Vondran Legal® Copyright Infringement Law Firm - CMI 1202 claims and associated caselaw.  Call us if you are involved in a photo infringement case involving allegations of 17 USC 1202.  We can be reached at (877) 276-5084.

Introduction - What 17 U.S.C. 1202 prohibits

Under 17 U.S.C. §1202. Integrity of copyright management information:

(a) False copyright management information. No person shall, knowingly and with the intent to induce, enable, facilitate, or conceal infringement—

(1) provide copyright management information that is false, or

(2) distribute or import for distribution copyright management information that is false.

(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,

(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, 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, with respect to civil remedies under section 1203 [17 USCS § 1203], having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

California DMCA case law

Dolls Kill, Inc. v. Zoetop Bus. Co. (C.D.Cal. Aug. 25, 2022, No. 2:22-cv-01463-RGK-MAA) 2022 U.S.Dist.LEXIS 209927, at *6-9.

Violations of the Digital Millennium  Copyright Act

Plaintiff alleges that Defendants violated section 1202(b) of the Digital Millennium Copyright Act ("DMCA"). The DMCA prohibits either intentionally removing or altering copyright management information ("CMI"), or distributing works while knowing that CMI has been removed or altered without authorization. 17 U.S.C. §§ 1202(b)(1), (3).

CMI includes "identifying information" about the author or copyright owner of the work "conveyed in connection with . . . displays of a work." 17 U.S.C. § 1202(c).

To violate the DMCA, a defendant must know, or have reasonable grounds to know, that its actions "will induce, enable, facilitate, or conceal an infringement." 17 U.S.C. § 1202(b).

Here, Plaintiff alleges that its website includes "[CMI] for its designs that reflects its ownership and creation of said designs" and that its clothes have a tag bearing the name "Dolls Kill." It also alleges that Defendants do not include this information on their website or infringing products. These facts are not enough to adequately plead a DMCA violation.

The DMCA prohibits removing or altering CMI; it does not prohibit merely omitting CMI from an infringing work. See 17 U.S.C. § 1202(b)(1); see also A'lor Int'l, Ltd. v. Tappers Fine Jewelry, Inc., 2012 U.S. Dist. LEXIS 111460, 2012 WL 12921035, at *10 (C.D. Cal. Aug. 8, 2012) (finding allegations that defendant omitted CMI from illegal copies of plaintiff's jewelry insufficient to state a DMCA claim). Re-creating  another party's work may be unlawful, but it does not necessarily implicate the DMCA because copying a work does not require the removal or alteration of CMI. The crux of Plaintiff's complaint is that Defendants are distributing knockoff products—i.e., exploiting Plaintiff's designs to create imitations of Plaintiff's products. This alleged misconduct, standing alone, does not support an inference that Defendants removed or altered anything from Plaintiff's original work. See Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116, 1122 (C.D. Cal. 1999) (holding that section 1202(b) "applies only to the removal of [CMI] on a plaintiff's product or original work").

Furthermore, while there are certainly similarities between the parties' products, they are not exactly the same. "[C]ourts have found that no DMCA violation exists where the works are not identical." Kirk Kara Corp. v. W Stone & Metal Corp., 2020 U.S. Dist. LEXIS 189425, 2020 WL 5991503, at *6 (C.D. Cal. Aug. 14, 2022) (collecting cases and dismissing a DMCA claim because a "review of the side-by-side-images in the Complaint" revealed that "Defendant did not make identical copies of Plaintiff's works"). The differences between the parties' products undercut any inference that Defendants removed or altered Plaintiff's CMI. To find otherwise would be to speculate that by merely omitting CMI, Defendants must have necessarily removed it. The Court will not speculate.

Because Plaintiff failed to sufficiently allege removal or alteration of CMI, the Court finds that Plaintiff fails to state its DMCA claim.

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Kelly v. Arriba Soft Corp. (C.D.Cal. 1999) 77 F.Supp.2d 1116, 1121-1123.

Enacted on October 28, 1998, the Digital Millennium Copyright Act (DMCA) implements two earlier World Intellectual Property Organization treaties. Section 1202 of the DMCA governs "integrity of copyright management information." Section 1202(a) prohibits falsification of copyright management information with the intent to aid copyright infringement. Section 1202(b) prohibits, unless authorized,  several forms of knowing removal or alteration of copyright management information. Section 1203 creates a federal civil action for violations of these provisions.

