GETTY IMAGES FENDS OFF CMI CLAIM

GETTY IMAGES FENDS OFF CMI CLAIM IN SOURCE CREDIT RELYING ON EQUITABLE ESTOPPELZuma Press, Inc. V. Getty Images (US), Inc., No. 16 CIV. 6110, 17 CIV. 5832, 2018 WL 4830086 (S.D.N.Y. Oct. 4, 2018)by Nancy Wolff, DMLA CounselGetty Images successfully had a case against it dismissed by a federal judge in the Southern District of New York in which another image distributor, Zuma Press accused it of copyright infringement and of altering copyright management information by not including its information in the source credit of the digital content and sought substantial statutory damages. Getty Images prevailed on both claims by using a defense called “equitable estoppel”. This defense has to do with fairness, and prevents a party from claiming they suffered an injury at the hands of another when the first party’s own activity mislead the second party into causing the injury. The court further noted that Getty Images lacked the necessary statutory intent for a violation of integrity of copyright management information.Factual Background: Zuma Press sued Getty Images for licensing on its website images owned by Zuma Press, and for intentionally altering the images’ copyright attribution information. The Digital Millennium Copyright Act includes Section 1202, which provides damages separate from damages awarded for copyright infringement if a copyright owner enacts measures to reduce infringement by including “copyright management information” (CMI) with its content and a third party intentionally removes or provides false CMI to cause or to facilitate or conceal further infringement. CMI is defined broadly in the Act and includes most identifying information about ownership and title.The saga begins in 2010 when Zuma made a deal with Corbis granting Corbis the right to represent Zuma’s library. When Zuma found out that NewSport, another press agency, was receiving a better royalty rate from Corbis, Zuma entered into a separate agreement with NewSport, and started submitting its images to Corbis through them. By this arrangement, the Zuma and NewSport collections were mixed, and the images received by Zuma came to be identified as NewSport’s in the metadata’ “credit” line. Zuma continued to be referenced in the free text (or “caption”) portion of the image. In 2012, Zuma decided to stop feeding the images to Corbis through NewSport, and wanted those images to be swapped to its own Zuma account. Zuma made several requests to NewSport through 2013 to intercede with Corbis about the switch, but to no avail. Then, in 2016, Corbis sold its image portfolio to Unity Glory, which entered into an agreement through VCG, an affiliate to distribute Corbis content in the U.S. with Getty Images.  Thereafter, Getty Images reached out to all the photographers and image libraries that had contributed their photos to Corbis with the aim of entering into agreements directly with them, and struck a distribution deal with NewSport. The NewSport collection was migrated to Getty Images’ database, with Getty Images software failing to detect Zuma in the free-text portion of the images, and only recognizing NewSport as the source in the metadata credit. Getty Images appended its own copyright management information to the images, but the images contained various anomalies, and in some cases, unnoticed by Getty’s software, still referenced Zuma.Getty Images began offering these images to customers on its website, believing it had the right to distribute them. Zuma became aware of this and contacted Getty Images requesting it take down the images. Getty promptly complied with the request, but Zuma brought the infringement action for both direct infringement and for violation of Section 1202, the altering or removal of CMI.Decision:The court concluded that Zuma was “estopped” (prevented) from asserting these claims because it was aware all along that the images had become part of Getty Images’ library under circumstances that lead Getty Images to believe it was lawfully permitted to license them. The circumstances of how the images reached Getty Images were of fundamental importance in proving Getty Images’ defense, because what was at issue for both claims was  Getty Images’ awareness of the origin of the images, and whether it had intentionally modified the images’ metadata.To establish an equitable estoppel defense one must prove the following: (1) the party to be estopped must know the facts; (2) he must intend that his conduct shall be acted on or must so act that the defendant has a right to believe that it is so intended; (3) the latter must be ignorant of the true facts; and (4) he must rely on the plaintiff’s conduct to his injury.”In its analysis, the court looked at several pieces of evidence in the written communication among the parties, and found that, based on the facts above; Getty Images’ defense was valid. Getty Images “could not reasonably have been expected to know, that . . . it was also displaying images originating from photographs Zuma represented,” while Zuma was aware that the images were comingled with NewSport’s in the Corbis collection, and that the information in the metadata was misleading. Zuma, the court stated, “has nobody to blame but itself for how Getty came to possess these images.”Takeaway: Metadata is not a robust form of digital information, and many software applications used to ingest images for distribution may unintentionally alter fields, or the fields for source information may not have enough character to identify the copyright owner, particularly when images are often distributed and sub-distributed by several companies whose names will be associated with the images metadata. While adding a Section 1202 copyright claim for altering copyright management information in the metadata fields may seem an attractive claim for a plaintiff to add to a copyright infringement action, particularly when there are statutory damages (between $2,500 and $25,000 for each act), simply omitting ownership in a field is insufficient to prove one’s claim, as the statute requires that the infringer “knowingly and with the intent to induce, enable, facilitate, or conceal infringement” provide, distribute or import false CMI. Intent is an essential element of any claim, and it may be difficult for a plaintiff to prove intent  considering that ingestion of a large quantity of images into any image library database must be automated through a script written for a computer, as it would be impossible and impractical to view each imageBecause of the ease with which the images’ metadata may become distorted, removed or altered it is recommended to include language in distribution and contributor agreements acknowledging such occurrence may happen and obtain consent in order to avert a claim under Section 1202 as the language requires the removal or alteration to be without authority of the owner.This case is also a lesson in fairness. Courts will take notice if it appears that someone has attempted to “game the system”, or if the party’s own conduct contributes to the wrongful activity. That is where the equitable doctrine of estoppel comes in and the court will consider the fairness of such action.PostscriptAs the prevailing party in this copyright matter, Getty Images recently asked the court to recover its $2.87 million in attorney fees and costs against Zuma, stating that the case never should have been brought, and never litigated through summary judgment.