Victor Elias Photography, LLC v. Ice Portal, Inc. ( 2022 )

USCA11 Case: 21-11892 Date Filed: 08/12/2022 Page: 1 of 24
[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 21−11892
____________________
VICTOR ELIAS PHOTOGRAPHY, LLC,
Plaintiff-Appellant,
versus
ICE PORTAL, INC.,
Defendant-Appellee.
____________________
Appeal from the United States District Court
for the Southern District of Florida
D.C. Docket No. 0:19-cv-62173-RS
____________________
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2 Opinion of the Court 21−11892
Before NEWSOM and MARCUS, Circuit Judges, and COVINGTON,∗
District Judge.
COVINGTON, District Judge:
In 2016, commercial photographer Victor Elias discovered
infringing uses of his copyrighted images on the internet. Instead
of pursuing the infringing parties, Mr. Elias brought a lawsuit
against Ice Portal, Inc. – now a division of Shiji (US), Inc. (“Shiji”) –
which acts as an intermediary between the hotels that licensed Mr.
Elias’s photographs and online travel agents (“OTAs”) like Expedia
and Travelocity. 1 In optimizing the photographs for use by the
OTAs, Shiji’s software allegedly removed certain copyright-related
information that Mr. Elias had embedded within the metadata of
the photographs. Mr. Elias, through his company Victor Elias
Photography, LLC (“Elias LLC”), claimed that Shiji therefore
violated the Digital Millennium Copyright Act (“DMCA”).
The district court correctly granted summary judgment to
Shiji because Elias LLC did not show an essential element of its
claim – namely, that Shiji knew, or had reasonable grounds to
∗Honorable Virginia M. Covington, United States District Judge for the
Middle District of Florida, sitting by designation.
1 During the relevant time periods, ICE Portal, Inc. was the company acting
as the intermediary between the hotels and OTAs. Shiji (US), Inc. acquired Ice
Portal in February 2019, at which time ICE Portal merged into Shiji and
became a division of the larger company. This opinion will refer to the
companies collectively as Shiji.
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know, that its actions would induce, enable, facilitate, or conceal a
copyright infringement. Accordingly, we affirm.
I
A. Mr. Elias’s photographs and their CMI
Mr. Elias is a professional photographer who specializes in
taking photographs of hotels and resorts throughout the United
States, Mexico, and the Caribbean. He is the sole owner and
operator of Elias LLC. Mr. Elias registers his photographs with the
Copyright Office, and Elias LLC holds those copyrights by written
assignment.
Between 2013 and 2017, Mr. Elias took photographs for
hotels owned by Starwood Hotels & Resorts Worldwide, Inc.
(“Starwood”) 2 and Wyndham Hotels & Resorts (“Wyndham”)
(collectively, the “Hotels”). Mr. Elias claims that the following
information was inserted into the metadata within the image files
that he sent to the Hotel properties:
Creator Victor Elias
Creator’s Job Title Owner/Photographer
Copyright Notice @Victor Elias
Creator’s Contact Info USA, 5301 N. Commerce Ave.
Suite 4, 805-265-5421
Rights Usage Terms Rights Managed
2 Starwood merged with Marriott International, Inc. in September 2016. See
Starwood Acquisition & Historical Information, available at
https://marriott.gcs-web.com/starwood.
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This information was embedded in IPTC format3 in all the images
at issue.
This information is commonly referred to as copyright
management information (“CMI”). 4 Because CMI is embedded
within the image file, an individual must make several “clicks” on
the file to access this information. Specifically, the person viewing
the file would have to right-click on the image file and then open
the “properties” or “more info” field to access the information.
After Mr. Elias took the photographs at issue, Elias LLC
would extend broad licenses to the Hotels, allowing them to use
the photographs to promote their properties in unlimited
quantities, for an unlimited time, and in any format – without a
restriction on how the photographs’ CMI could be manipulated or
removed. 5 The Hotels were licensed to use the photographs at
3 IPTC format is named for the International Press Telecommunications
Council, which developed metadata standards to facilitate the exchange of
news, and typically includes the title of the image, a caption or description,
keywords, information about the photographer, and copyright restrictions.
See Stevens v. Corelogic, Inc., 899 F.3d 648, 671 (9th Cir. 2018).