 Plaintiff argues Defendant violated § 1202(b) by displaying thumbnails of Plaintiff's images without displaying the corresponding copyright management information consisting of standard copyright notices in the surrounding text. Joint Stip. of Facts, PP 64-69. Because these notices do not appear in the images themselves, the Ditto crawler did not include them when it indexed the images. P 70. As a result, the images appeared in Defendant's index without the copyright management information, and any users retrieving Plaintiff's images while using Defendant's Web site would not see the copyright management information.

Section 1202(b)(1) does not apply to [**19]  this case. Based on the language and structure of the statute, the Court holds this provision applies only to the removal of copyright management information on a plaintiff's product or original work. Moreover, even if § 1202(b)(1) applied, Plaintiff has not offered any evidence showing Defendant's actions were intentional, rather than merely an unintended side effect of the Ditto crawler's operation.

Here, where the issue is the absence of copyright management information from copies of Plaintiff's works, the applicable provision is § 1202(b)(3). To show a violation of that section, Plaintiff must show Defendant makes available to its users the thumbnails and full-size images, which were copies of Plaintiff's work separated from their copyright management information, even though it knows or should know this will lead to infringement of Plaintiff's copyrights. There is no dispute the Ditto crawler removed Plaintiff's images from the context of Plaintiff's Web sites where their copyright management information was located, and converted them to thumbnails in Defendant's index. There is also no dispute the Arriba Vista search engine allowed full-size images to be viewed without their copyright management information.

Defendant's users could obtain a full-sized version of a thumbnailed image by clicking on the thumbnail. A user who did this was given the name of the Web site from which Defendant obtained the image, where any associated copyright management information would be available, and an opportunity to link there. Users were also informed on Defendant's Web site that use restrictions and copyright limitations may apply to images retrieved by Defendant's search engine.

Based on all of this, the Court finds Defendant did not have "reasonable grounds to know" it would cause its users to infringe Plaintiff's copyrights. Defendant warns its users about the possibility of use restrictions on the images in its index, and instructs them to check with the originating Web sites before copying and using those images, even in reduced thumbnail form.

Plaintiff's images are vulnerable to copyright infringement because they are displayed on Web sites. Plaintiff has not shown users of Defendant's site were any more likely to infringe his copyrights, any of these users did infringe, or Defendant should reasonably have expected infringement.

There is no genuine issue of material fact requiring a trial on Plaintiff's DMCA claims, and summary adjudication is appropriate. The Court finds there was no violation of DMCA §1202. Defendant's motion is GRANTED and Plaintiff's motion is DENIED on the DMCA claim.

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Attorney Steve® Discusses 1202 CMI violations

The CMI Violations - Friedman v. Live Nation Merch., Inc. (9th Cir. 2016) 833 F.3d 1180, 1187-1189.)

Section 1202(b) of the Digital Millennium Copyright Act prohibits, inter alia, the distribution of works "knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law," and with knowledge that such distribution "will induce, enable, facilitate, or conceal" copyright infringement. 17 U.S.C. § 1202(b). In granting summary judgment on the CMI claim, the district court again relied on what it described as "Friedman's complete failure to adduce competent evidence in discovery or in opposition to Defendants' Motion" and concluded that "he has made no factual showing that Live Nation Merchandise either removed the CMI in question (the alleged 'act') or did so knowingly (the requisite state of mind)."

We note at the outset that the district court focused on the wrong question.The statute does prohibit the intentional removal of CMI. See 17 U.S.C. § 1202(b)(1). But Friedman could also prevail upon a showing that Live Nation distributed his works with the knowledge that CMI had been removed, even if Live Nation did not remove it. See id. § 1202(b)(3). The question, therefore, is whether evidence in the record creates a triable issue of fact as to whether Live Nation distributed Friedman's photographs with the requisite knowledge. We conclude that in the circumstances of this case, it does

 As we have previously explained, "[a] moving party without the ultimate burden of persuasion at trial"—such as Live Nation in this case — nonetheless "has both the initial burden of production and the ultimate burden of persuasion on a motion for summary judgment." Nissan Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099, 1102 (9th Cir. 2000) (citations omitted). The moving party may discharge its initial burden by "show[ing] that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial." Id. But, "to carry its ultimate burden of persuasion on the motion, the moving party must persuade the court that there is no genuine issue of material fact." Id.

