IP Law Daily, COPYRIGHT—S.D.N.Y.: Stock photo platform shielded by DMCA from claims over user-uploaded image, (Sep 21, 2022)

By Thomas Long, J.D.

Website and platform operator Shutterstock qualified for safe harbor immunity due to its repeat infringer policies and expeditious removal of images after takedown requests were submitted.

Shutterstock, Inc.—operator of a website that facilitates image licensing—was protected by the Digital Millennium Copyright Act (DMCA) safe harbor from a professional photographer’s copyright infringement claims over an image that had been uploaded by a third-party contributor to Shutterstock’s site without the photographer’s consent. According to the federal district court in New York City, there were no genuine issues of material fact as to whether Shutterstock had satisfied all of the statutory requirements for DMCA safe harbor protection under 17 U.S.C. § 512. Shutterstock was a “service provider” for purposes of the statute and had implemented an adequate policy for identifying and terminating accounts of repeat infringers. There was no evidence that Shutterstock removed metadata from the image at issue. The image was uploaded and stored at the direction of the third-party contributor, and Shutterstock acted expeditiously to remove it when it was made aware of the infringement. It was undisputed that Shutterstock had no right to control the initial infringing upload, and there was no evidence that Shutterstock received any financial benefit. The court granted summary judgment in favor of Shutterstock (Steinmetz v. Shutterstock, Inc., September 19, 2022, Hellerstein, A.).

Photograph at issue. In 2013, plaintiff George Steinmetz traveled to the Amazon Rainforest and photographed an image of the burning practices used to convert the Rainforest into farmland for crop production. Steinmetz obtained a U.S. copyright registration that year, and the image was first published in 2017.

Shutterstock’s business, DMCA practices. Shutterstock’s website and online platform allows users to pay to license photographs contained in a database of over 415 million images, with approximately 200,000 added per day via two methods: (1) a self-supplied editorial platform whose images are owned by Shutterstock; and (2) a contributor platform populated by images submitted by third parties and for which Shutterstock obtains only a license and nonexclusive right to distribute. The second method was at issue in this case.

Individuals who register as contributors to Shutterstock’s platform must accept terms of service that include a representation that any content submitted does not infringe the copyright or any other rights of any third party. In addition, the terms of service state that Shutterstock may suspend access and terminate a contributor's account if it receives a copyright infringement complaint about the contributor's content. Shutterstock has a team that reviews images and rejects them if they are of poor quality, contain objectionable content, or obviously infringe the copyright of another. Images that are not rejected become available for license through Shutterstock’s portfolio.

Shutterstock also displays its DMCA policy on its website, which sets forth procedures for copyright owners to submit notices of infringement. Under the policy, Shutterstock investigates notices within an average of five and a half days after receipt, and it disables or terminates the accounts of contributors who repeatedly infringe.

Unauthorized upload; takedown request; lawsuit. In November 2019, a third-party contributor unloaded a cropped version of Steinmetz’s photo. The photo was added to Shutterstock’s portfolio and made publicly available online. According to Steinmetz—and undisputed by Shutterstock—Steinmetz did not provide permission for the image to be uploaded or included in the licensing platform. On April 1, 2021, Steinmetz requested that Shutterstock remove the image; it was removed as of May 11, 2021, although thumbnails were found in cache servers of third-party websites as late as September 2021. Steinmetz filed suit against Shutterstock on August 23, 2021, asserting claims for direct and contributory copyright infringement, as well as falsification of copyright management information in violation of Section 1202(a) of the DMCA. Both parties filed motions for summary judgment. The latter claim was based on Shutterstock’s routine placement of a watermark on the version of the image displayed on the website. The primary issue was whether Shutterstock qualified for safe harbor protection under DMCA Section 512.

Safe harbor immunity. The court held that Shutterstock was immune from copyright infringement liability because it satisfied both the threshold requirements and the specific requirements for the safe harbor. “And although Plaintiff has offered evidence that Defendant had actual knowledge of infringement, by virtue of his takedown notice,” the court said, “Defendant has shown that it acted expeditiously to remove the infringing content from its own website (the only location over which it had control to do so).”

Threshold requirements. As the provider of an online platform for image sharing, Shutterstock was a “service provider” for purposes of Section 512. The court rejected Steinmetz’s contention that Shutterstock was not a service provider because it engaged in for-profit licensing for its own benefit, criticizing case law cited by Steinmetz as “not well-reasoned.” The court also found that Shutterstock’s terms of service on its website indicated that it had implemented a policy for repeat infringers that complied with the DMCA. Steinmetz argued that Shutterstock had interfered with standard technical measures to protect his copyright by stripping metadata from the image; however, there was no evidence showing that the image file uploaded by the contributor contained metadata, and if it did, that Shutterstock stripped that metadata. Therefore, Shutterstock met the threshold requirements for Section 512 immunity.

Additional requirements. The court next found that images are uploaded and "stored" in Shutterstock’s portfolio at the direction of contributors, as required by Section 512. “That Defendant reviews images before they can be published on its website does not disqualify Defendant from safe harbor,” the court said. The evidence did not support Steinmetz’s characterization of Shutterstock’s relationship with its contributors as a “partnership.” Explained the court, “The evidence shows that Defendant neither seeks out contributors nor curates the portfolio connected with its contributor platform.” The platform was “user-directed,” the court said.

Additionally, the court found that evidence showed that when Shutterstock became aware of infringement, it acted expeditiously to remove it. “With respect to Plaintiff, his April 2021 takedown notice specifically requested that Defendant remove his image from the public-facing website and cited the offending URL,” said the court. “Defendant did so. The DMCA did not require Defendant to do more.” Shutterstock was not obligated to ensure that the third-party websites refreshed their caches in order to remove their copies of the thumbnail image.

“The undisputed facts show that Defendant had no right to control the initial infringing conduct by the Contributor,” the court continued. “Defendant did not invite or request the Contributor to upload. The only ex ante control arguably possessed by Defendant was the ability to reject the image for publishing.” However, Section 512 does not place an obligation on a service provider to affirmatively police infringements. In addition, there was no evidence of Shutterstock receiving any financial benefit. “There is no evidence that the image was licensed or even requested for license,” the court explained. “Its mere existence in Defendant's portfolio of hundreds of millions of images is an insufficient basis for finding financial benefit.”

Copyright management information. Steinmetz’s DMCA Section 1202(a) claim failed because Shutterstock’s use of a watermark did not constitute false copyright management, in the court’s view. Also, Steinmetz could not establish that Shutterstock had the required scienter. “The evidence shows that Defendant incorporates or attaches its watermark to prevent, rather than to induce, enable, facilitate, or conceal, infringement,” the court reasoned.

Conclusion. Accordingly, the court granted Shutterstock’s motion for summary judgment and denied Steinmetz’s. The court directed the clerk to mark the case closed.

The case is No. 1:21-cv-07100-AKH.

Attorneys: Laura Maria Zaharia (Doniger / Burroughs Law Firm) for George Steinmetz. Eleanor Martine Lackman (Mitchell Silberberg & Knupp LLP) for Shutterstock, Inc. d/b/a Shutterstock.com.

Companies: Shutterstock, Inc. d/b/a Shutterstock.com

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