4 CMI metadata is specifically copyright identifying information manually
added to the image by the photographer or editor. Shiji also refers to this
information as “extended attributes.” At least in the context of this case,
“extended attributes” and “CMI” are interchangeable terms.
5 Elias LLC claims that it reserved this right by including a disclaimer in the
agreements with the Hotels that it reserved “[a]ll rights not specifically granted
in writing, including copyright” as the “exclusive property of [Elias LLC].” But
Elias LLC does not explain how this language prevents the Hotels (or their
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issue to market their properties on their own websites and on third-
party travel booking websites or OTAs. The parties do not dispute
that, as they were displayed on the Hotels’ own websites, the at-
issue photographs included Elias LLC’s CMI embedded within the
metadata.
B. Shiji’s role
Shiji acts as an intermediary between hotel chains, like
Starwood and Wyndham, and OTAs by receiving copies of
photographs from the hotels and making them available to OTAs.
From 2013 to 2018, Shiji housed approximately 1.5 million different
hotel images in its system. During the relevant time periods,
Starwood and Wyndham contracted with Shiji to make images for
thousands of their properties available to OTAs. Of the more than
9,400 images that Shiji processed for the Hotels, 220 were taken by
Elias.
Between 2013 and 2018, Shiji processed photos collected
from the Hotels in the following manner. First, Shiji’s software
agents) from removing CMI. Moreover, Elias LLC’s argument that it reserved
this right by requiring proper attribution of the photographs also does not
establish that Elias LLC desired to preserve its CMI. Finally, while Elias LLC
cites the license for the Marriott Casa Magna Resort, which provided that “[a]ll
metadata information included within the images shall remain intact,” Shiji
argues that Elias LLC slyly inserted that term into a new version of the licenses
sent to Marriott upon request, without revealing that the term did not appear
in the original licensing agreement. Elias LLC does not respond to this
argument in its reply brief. And, in any event, Shiji never received files from
Marriott or made images of Marriott hotel properties available to OTAs.
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6 Opinion of the Court 21−11892
would download copies of image files from the Hotels’ respective
servers and store them on Shiji’s server. Each image file provided
to Shiji came with a separate spreadsheet file containing pertinent
information about the image that would be displayed on the OTA
websites, such as room type or a caption. After receiving the image
files, Shiji’s software would then convert the files into JPEG format,
making copies of the photos in various industry-standard sizes. The
conversion to JPEG format optimized the image files for faster
display on OTA websites, but it came at a cost – sometimes the
metadata on the image file, such as the CMI, would be erased.
Finally, the JPEG copies of the photographs would be saved on
Shiji’s server, along with the accompanying spreadsheet file, and
made available to OTAs.
C. Mr. Elias discovers photographs missing his CMI
Protecting his copyrights is important to Mr. Elias. He
claims that he embedded the CMI within his photographs because
the CMI’s text is fully searchable, allowing him to patrol the
internet and find instances of copyright violations. As the district
court succinctly summarized, Elias employs six methods by which
he searches for his images and ensures that his copyright is not
being violated:
(1) Elias visits OTA websites, types in the names of
locations where he has shot photos of a hotel, then
looks for the hotels he shot, and then looks for the
images; (2) Elias Googles the hotel name plus “Victor
Elias”; (3) Elias uses ImageRights software, which
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searches for visual image matches on the internet; (4)
Elias uses TinEye which searches for copies of images
he uploads; and (5) Elias uses Google images to search
for copies of the photos. According to Elias, he also
uses Google to search using keywords such as “Victor
Elias” and “Victor Elias Photography,” which can
result in the return of pages containing keywords in
the embedded metadata.
In September 2016, using the methods described above, Mr.
Elias discovered unauthorized copies of his photographs posted on
non-party, non-OTA websites without his CMI. Although some of
these photographs included visible credits, the photographs
credited someone other than Mr. Elias. He admits that he has no
actual knowledge of where these non-party websites obtained the
images. Mr. Elias then discovered that on OTA websites, his CMI
was stripped out of the images at issue.