Where "a moving party carries its burden of production, the nonmoving party must produce evidence to support its claim or defense." Id. at 1103 (citations omitted). We may assume that Live Nation carried its initial burden of production in its motion for partial summary judgment. Contrary to the district court's assertion, however, Friedman did produce evidence supporting his claim. Most importantly, Friedman produced the images as they appeared on Live Nation's merchandise and the same images as they had appeared on Sony's website and in his book. In his motion for summary judgment, he compared them, demonstrating that there were striking similarities.

 For example, some of the photographs used in Live Nation's calendar included alterations, such as tint effects and added logos, that Friedman had authorized only for the Sony website. Photos that appeared in the Style Guide appeared to have been scanned from Friedman's book, as they contained captions and other layout features that appeared in that source alone. The images on Live Nation's products did not include copyright information that had been present on the earlier versions.

"[A] 'striking similarity' between the works may give rise to a permissible inference of copying." Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir. 1987). Here, the fact that the photographs used by Live Nation were exact copies of the images precisely as they appeared on Sony's website and in Friedman's book gives rise to the compelling inference that Live Nation's photographs were directly copied from those sources. Because the only material difference in the Live Nation versions was that the CMI was missing, it was necessarily the case that the CMI had been removed on the copied version.

The only question, then, is whether the evidence as a whole permits a reasonable inference that Live Nation knew of the removal of the CMI. As to this question, a reasonable jury could certainly conclude that Live Nation had knowledge that photographs are often copyrighted. Indeed, Live Nation's 2009 employee email indicates its awareness that Friedman himself often held the copyrights to photographs of Run-DMC. Furthermore, Live Nation has never offered any explanation of how it came to possess the images. It did, however, provide the declaration of one of its officers, who asserted that his "investigation . . . uncovered no evidence that [Live Nation] ever obtained any of Mr. Friedman's claimed photographs of Run-DMC from any website." A jury could draw an adverse inference from this artfully worded language, which carefully avoids either an outright denial that Live Nation copied the photographs knowing that the CMI had been removed or an explanation as to what the investigation did uncover about the origin of the photographs.

At bottom, Live Nation's argument amounts to a claim that Friedman was required to produce direct evidence of Live Nation's knowledge of the CMI removal. That is not the law. This court has long recognized that "circumstantial evidence can be used to prove any fact." United States v. Ramirez-Rodriquez, 552 F.2d 883, 884 (9th Cir. 1977). We have noted in particular that whether a party had knowledge of a particular circumstance "is a question of fact subject to demonstration in the usual ways, including inference from circumstantial evidence." Harrington v. Scribner, 785 F.3d 1299, 1304 (9th Cir. 2015) (quoting Farmer v. Brennan, 511 U.S. 825, 841-42, 114 S. Ct. 1970, 128 L. Ed. 2d 811 (1994)). Indeed, whenever state of mind is at issue, "'direct proof' of one's specific wrongful intent is 'rarely available'" and so recourse to circumstantial evidence is most often necessary. United States v. Dearing, 504 F.3d 897, 901 (9th Cir. 2007) (quoting United States v. Marabelles, 724 F.2d 1374, 1379 (9th Cir. 1984).

Live Nation is wrong, therefore, that the evidence in the record as a whole is not consistent with a reasonable, if not particularly strong, inference that Live Nation knew of the removal of the CMI when it distributed Friedman's photographs. Because Friedman had therefore discharged his burden of production at summary judgment, the burden shifted back to Live Nation "to carry its ultimate burden of persuasion" by "persuad[ing] the court that there is no genuine issue of material fact." Nissan Fire, 210 F.3d at 1102. It might have done so by providing some explanation for how it came to possess Friedman's images — missing their CMI — in the first place, establishing its lack of knowledge and negating the inference drawn from the juxtaposition of the photographs.

