Summary
The United States Court of Appeals for the Second Circuit affirms summary judgment for Shutterstock on McGucken’s false copyright management information claims under 17 U.S.C. § 1202. The court vacates summary judgment on the copyright infringement claims, holding that factual disputes remain concerning whether the alleged infringement resulted from storage at a user’s direction and whether Shutterstock had the right and ability to control the infringing activity for purposes of the DMCA safe harbor. The case is remanded for further proceedings.
Topics
Practice areas
Questions Presented
- Whether McGucken presented sufficient evidence to create a triable issue that Shutterstock possessed the scienter required for liability under 17 U.S.C. § 1202(a).
- Whether McGucken presented sufficient evidence to create a triable issue that Shutterstock possessed the scienter required for liability under 17 U.S.C. § 1202(b).
- Whether Shutterstock established as a matter of law that the alleged infringement occurred by reason of storage at the direction of a user under 17 U.S.C. § 512(c)(1).
- Whether Shutterstock established as a matter of law that it lacked the right and ability to control the infringing activity under 17 U.S.C. § 512(c)(1)(B).
- Whether summary judgment was proper on McGucken's copyright-infringement claims and false CMI claims.
Holdings
- A plaintiff opposing summary judgment on a § 1202(a) false-CMI claim must identify specific facts creating a triable issue that the defendant knew the CMI was false and acted with the intent to induce, enable, facilitate, or conceal infringement. McGucken failed to do so.
- A plaintiff opposing summary judgment on a § 1202(b) claim must present evidence creating a triable issue that the defendant knew the CMI had been removed or altered without authorization and knew, or had reasonable grounds to know, that distribution would induce, enable, facilitate, or conceal infringement. McGucken failed to do so.
- An online platform that facilitates users' ability to license uploaded images may qualify as a service provider under the broad definition in 17 U.S.C. § 512(k)(1)(B); the fact that it acts as principal on copyright licenses does not categorically exclude it.
- A service provider reasonably implements a repeat-infringer policy if, under appropriate circumstances, it terminates users who repeatedly or blatantly infringe copyright; the statute does not require perfect prevention or termination of every repeat infringer.
- A plaintiff asserting that metadata is a standard technical measure bears the burden of establishing that it satisfies the statutory requirements, including development through broad consensus in an open, fair, voluntary, multi-industry standards process. McGucken did not meet that burden.
- The § 512(c) safe harbor does not apply when a service provider engages in manual, substantive, and discretionary review that imposes its own aesthetic, editorial, or marketing judgment on user content accepted for the platform. Whether Shutterstock's review had that character presented a triable issue of fact.
- Whether a service provider has the right and ability to control infringing activity depends on whether it exercised substantial influence over user activities, including the coercive effect and frequency of intrusions into user autonomy. The record presented a triable issue as to Shutterstock's control.
Key quotations
“if a service provider engages in manual, substantive, and discretionary review of user content—if, on a case-by-case basis, it imposes its own aesthetic, editorial, or marketing judgment on the content that appears on its platform—then its storage of infringing material is no longer “at the direction of a user.”” (29)
“In other words, “extensive, manual, and substantive” front-end screening of user content is not “accessibility-enhancing” and is not protected by the § 512(c) safe harbor.” (29)
“Ultimately, it is the factfinder’s role to determine the degree and significance of Shutterstock’s solicitation and screening of user content.” (37)
Factual background
McGucken is a professional photographer whose photographs appeared on Shutterstock's online stock-photo marketplace without his knowledge or consent. Three Shutterstock contributors uploaded 337 of his photographs, and Shutterstock licensed 165 of them to customers, generating $2,131.60 in revenue shared with the contributors. Shutterstock automatically removed original metadata, added its own watermark and metadata, and manually reviewed submitted images before making them available. After receiving a DMCA-compliant takedown notice, Shutterstock removed the identified images and terminated the responsible contributor accounts.
Procedural history
McGucken sued Shutterstock after photographs he claimed as his own were uploaded by Shutterstock contributors and made available for licensing. After discovery, both parties moved for summary judgment. The district court granted Shutterstock summary judgment on all claims, concluding that the DMCA safe harbor applied to the copyright claims and that Shutterstock's metadata removal did not violate 17 U.S.C. § 1202. The Second Circuit affirmed the false CMI rulings, vacated the rulings on the copyright-infringement claims, and remanded.
Remand instructions
Remand for further proceedings on McGucken's copyright-infringement claims, including factual determinations whether the alleged infringement occurred by reason of storage at the direction of a user and whether Shutterstock had the right and ability to control the infringing activity. The district court may also address the financial-benefit prong of § 512(c)(1)(B).