D. Procedural History
Based on the foregoing facts, Elias LLC filed suit against Shiji
in August 2019. In its amended complaint, it alleged in a single
count that Shiji violated two sections of the DMCA – 17 U.S.C. §§
1202(a) and 1202(b) – through its stripping of the CMI in Elias
LLC’s copyrighted photos. 6
6 On appeal, Elias LLC does not present any arguments pertaining to its
Section 1202(a) claim. It has therefore waived any such argument, and we will
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8 Opinion of the Court 21−11892
Following discovery, Shiji moved for summary judgment,
and Elias LLC sought partial summary judgment. The district court
ruled in favor of Shiji, finding that Elias LLC could not satisfy the
“second scienter requirement” of the statute, a concept we will
explain further below. Relying on the Ninth Circuit Court of
Appeals’ decision in Stevens v. Corelogic, Inc., 899 F.3d 666 (9th
Cir. 2018), the district court held that Elias LLC could not satisfy
the second scienter requirement because it had not established that
Shiji “knew or had reason to know that its actions would induce,
enable, facilitate, or conceal infringement” and had failed to
present any evidence “demonstrating that [Shiji] was aware or had
reasonable grounds to be aware of the probable future impact of
its actions.”
The district court reasoned that Elias LLC had failed to make
its showing for two reasons. First, it had not shown that Shiji’s
removal of CMI “is the reason, or even the likely reason, for the
infringing use of the images [Mr. Elias] has found on the internet.”
Second, Elias LLC had not shown that Shiji was even aware that
searching for terms embedded in the extended attributes was a
method used by copyright holders to find infringement on the
internet. The district court also dismissed Elias LLC’s argument
that a prior arbitration gave Shiji the requisite awareness because
(1) it had failed to show that “mere familiarity” with the DMCA
focus on the Section 1202(b) claim. See Lind v. United Parcel Serv., Inc., 254
F.3d 1281, 1283 n.2 (11th Cir. 2001).
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21−11892 Opinion of the Court 9
gave Shiji reason to know that removal of CMI from the photos it
copied would induce, enable, facilitate, or conceal infringement;
and (2) the arbitration panel ruled in Shiji’s favor, finding that the
other party “had not shown that [Shiji’s] removal of CMI would
result in infringement.”
Because the district court concluded that Elias LLC could
not, as a matter of law, show that Shiji knew, or had reasonable
grounds to know, that its actions would “induce, enable, facilitate,
or conceal infringement,” the court entered summary judgment in
favor of Shiji. This appeal followed.
II
We review a district court’s grant of summary judgment de
novo, employing the “same legal standards that bound the district
court.” Bonanni Ship Supply, Inc. v. United States, 959 F.2d 1558,
1561 (11th Cir. 1992).
Summary judgment is proper where “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is
“material” only if it has the potential to affect the outcome of the
case, and a dispute is “genuine” only if a reasonable jury could
return a verdict for the non-moving party. Shaw v. City of Selma,
884 F.3d 1093, 1098 (11th Cir. 2018). When the non-moving party
has failed to prove an essential element of its case, summary
judgment is appropriate. Am. Fed’n of Labor & Congress of Indus.
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10 Opinion of the Court 21−11892
Orgs. v. City of Miami, 637 F.3d 1178, 1186–87 (11th Cir. 2011)
(citing Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)).
III
A. The DMCA and Section 1202(b)’s second
scienter requirement
Congress enacted the DMCA in 1998 “to strengthen
copyright protection in the digital age.” Mango v. BuzzFeed, Inc.,
970 F.3d 167, 170–71 (2d Cir. 2020). The DMCA provision pertinent
to this case provides as follows:
(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, [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 . . . having reasonable grounds to know,
that it will induce, enable, facilitate, or conceal an
infringement of any right under this title.
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17 U.S.C. § 1202(b). 7
Interpretation of Section 1202(b) is an issue of first
impression in this Circuit. We start, as always, with the language
of the statute. Harris v. Garner, 216 F.3d 970, 972 (11th Cir. 2000)
(en banc) (“We begin our construction of [a statutory provision]
where courts should always begin the process of legislative
interpretation, and where they should often end it as well, which is
with the words of the statutory provision.”). If the statute’s
language is plain, then the sole function of the court is to enforce
the statute according to its terms. Gonzalez v. McNary, 980 F.2d
1418, 1420 (11th Cir. 1993). A statute should be construed to give
effect to all its provisions, “so that no part of it will be inoperative
or superfluous, void or insignificant.” Calzadilla v. Banco Latino
Internacional, 413 F.3d 1285, 1287 (11th Cir. 2005).