We recently employed a similar burden-shifting approach in another copyright case. In Adobe Systems Inc. v. Christenson, 809 F.3d 1071, 1079 (9th Cir. 2015), we held that when a party asserts the first sale affirmative defense, its burden at summary judgment requires [**23]  it only to produce "evidence sufficient for a jury to find lawful acquisition of title, through purchase or otherwise, to genuine copies of the copyrighted software." If the copyright holder asserts that its acquisition could not have been lawful because "the software was never sold, only licensed, the burden shifts back to the copyright holder to establish such a license or the absence of a sale." We noted that this rule "accords with . . . our general precedent that fairness dictates that a litigant ought not have the burden of proof with respect to facts, particularly within the knowledge of the opposing party." 

So too here. How Live Nation came to possess Friedman's photographs — and thus whether it had knowledge that the CMI had been removed — is a fact "particularly within" Live Nation's knowledge. It would be unfair to burden Friedman at the summary judgment stage with proving that knowledge with greater specificity than he did. We therefore reverse the district court's decision granting summary judgment to Live Nation on Friedman's CMI claim.

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Stevens v. Corelogic Case

The Photographers allege that CoreLogic's software removed CMI metadata, in violation of 17 U.S.C. § 1202(b)(1), and that CoreLogic distributed images knowing that copyright management information was removed, in violation of 17 U.S.C. § 1202(b)(3). Reviewing de novo the district court's decision to grant summary judgment to CoreLogic, see Perfect 10, Inc. v. Giganews, Inc ., 847 F.3d 657, 665 (9th Cir. 2017), we affirm the grant of summary judgment.

Stevens v. Corelogic, Inc., 899 F. 3d 666, 673 (9th Circ. 2018) Section 1202(b)(3) provides:

'No person shall, without the authority of the copyright owner or the law ... 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' copyright. Id. § 1202(b)(3).)

Section 1202(b)(1) provides:

"No person shall, without the authority of the copyright owner or the law ... intentionally remove or alter any copyright management information ... knowing, or ... having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any" copyright. 17 U.S.C. § 1202(b)(1). Section 1202(b)(3) provides:

"No person shall, without the authority of the copyright owner or the law ... 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" copyright. § 1202(b)(3).

Both provisions thus require the defendant to possess the mental state of knowing, or having a reasonable basis to know, that his actions "will induce, enable, facilitate, or conceal" infringement.

The Photographers have not offered any evidence to satisfy that mental state requirement. Their primary argument is that, because one method of identifying an infringing photograph has been impaired, someone might be able to use their photographs undetected. That assertion rests on no affirmative evidence at all; it simply identifies a general possibility that exists whenever CMI is removed.

As we interpret Section 1202(b), this generic approach won't wash. It is a fundamental principle of statutory interpretation that we must "give effect, if possible, to every clause and word of a statute," Montclair v. Ramsdell , 107 U.S. 147, 152, 2 S.Ct. 391, 27 L.Ed. 431 (1883), "so that no part will be inoperative or superfluous, void or insignificant,"

Corley v. United States , 556 U.S. 303, 314, 129 S.Ct. 1558, 173 L.Ed.2d 443 (2009) ; see also Hibbs v. Winn , 542 U.S. 88, 101, 124 S.Ct. 2276, 159 L.Ed.2d 172 (2004) ; Astoria Fed. Savs. & Loan Ass'n v. Solimino , 501 U.S. 104, 112, 111 S.Ct. 2166, 115 L.Ed.2d 96 (1991). To avoid superfluity, the mental state requirement in Section 1202(b) must have a more specific application than the universal possibility of encouraging infringement; specific allegations as to how identifiable infringements "will" be affected are necessary.

At the same time, as the statute is written in the future tense, the Photographers need not show that any specific infringement has already occurred. Also, recognizing that "nothing is completely stable, no plan is beyond alteration," we have previously observed that statutes requiring knowledge that a future action "will" occur do not "require knowledge in the sense of certainty as to a future act." United States v. Todd , 627 F.3d 329, 334 (9th Cir. 2010). Rather, knowledge in the context of such statutes signifies "a state of mind in which the knower is familiar with a pattern of conduct" or "aware of an established modus operandi that will in the future cause a person to engage in" a certain act. Id. Applying that concept here, we hold that a plaintiff bringing a Section 1202(b) claim must make an affirmative showing, such as by demonstrating a past "pattern of conduct" or "modus operandi", that the defendant was aware or had reasonable grounds to be aware of the probable future impact of its actions.

