The Southern District of Florida granted summary judgment to Ice Portal, and Elias appealed to the Eleventh Circuit. He wanted the appeals court to adopt a standard that would create liability when Ice Portal knew that removing CMI made infringement “generally possible or easier to accomplish.”
But the Eleventh Circuit instead followed precedent from the Ninth and Second circuits to establish its stricter test.
“It has to be the case that the person stripping the photograph of the CMI knows of some specific infringement that will or may occur because of that,” Jackson of Rogers Towers said of the court’s standard.
There would be a difference between removing a photo’s CMI and putting it on a specific online travel agency website, like this case, and putting it on “some website labeled ‘free public domain pictures here,’ where you’re kind of asking for infringement , ”Jackson said.
Dineen Pashoukos Wasylik, an intellectual property attorney who sought to file an amicus brief on behalf of a variety of photography organizations in support of Elias, said the court’s heightened standard was “frustrating” and isn’t the correct reading of the statute. The appeals court denied Wasylik’s motion to file the brief in a one-page order.
She said she believed the court overlooked the word “conceal” in the statute. “The whole purpose of putting this information on these photos is to allow people to look for their work and police infringement,” but removing CMI would conceal that infringement, Wasylik said.
The case was also incorrectly resolved at the summary judgment stage, because questions about what Ice Portal knew or didn’t know is a question of fact to be resolved by a jury, not a judge, Wasylik said.
The fact that Elias’ licenses didn’t include language stating that CMI can’t be removed from his photos is because copyright owners rely on the “default rules” of the statute, Wasylik said.
But with the court’s new knowledge standard, she recommended that photographers include specific language in their licensing contracts.
“Having someone sign an agreement that expressly states” that CMI can’t be stripped without permission is “the easy peasy way to show, yes, they had knowledge.”
She also recommended that the metadata itself should include information that the copyright owner uses the CMI to enforce copyrights so it shouldn’t be removed.