By its plain terms, the statute requires proof that the
defendant knew, or had reasonable grounds to know, that its
conduct “will” induce, enable, facilitate, or conceal an
infringement. Use of the word “will” indicates a degree of
likelihood or certainty. See Spokane Cnty. v. Dep’t of Fish &
Wildlife, 430 P.3d 655, 662 (Wash. 2018) (canvassing multiple
dictionaries for definitions of the term “will,” and explaining that it
“can be a statement of future tense, of strong intention or assertion
about the future, or a probability or expectation about something,”
7 The statute also defines “copyright management information,” and Shiji
does not contest that the CMI here falls within the statutory definition.
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although it can also mean “inevitability” or “probability” (citations
and quotation marks omitted)). The statute does not state that a
violation occurs if a defendant knows, or has reason to know, that
its actions “may” or “might” enable infringement. As we explain
further below, the statute requires more than that.
To assist in interpreting the statute, we may also look to the
opinions of our sister Circuits. The Second Circuit has held that, to
establish a violation of Section 1202(b)(3), a plaintiff must prove:
(1) the existence of CMI in connection with a copyrighted work;
and (2) that a defendant “distribute[d] . . . works [or] copies of
works”; (3) while “knowing that copyright management
information has been removed or altered without authority of the
copyright owner or the law”8; and (4) while “knowing or . . . having
reasonable grounds to know” that such distribution “will induce,
enable, facilitate, or conceal an infringement.” Mango, 970 F.3d at
171. The last two of these elements comprise a “so-called ‘double-
scienter requirement.’” Id. “[T]he defendant . . . must have actual
knowledge that CMI ‘has been removed or altered without
authority of the copyright owner or the law,’ as well as actual or
constructive knowledge that such distribution ‘will induce, enable,
facilitate, or conceal an infringement.’” Id. (quoting 17 U.S.C. §
1202(b)(3)); see also Stevens, 899 F.3d at 673 (explaining that both
8 Shiji maintains that it did not intentionally or knowingly remove the CMI
from the photographs. We need not address this first scienter requirement
because we can affirm the district court’s grant of summary judgment for
failure to demonstrate the second scienter requirement.
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Section 1202(b)(1) and (3) “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”).
We agree with our sister Circuits’ interpretation of the plain
language 9 of Section 1202(b)(1) and (3) and with their formulation
of the scienter requirement necessary to prove a violation thereof.
As the Ninth Circuit explained in Stevens:
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.
...
[W]e 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 [of] or had
reasonable grounds to be aware of the probable
future impact of its actions.
Stevens, 899 F.3d at 674.
9 The Ninth Circuit in Stevens cogently explained why its interpretation of the
statute is also supported by the legislative history of Section 1202. See Stevens,
899 F.3d at 674–75. We need not repeat that legislative history here. See
Harris, 216 F.3d at 976 (explaining that “[w]hen the import of words Congress
has used is clear . . . we need not resort to legislative history”).
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Elias LLC urges this Court to adopt a standard by which a
defendant that knowingly removes CMI without consent can be
held liable so long as the defendant knows, or has reasonable
grounds to know, that its actions “make infringement generally
possible or easier to accomplish.” By contrast, Shiji argues, as the
district court held, that the defendant must know, or have
reasonable grounds to know, that removing CMI would likely lead
to future infringement.
The Ninth Circuit in Stevens, facing a similar fact pattern to
the one now before us, rejected the statutory interpretation
favored by Elias LLC. The plaintiffs there, also photographers
whose CMI had allegedly been removed by an intermediary
software provider, argued that “because one method of identifying
an infringing photograph has been impaired, someone might be
able to use their photographs undetected.” 899 F.3d at 673
(emphasis in original). The court explained that such a general
approach to statutory interpretation “won’t wash.” Id. Citing the
text of the statute and the legislative history of Section 1202, the
Ninth Circuit concluded that plaintiffs 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.” Id. at 675.
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B. Whether Shiji knew, or had reasonable grounds to know,
that its actions would induce, enable, facilitate, or conceal
infringement
Before the district court and on appeal, Elias LLC points to
three pieces of evidence that, it claims, create a genuine dispute of
material fact as to whether Shiji knew or had reason to know that
its actions “will induce, enable, facilitate, or conceal infringement”
of copyrighted works. We examine each in turn.