Our conclusion about the import of the "induce[d], enable[d], facilitate[d], or conceal[ed]" prong is supported by the legislative history of Section 1202. That provision was enacted to implement obligations of parties to the WIPO Copyright Treaty ("WCT") and the WIPO Performances and Phonograms Treaty. See S. Rep. No. 105-190, at 5, 9 (1998). The initial draft of the WCT provision regarding CMI provided:

Contracting parties shall make it unlawful for any person knowingly ... (i) to remove or alter any electronic rights management information without authority; [or] (ii) to distribute, import for distribution or communicate to the public, without authority, copies of works from which electronic rights management information has been removed or altered without authority.

World Intellectual Property Organization [WIPO], Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to Be Considered by the Diplomatic Conference , art. 14(1), WIPO Doc. CRNR/DC/4 (Aug. 30, 1996).

In response to requests from delegates that the provision be modified to require a connection to an infringing purpose, the provision was redrafted as follows:

Contracting Parties shall provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing or, with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention : (i) to remove or alter any electronic rights management information without authority; (ii) to distribute, import for distribution, broadcast or communicate to the public, without authority, works or copies of works knowing that electronic rights management information has been removed or altered without authority.

WIPO Copyright Treaty art. 12, Dec. 20 1996 (emphasis added). The revision thus makes clear that the "induce, enable, facilitate or conceal" requirement is intended to limit liability in some fashion - specifically, to instances in which the defendant knows or has a reasonable basis to know that the removal or alteration of CMI or the distribution of works with CMI removed will aid infringement.

When Congress was considering the WIPO Copyright Treaties Implementation Act - a part of the Digital Millennium Copyright Act ("DMCA") that included the new Section 1202 - the Register of Copyrights emphasized that Section 1202 's provisions "do not apply to those who act innocently. ... Liability for the removal or alteration of information requires the actor to know or have reason to know that his acts 'will induce, enable, facilitate or conceal' infringement." WIPO Copyright Treaties Implementation Act, and Online Copyright Liability Limitation Act: Hearing Before the H. Subcomm. on Courts and Intellectual Property of the H. Comm. on the Judiciary , 105th Cong. 51 (1997) (statement of Marybeth Peters, Register of Copyrights, Copyright Office of the United States).

In short, to satisfy the knowledge requirement, a plaintiff bringing a Section 1202(b)(1) claim must offer more than a bare assertion that "when CMI metadata is removed, copyright infringement plaintiffs ... lose an important method of identifying a photo as infringing." Instead, the plaintiff must provide evidence from which one can infer that future infringement is likely, albeit not certain, to occur as a result of the removal or alteration of CMI.

2. The Photographers Have Failed to Make the Required Affirmative Showing

The Photographers have not offered any specific evidence that removal of CMI metadata from their real estate photographs will impair their policing of infringement. There are no allegations, for example, of a "pattern of conduct" or "modus operandi" involving policing infringement by tracking metadata. Todd , 627 F.3d at 334. Indeed, the evidence presented cuts against any inference that CMI metadata is of any practical significance to the Photographers in policing copyright infringement of their images.

The Photographers have not, for example, averred that they have ever used CMI metadata to prevent or detect copyright infringement, much less how they would do so. Vandel testified that, before this lawsuit began, he had never "looked at any metadata information on any photograph in an MLS system." On the only two occasions Vandel became aware of unauthorized use of his photographs, he learned about the unauthorized use from the real estate agent who commissioned the photographs. The agent saw the image elsewhere and contacted Vandel to ask if he had permitted the use. Stevens similarly testified that he had "[n]ever tried to download a photo off an MLS listing ... and look at its properties, its metadata," that he "d[id]n't think you can pull up metadata off of an MLS listing," and that he "didn't even realize you could click on a picture off the Internet, right-click it, and get metadata off of it." The testimony of both Stevens and Vandel undermines any ostensible relationship between the removal of CMI metadata and their policing of infringement.

