IP Law Daily, COPYRIGHT—S.D.N.Y.: Shutterstock qualifies for the DMCA safe harbor, again, (Oct 3, 2023)

By Matthew Hersh, J.D.

The photo service is now two for two in the Manhattan federal court.

A prominent photo hosting service easily qualified for protection from a copyright infringement claim under the safe harbor provision of the Digital Millennium Copyright Act, the federal court for Manhattan has held. The court, in rejecting the claim by a photographer who claimed that the service hosted several hundred of his photos without permission, followed largely in the footsteps of another judge on the same federal bench who had earlier applied the safe harbor to the same photo hosting service in 2022 (McGucken v. Shutterstock, Inc., October 2, 2023, Rearden, J.).

The lawsuit was brought by Elliot McGucken, a photographer who specializes in fine art photography. (McGucken is no stranger to these pages—his lawsuits against Newsweek Magazine and other publications have been covered here and here). The photographer took aim at Shutterstock, the widely known photograph hosting services. In his complaint, the photographer alleged that the photo service infringed upon his exclusive rights to hundreds of his photographs by hosting them on its website. The photographer also claimed that the photo hosting service violated the Digital Millennium Copyright Act, or DMCA, by removing metadata from his photographs that would identify him as the author of those photographs and—worse—by adding a watermark that suggested that the photographs actually belonged to the service.

Both parties moved for summary judgment, leading to this opinion.

DMCA safe harbor. The court granted Shutterstock’s motion for summary judgment on the copyright infringement claim, finding that the service was shielded from the claim by the safe harbor provision of the DMCA. In order to be eligible for protection under the Safe Harbor provisions, the court noted, the hosting service would have to show (1) that it qualified as a “service provider” under the Act, (2) that it had an adequate policy in place to terminate repeat offenders, (3) that it did not interfere with standard technical measures designed to protect photographs from being infringed, (4) that it stored photographs at the direction of its users, (5) that it expeditiously removed infringing photographs, (6) that it had no right or ability to control infringement or obtain a financial benefit from that infringement, and (7) that it complied with its obligation to designate a DMCA agent. The court found that the service met each of these requirements.

As to factor (1), the court found, Shutterstock fell squarely into the definition of a “service provider,” which the DMCA defines as “a provider of online services or network access, or the operator of facilities therefor.” Indeed, an earlier case from the same judicial district, Steinmetz v. Shutterstock, Inc., 629 F. Supp. 3d 74, 80 (S.D.N.Y. 2022) (covered by IP Law Daily here), had already held just that. In this sense, the court emphasized, Shutterstock was no different from services such as Veoh, YouTube, or Photobucket—all of which had been held to be “service providers” under the DMCA.

Factors (2) and (3) also favored summary judgment in favor of Shutterstock, the court held. The evidence clearly showed that the photo service had adopted a policy to terminate repeat infringers, the court noted—a finding, again, that was also made by the Steinmetz court just a year earlier. And there was no evidence that the service interfered with any standard technical measures designed by the photographer to identify or protect his works, the court found. To be sure, the court noted, the photo service had a policy of stripping the metadata from photographs when users uploaded them. But for metadata to qualify as a “standard technical measure” under the DMCA, the court noted, it would have had to—among other things—been developed “pursuant to a broad consensus of copyright owners and service providers.” No evidence of any such consensus existed, the court noted. The best that the author could muster, the court noted, was a working paper authored by a group made up by representatives from Adobe, Apple, Canon, Microsoft, Nokia, and Sony. But that paper, the court found, was “wholly deficient in establishing that preserving metadata is ‘standard.’”

The remaining factors also fell in line, the court found. Photographs on the service were plainly stored there at the direction of users, the court noted—the Steinmetz court, on a similar record, had also so held. Once the photographer provided the service with a proper DMCA notice of infringing material on the site, the court noted, the service took it down within four days—easily counting as “expeditious.” (To be sure, the court noted, several independent photo hosting services with access to Shutterstock’s collection continued to display the photos for some time after that—but that was only because they failed to refresh their cache after Shutterstock itself took the photos down.) The undisputed facts showed—just as they had in Steinmetz, the court noted—that the photo service had no right or ability to control infringement on its site by its users merely because it reviewed photographs as they were uploaded. (The DMCA “disclaims any affirmative obligation to police infringement,” the Steinmetz court made clear.) And the evidence clearly showed that the service provided had designated an agent to receive DMCA takedown notices, the court found, thus meeting the final safe harbor requirement.

DMCA claims. The court also easily rejected the photographer’s two DMCA claims. The photographer’s first claim was that Shutterstock falsely suggested that it owned his photographs by adding its branded watermark to them on the website. But that did not constitute false copyright management information, the court noted—the watermark merely identified Shutterstock as the source of downloaded photographers, the court found, and in any event it did so “to prevent, rather than to induce, enable, facilitate, or conceal,” infringement. Nor did the photo service’s stripping of metadata from uploaded photographs constitute the unlawful removal of CMI, the court found. Again, the issue here was scienter—or in this case, the lack of it. The photographer had not adduced any evidence, the court noted, that Shutterstock removed his metadata “knowing, or having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement.” That doomed his claim under the DMCA.

The Case is No. 1:22-cv-00905-JHR.

Attorneys: Laura Maria Zaharia (Doniger/Burroughs) for Elliot McGucken. Eleanor Martine Lackman (Mitchell Silberberg & Knupp LLP) for Shutterstock, Inc.

Companies: Shutterstock, Inc

Cases: Copyright NewYorkNews