1. The Leonardo arbitration
In urging us to reverse the district court’s grant of summary
judgment, Elias LLC’s principal piece of evidence is a 2016
arbitration proceeding between Shiji and a competitor in the OTA
photo distribution business, Leonardo Worldwide Corporation.10
The dispute began when two of Leonardo’s clients were looking to
switch photo management services to Shiji (at the time, ICE
Portal). In the arbitration, Leonardo accused Shiji of corporate
infiltration and theft. It claimed that Shiji improperly accessed
Leonardo’s image database, downloaded multiple images from the
database without Leonardo’s consent, processed those images
through Shiji’s own software (thereby scrubbing the images of CMI
inserted by Leonardo), and then re-published the images on Shiji’s
10 The record on appeal included an interim dispositive order issued by the
arbitration panel and certain deposition excerpts, but no other underlying
evidence. Thus, we will present the facts and holdings as set forth in the
arbitration order.
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own website for financial gain. According to Leonardo, Shiji’s
actions of removing CMI from the images or distributing the
images knowing they were cleansed of CMI violated Section
1202(b) of the DCMA because they “induced, enabled, facilitated,
or concealed [Shiji’s] infringement of the copyrighted images.”
Importantly, the DMCA claim rested on Leonardo’s insertion of its
own CMI into images that were owned by third-party hotels, not
Leonardo.
The arbitration panel dismissed the DMCA claim on
multiple grounds: (1) “Leonardo has not shown the essential
ingredient of a DMCA claim that any allegedly improper actions
regarding CMI would result in an infringement of a copyright”; (2)
the panel construed Section 1202(b) as requiring that a DMCA
claimant be both the owner of the copyright and the party who
inserted the wrongly removed CMI, and Leonardo was not both
because it was not the copyright owner; (3) Shiji’s removal of
Leonardo’s CMI did not result in an infringement of any hotel
copyrights; and (4) Leonardo lacked standing because the DMCA
is intended to protect copyright holders that have employed CMI,
and Leonardo had no copyright in the stolen images.
According to Elias LLC, Leonardo’s claims in the arbitration
“put [Shiji] on notice and imbued [Shiji] with the necessary mental
state to violate § 1202 in the future where, as here, [Shiji’s]
metadata stripping system was challenged by [a] copyright owner.”
In other words, while Leonardo’s lack of copyright ownership may
have left its DMCA claim dead in the water, it was reasonably
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foreseeable to Shiji that another litigant (who is a copyright owner)
could assert similar claims against Shiji in the future. This is a
tempting inference to make, but it is insufficient to raise a genuine
issue of material fact as to the second scienter requirement for
several reasons.
First, the facts of the Leonardo arbitration are
distinguishable. There, Shiji went farther than simply running
images through its automated software and making those
optimized images available on its server. Rather, it allegedly
accessed, knowingly and without permission, a competitor’s
database of copyrighted images, put those images through the
scrubber, and then re-published them for direct financial gain.
Therefore, “Leonardo allege[d] that [Shiji’s] actions induced,
enabled, facilitated, or concealed [Shiji’s own] infringement of the
copyrighted images.” (emphasis added). The Leonardo arbitration
had nothing to do with whether Shiji’s role as an intermediary
image optimizer might induce or enable infringement by a third
party.
Second, and more importantly, the record before us does
not indicate that the Leonardo arbitration adduced any facts that
would give Shiji reason to know that its software’s effects on CMI
would make copyright infringement “likely, albeit not certain” to
occur. At most, the 2016 Leonardo arbitration gave Shiji
knowledge that its software was scrubbing CMI from some of the
extended attributes of the images – and, in fact, different extended
attributes than the ones at issue here. But there is no evidence that
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Shiji learned, for example, that copyright owners routinely rely on
embedded CMI to police infringements of their works on the
internet or that would-be infringers prefer to utilize images from
OTAs because they have already been cleansed of CMI.
Third, it may have been reasonable for Shiji to presume, in
the wake of the Leonardo arbitration, that the next DMCA lawsuit
it faced would come from a copyright owner. But it does not follow
that Shiji must have also known that it was engaging in conduct
that violated the law. We do not hold here that prior litigation or
arbitration of a DMCA claim can never give a defendant the
requisite knowledge under Section 1202(b). We limit our holding
to an affirmation of the district court’s conclusion that Leonardo’s
particular accusations in this case did not give Shiji reasonable
grounds to know that its software’s removal of CMI, and the
subsequent distribution of photographs stripped of CMI, would
induce, enable, facilitate, or conceal the infringement of Elias
LLC’s copyrighted works.