Nor have the Photographers brought forward any evidence indicating that CoreLogic's distribution of real estate photographs ever "induce[d], enable[d], facilitate[d], or conceal[ed]" any particular act of infringement by anyone, let alone a pattern of such infringement likely to recur in the future. They identify no instance in which the removal of CMI metadata from any photograph "induce[d], enable[d], facilitate[d] or conceal[ed] an infringement."

*6766 Moreover, a party intent on using a copyrighted photograph undetected can itself remove any CMI metadata, precluding detection through a search for the metadata. So on the record here, one cannot plausibly say that removal by a third party "will" make it easier to use a copyrighted photograph undetected, using "will" in the predictive sense we have indicated.

Because the Photographers have not put forward any evidence that CoreLogic knew its software carried even a substantial risk of inducing, enabling, facilitating, or concealing infringement, let alone a pattern or probability of such a connection to infringement, CoreLogic is not liable for violating 17 U.S.C. § 1202(b)

Do you need a copyright registration certificate in order to file a 17 USC 1202 lawsuit?

Not necessarily.  A plain reading of the DMCA does not establish that a 17 USC 1202 claims is subject to the registration requirement found in 17 U.S.C. § 411(a). Such a requirement pertains to “civil action[s] for infringement of the copyright.”

A DMCA action under Section 17 USC 1202(b) is not an action for infringement, but rather for the improper removal or alteration of CMI.

Moreover, the court in Diamondback held that Section 411(a) need not apply to the DMCA merely because other provisions of Title 17 do. It should be noted that the recent Supreme Court case of Fourth Estate v. Wall-Street.com, did not indicate that registration is required for DMCA actions.

See Diamondback Industries, Inv. v. Repeat Precision, LLC, 2019 WL 5842756 (N.D.Tex., November 7, 2019)

The Diamondback court noted:

"Because copyright registration is not a prerequisite to this action, plaintiff's DMCA claim need not be dismissed for failure to state a claim. Section 1202(b) of the DMCA prohibits, inter alia, "intentionally remov[ing] or alter[ing] any copyright management information" ("CMI") with the knowledge, or "having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title." 17 U.S.C. § 1202(b)(1).

Generally, "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a).

Defendants argue that this requirement applies to DMCA actions and justify their position by asserting that (1) a plain reading of Section 1202(b) of the DMCA establishes that a claim brought thereunder constitutes a civil action for infringement; (2) the provisions of Title 17 of the United States Code, including 17 U.S.C. § 411(a), apply to the DMCA despite its silence as to those provisions; and (3) precedent shows that the registration requirement applies to the DMCA. Doc. 69 at 9-10; Doc. 77 at 6-9. These arguments fail. 

First, a plain reading of the DMCA does not establish that it is subject to the registration requirement found in 17 U.S.C. § 411(a). Such requirement pertains to "civil action[s] for infringement of the copyright." 17 U.S.C. § 411(a). However, a DMCA action under Section 1202(b) is not an action for infringement, but rather for the improper removal or alteration of CMI or the distribution of a work with the knowledge that such CMI has been improperly removed or altered. 17 U.S.C. § 1202(b)(1)-(3).

Although the DMCA does mention "infringement," such infringement is not the subject of the civil action. Instead, the reference to infringement is used to describe the scienter requirement, wherein the defendant must know that the removal or alteration of CMI "will induce, enable, facilitate, or conceal an infringement of any right under this title."

Although a DMCA claim requires the defendant to know of potential infringement, such requirement does not necessitate registration because infringement can occur absent registration. A copyright owner's exclusive rights vest at the time of the creation of the work, and infringement occurs any time those rights are violated, even if registration has not occurred. 17 U.S.C. §§ 102, 106, 501(a); Fourth Estate, 139 S. Ct. at 891 (stating the "the Copyright Act safeguards copyright owners, irrespective of registration, by vesting them with exclusive  rights upon creation of their works and prohibiting infringement from that point forward" and noting that infringement may occur "before a copyright owner applies for registration"). Registration "is not a condition of copyright protection." 17 U..S.C. § 408(a). Therefore, although the DMCA mentions infringement, the plain text does not require registration.

