Victor Elias Photography, LLC v. Ice Portal, Inc.
43 F.4th 1313
11th Cir.2022Background
- Victor Elias (through Elias LLC) is a commercial photographer who embedded copyright management information (CMI) in IPTC metadata of hotel photos and assigned copyrights to Elias LLC.
- Elias LLC granted broad licenses to hotels to use the photos on hotel websites and OTAs; some license language did not meaningfully preserve metadata rights.
- Shiji (formerly ICE Portal) acted as an intermediary, downloading hotel images, converting them to web-optimized JPEGs for OTAs, and sometimes stripping embedded metadata (CMI) during conversion.
- Elias discovered his photos on OTA and other third-party sites without his embedded CMI and sued Shiji under 17 U.S.C. § 1202(b) for removal/distribution of CMI that allegedly would induce/enable/facilitate/conceal infringement.
- The district court granted summary judgment for Shiji, concluding Elias LLC failed to prove §1202(b)’s second scienter requirement (that Shiji knew or had reasonable grounds to know its actions would "will" induce/enable/facilitate/conceal infringement); the Eleventh Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Elias proved §1202(b)(3)’s second scienter — that Shiji knew or had reasonable grounds to know its removal/distribution of CMI "will" induce/enable/facilitate/conceal infringement | Elias: prior Leonardo arbitration, Elias’s routine use of CMI to police infringement, and appearance of CMI-free infringing copies create a genuine dispute that Shiji knew removal would likely cause infringement | Shiji: no evidentiary link between its CMI-stripping and actual infringements; arbitration involved different facts; evidence is speculative and insufficient to show likely future infringement | Held for Shiji: Elias failed to produce evidence meeting the required "will" (likely) standard; summary judgment affirmed |
| Proper interpretation of "will" in §1202(b) scienter | Elias: removal that makes infringement easier or possible suffices | Shiji: statute requires showing removal likely will lead to infringement, not mere possibility | Held: Court adopts sister circuits—"will" requires a likelihood/probability; plaintiffs must show evidence (e.g., pattern or modus operandi) linking removal to probable future infringement |
| Whether Leonardo arbitration put Shiji on notice such that Shiji had reasonable grounds to know its actions would lead to infringement | Elias: arbitration allegations should have put Shiji on notice that metadata removal could cause infringement | Shiji: arbitration involved unauthorized access/theft and different CMI; panel rejected DMCA claim and did not establish that removal makes infringement likely | Held: Leonardo arbitration insufficient to create reasonable grounds to know Shiji’s metadata processing would likely induce or conceal infringement |
Key Cases Cited
- Stevens v. CoreLogic, Inc., 899 F.3d 666 (9th Cir. 2018) (interpreting §1202(b) double-scienter; requires evidence that removal will likely lead to infringement; pattern/modus operandi evidence probative)
- Mango v. BuzzFeed, Inc., 970 F.3d 167 (2d Cir. 2020) (setting out elements for §1202(b)(3) including double scienter)
- Bonanni Ship Supply, Inc. v. United States, 959 F.2d 1558 (11th Cir. 1992) (summary judgment review is de novo)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment appropriate when nonmoving party fails to prove an essential element)
- Josendis v. Wall to Wall Residence Repairs, Inc., 662 F.3d 1292 (11th Cir. 2011) (speculative chains of inference cannot defeat summary judgment)