For these reasons, the Leonardo arbitration fails to create a
genuine issue of material fact as to whether Shiji knew, or had
reasonable grounds to know, that its actions of stripping CMI and
distributing those stripped images would “induce, enable, facilitate,
or conceal an infringement.” See Stevens, 899 F.3d at 676 (“Because
the [plaintiffs] have not put forward any evidence that [the
defendant] knew its software carried even a substantial risk of
inducing, enabling, facilitating, or concealing infringement, let
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alone a pattern or probability of such a connection to infringement,
[the defendant] is not liable for violating [the DMCA].”).
2. Mr. Elias’s purposeful insertion of CMI into images
Elias LLC claims that, unlike the photographer-plaintiffs in
Stevens, Mr. Elias did use the CMI contained within the images’
extended attributes to police copyright infringement on the
internet. This also fails to clear the summary judgment bar.
There is no indication in the record that Shiji knew at the
relevant time that copyright owners use CMI in this manner. Elias
LLC therefore cannot show that Shiji knew or had reason to know
that removal of CMI could conceal an infringement. And Elias LLC
cannot explain how it could police copyright infringement if an
infringer can just as easily remove CMI metadata from an image as
it could download an image from an OTA website. See Stevens,
899 F.3d at 676 (explaining that “a party intent on using a
copyrighted photograph undetected can itself remove any CMI
metadata, precluding detection through a search for the metadata.
. . . [Thus,] one cannot plausibly say that removal by a third party
‘will’ make it easier to use a copyrighted photograph undetected”).
Elias LLC argues that the district court read requirements
into Section 1202(b) that do not exist – namely, that it prove
“keyword searches” are an effective method for finding
infringement and/or that Shiji be aware that copyright owners will
search for keywords embedded in the metadata to find
infringement on the internet. Elias LLC misunderstands the district
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court’s order. The district court did not impose additional, extra-
statutory requirements; rather, it was explaining why Elias LLC’s
method of proving knowledge was ineffective. Similarly, neither
the district court nor the Ninth Circuit imposed an additional
requirement that the plaintiff show evidence of a pattern of
conduct or modus operandi. Consistent with Stevens, the district
court explained that demonstrating past patterns of conduct or
modus operandi are examples of ways in which plaintiffs can meet
their burden of proof. See Stevens, 899 F.3d at 675 (“There are no
allegations, for example, of a ‘pattern of conduct’ or ‘modus
operandi’ involving policing infringement by tracking metadata.”).
Elias LLC could have provided different evidence to show that Shiji
possessed the requisite level of knowledge to satisfy the second
scienter requirement, but it did not.
3. Instances of infringement on the internet
According to Elias LLC, Shiji allegedly has a modus operandi
of removing a photographer’s CMI “knowing that CMI [being
removed] has likely directly resulted in infringement of the Elias
Images.” In support of this argument, Elias LLC pointed to the
infringing images that Mr. Elias found on non-party websites that
had been stripped of his CMI.
There is a fundamental problem with this argument – there
is no evidence linking Shiji’s actions of removing the photographs’
CMI with the instances of infringement Mr. Elias uncovered on the
internet. See Stevens, 899 F.3d at 675 (explaining that to prevail, a
plaintiff must “provide evidence from which one can infer that
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future infringement is likely, albeit not certain, to occur as a result
of the removal or alteration of CMI” (emphasis added)). Elias LLC
argues that the at-issue photographs on the OTA websites have
been stripped of CMI, and the infringing images he found on non-
party websites have also been stripped of CMI; therefore, the
infringing parties must have pulled the images from OTA websites.
But this argument rests on speculative and unsupported
assumptions. For example, the argument presumes that infringing
parties would go to an OTA website (instead of the Hotels’ or Elias
LLC’s own website) to copy the image. It also presumes that an
infringing party would download the image, as opposed to taking
a screenshot or screengrab11 of the image. Yet nothing in the
record substantiates these inferences. For example, Mr. Elias
admitted that he did not know from which website the third-party
infringers copied the images. It is also unclear how the infringing
parties copied the images – anyone with a smart phone could
simply take a screenshot of the photograph from a website, which
process inherently does not preserve the photograph’s embedded
CMI. Similarly, Mr. Elias acknowledged that unscrupulous
infringers could easily remove CMI themselves.