Second, Section 411(a) need not apply to the DMCA merely because other provisions of Title 17 do. Section 411(a)'s terms expressly limit its application to "civil action[s] for infringement of the copyright." 17 U.S.C. § 411(a). Meanwhile, the statute of limitations applies to all civil actions brought "under the provisions of this title," which includes DMCA actions. 17 U.S.C. § 507(b); 17 U.S.C. § 1202(b). The other two provisions to which defendants point, Sections 102 and 106, define when copyright exists and the exclusive rights enjoyed by copyright owners. 17 U.S.C. §§ 102, 106. Like the statute of limitations and unlike the registration requirement, these provisions are general in scope.

Third, the case law cited by defendants does not indicate that registration is required for DMCA actions. The Supreme Court's decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC pertained to what constitutes adequate registration under Section 411(a). 139 S. Ct. at 886. In its  analysis, the Court stated that under Section 411(a), "registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights." Id. at 887. Defendants argue that a DMCA action is a suit "to enforce ownership rights" and that this sentence requires registration in such actions. Doc. 77 at 8. However, three sentences prior, the Court defined the "ownership rights" to which it referred - the "exclusive rights" listed in Section 106, the violation of which constitutes infringement. Fourth Estate, 139 S. Ct. at 887. The Court's opinion in Fourth Estate focuses solely on infringement suits and never mentions the DMCA or the mishandling of CMI.

The one cited case in which a court found that the DMCA requires registration does not provide any analysis in arriving at that conclusion. See Sims v. Viacom, Inc., No. 2:11-cv-0675, 2012 WL 280609, at *4 (W.D. Pa. Jan. 31, 2012). Further, the decision is not binding precedent on this court, and other district courts have made the opposite conclusion. See Med.  Broad. Co. v. Flaiz, No. Civ.A 02-8554, 2003 WL 22838094, at *3 (E.D. Pa. Nov. 25, 2003) ("Nothing in § 1202 of the DMCA suggests that registration is a precondition to a lawsuit."); Gattoni v. Tibi, LLC, 254 F. Supp. 3d 659, 663-64 (S.D.N.Y. 2017); ECIMOS, LLC v. Carrier Corp., No. 2:15-cv-2726-JPM-cgc, 2018 WL 3589106, at *9 (W.D. Tenn. May 13, 2018); Exec. Corp. v. Oisoon, LLC, No. 3:16-cv-00898, 2017 WL 4310113, at *4 (M.D. Tenn. Sept. 28, 2017).

Another district court case cited by defendants, Thron v. HarperCollins Publishers, Inc., did not hold that registration is required in DMCA actions, but rather found that information regarding an invalid registration did not constitute CMI. No. 01CIV.5437(JSR), 2002 WL 1733640, at *1 (S.D.N.Y. July 26, 2002); see also Playboy Enters. Int'l Inc. V. Mediatakeout.com LLC, No. 15 Civ. 7053 (PAE), 2016 WL 1023321, at *5 (S.D.N.Y. Mar. 8, 2016) (stating that "plaintiff's failure to register its copyrighted work is not a bar to a DMCA action" and explaining its prior decision in Thron). Although the information allegedly removed in the present action included an incorrect date, it did not relate to an invalid registration. See Doc. 77 at 8; Doc. 65 at 23.

For the foregoing reasons, the court is not persuaded that registration is required and finds that the motion to dismiss plaintiff's DMCA claim should be denied.

More caselaw:

In another case, Krechmer v. Tantaros, 2018 WL 4044048 (2nd Cir. August 24, 2018) the court held that in order to plead a violation of Section 1202(a), a plaintiff must plausibly allege that a defendant knowingly provided false copyright information and that the defendant did so with the intent to induce, enable, facilitate, or conceal an infringement. This is a double scienter requirement.

Attorney Steve® Tip: It is important if you are filing a lawsuit to allege that Defendant intended to conceal valid copyright management information.

Contact a California photo infringement law firm

We can help plaintiff and defendant clients in photo infringement cases from San Diego, Orange County, Los Angeles, Central California and up to Northern California (San Francisco, Palo Alto, San Jose) and surrounding areas in California.  Vondran Legal® is a leading copyright infringement law firm in the United States.  We have appeared in over 500 federal court litigation cases and have also been retained as a copyright infringement expert.  Our past client reviews speak for our passion for helping clients, both individual and corporate.

Call us at (877) 276-5084 or fill out the contact form and we will reach out to you.