McGucken v. Shutterstock, Inc.

Background

Photographer Elliot McGucken sued Shutterstock, Inc., alleging direct and secondary copyright infringement involving 337 photographs uploaded by Shutterstock contributors without his permission. He also asserted claims under Section 1202 of the Copyright Act concerning false or removed copyright management information, such as author and ownership metadata. After discovery, both sides moved for summary judgment, a procedure that allows judgment without a trial when there is no genuine dispute over a fact important to the outcome. Both parties also moved to exclude the opposing party’s expert testimony.

Shutterstock operates an online image-licensing platform where contributors upload images for review and licensing. The platform automatically removes metadata from uploaded images, creates thumbnails, and places a Shutterstock watermark on images displayed for licensing. McGucken notified Shutterstock about one image in December 2020, later supplied a notice that complied with the Digital Millennium Copyright Act (DMCA), and Shutterstock removed that image from the identified URLs within four days.

DMCA Safe Harbor

The court held that Shutterstock satisfied the requirements for the DMCA’s safe harbor. That protection can shield an online service provider from liability for infringing material stored at a user’s direction when the statutory conditions are met.

The court found that Shutterstock was a qualifying online service provider. It also found that Shutterstock had adopted, informed contributors about, and reasonably implemented a policy for terminating repeat copyright infringers. The court rejected McGucken’s argument that delays in terminating two contributor accounts defeated this requirement.

The court further held that McGucken did not show that image metadata was a “standard technical measure” protected by the DMCA. In particular, he offered no evidence of the required broad agreement among copyright owners and service providers that preserving metadata was such a measure.

The court also found that the images were stored at the direction of contributors. Shutterstock’s review process did not change that conclusion because contributors submitted the images and Shutterstock’s review was limited. The court rejected McGucken’s arguments that Shutterstock’s platform-wide activities or selected curated collections changed this result.

Regarding knowledge and removal, the court held that McGucken’s initial December 2020 email was not a proper DMCA notice because it did not meet the statutory requirements, including the requirement that the notice be made under penalty of perjury. Shutterstock promptly asked for a compliant notice, and then removed the identified image within four days after receiving one. The court also held that Shutterstock was not responsible for lingering, unreported backend thumbnails or for continued availability through independent platforms that used Shutterstock’s application programming interface and failed to refresh their own caches.

The court found no evidence that Shutterstock had the right to control the contributors’ initial infringing conduct or received a financial benefit directly attributable to that conduct in a way that defeated the safe harbor. It also found that Shutterstock had designated an agent to receive infringement notices. The court therefore held that Shutterstock was immune from liability for the copyright infringement covered by the safe harbor.

False Copyright Management Information

The court rejected McGucken’s claim that Shutterstock’s watermark was false copyright management information. It found that the watermark identified Shutterstock as the source or distributor of an image, not as the image’s author or copyright owner. The court also found no evidence that Shutterstock added the watermark with the required intent to induce, enable, facilitate, or conceal infringement. Instead, the evidence showed that Shutterstock used the watermark to prevent unlicensed use.

The court also rejected McGucken’s claim based on Shutterstock’s removal of metadata. Some images did not contain the metadata when uploaded. For the remaining images, McGucken did not provide evidence that Shutterstock removed the metadata knowing, or having reasonable grounds to know, that the removal would encourage, enable, facilitate, or conceal infringement.

Other Motions and Disposition

Because the court did not rely on either party’s expert testimony, it denied both motions to exclude the experts as moot. It also denied Shutterstock’s letter-motion for oral argument as moot.

Judge Jennifer H. Rearden granted Shutterstock’s motion for summary judgment, denied McGucken’s motion for summary judgment, denied both motions to exclude expert testimony as moot, and denied Shutterstock’s letter-motion for oral argument as moot.