Here, Elias LLC produced evidence, essentially, that his
CMI-cleansed photographs appeared in at least two places on the
11 A screengrab or screenshot is essentially a digital picture of the image on
the screen. When an individual takes a screenshot of the picture, the metadata
of the underlying picture is not carried through with the screenshot.
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22 Opinion of the Court 21−11892
internet: OTA websites and certain non-party websites that are
unaffiliated with the OTAs. We do not believe that Congress
meant to impose liability under the DMCA based on such a
tenuous connection. See Stevens, 899 F.3d at 673 (rejecting liability
when an infringer “might” be able to use copyrighted works
undetected because such an assertion “simply identifies a general
possibility that exists whenever CMI is removed”). The district
court was correct to grant summary judgment in the face of such
speculation. See Josendis v. Wall to Wall Residence Repairs, Inc.,
662 F.3d 1292, 1318 (11th Cir. 2011) (“At the summary judgment
stage, such ‘evidence,’ consisting of one speculative inference
heaped upon another, [is] entirely insufficient.”).
Elias LLC argues that this reasoning requires a Section
1202(b) plaintiff to show a specific and identifiable infringement.
Not so. What the statute requires is a showing that a defendant
took certain actions, such as wrongly removing CMI or distributing
images wrongly scrubbed of CMI, (1) knowing that the CMI has
been wrongly removed or altered, and (2) knowing or having
reason to know that such removal or distribution “will induce,
enable, facilitate, or conceal an infringement.” See 17 U.S.C. §
1202(b)(3); see also Mango, 970 F.3d at 171 (setting forth the
elements of a Section 1202(b)(3) claim).
What’s more, we agree with the Ninth Circuit that the
statute’s use of the future tense does not require a plaintiff to show
that any specific infringement has already occurred and does not
“require knowledge in the sense of certainty as to a future act.”
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Stevens, 899 F.3d at 674 (citation omitted) (emphasis added). Elias
LLC is thus incorrect that the district court required it to show that
Shiji’s CMI removal “be directly linked to a particular
infringement.” Elias LLC chose to frame its DMCA claim in terms
of proving that actual infringement occurred (and therefore that
infringement was allegedly induced or enabled). We, and the
district court before us, therefore, grapple with the evidence
presented by Elias LLC to determine whether Shiji was the inducer
or enabler. Elias LLC cannot make that showing because the
evidence indicates that the infringing parties could have purloined
these images from any number of sources, and Elias LLC has
identified no evidence indicating that Shiji’s distribution of these
photographs ever “induce[d], enable[d], facilitate[d], or conceal[ed]
an infringement.”
In short, the statute’s plain language requires some
identifiable connection between the defendant’s actions and the
infringement or the likelihood of infringement. To hold otherwise
would create a standard under which the defendant would always
know that its actions would “induce, enable, facilitate, or conceal”
infringement because distributing protected images wrongly
cleansed of CMI would always make infringement easier in some
general sense. See Stevens, 899 F.3d at 673, 674 (finding that a mere
showing of CMI removal, leading to the possibility that an infringer
could use the photos undetected, is insufficient to meet Section
1202(b)’s second scienter requirement because “it simply identifies
a general possibility that exists whenever CMI is removed” and
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24 Opinion of the Court 21−11892
“Section 1202(b) must have a more specific application than the
universal possibility of encouraging infringement”). This reading
would effectively collapse the first and second scienter
requirements. Congress enunciated the double scienter
requirement for a reason, and we must interpret the statute to
effectuate that intent. See CBS Inc. v. PrimeTime 24 Joint Venture,
245 F.3d 1217, 1222 (11th Cir. 2001) (“The rule is that we must
presume that Congress said what it meant and meant what it said.”
(quotation marks omitted)).
IV
For the reasons stated, we conclude that the district court
properly granted summary judgment to Shiji on Elias LLC’s claim
under the DMCA. Elias LLC did not meet its burden of coming
forward with sufficient evidence demonstrating Section 1202(b)’s
second scienter requirement, and judgment in Shiji’s favor was
therefore appropriate. Accordingly, we affirm.
AFFIRMED.