McGucken v. Shutterstock, Inc.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

ELLIOT McGUCKEN,

Plaintiff,

22 Civ. 00905 (JHR)

-v.-

OPINION AND ORDER

SHUTTERSTOCK, INC., et al.,

Defendants.

JENNIFER H. REARDEN, District Judge:

Plaintiff Dr. Elliot McGucken, a photographer, brings this copyright infringement suit

against Defendant Shutterstock, Inc. (“Shutterstock”), operator of the popular online image

licensing platform, alleging that the upload of hundreds of his photographs by third parties

without his permission violated his copyrights. See ECF No. 17 (Am. Compl.). Plaintiff asserts

claims for direct and secondary copyright infringement, in violation of 17 U.S.C. § 106, and false

copyright management information (“CMI”), in violation of 17 U.S.C. § 1202. Defendant

disputes that it is liable for direct or secondary infringement and argues that, regardless, it is

shielded from liability by the safe harbor provisions of the Digital Millennium Copyright Act

(“DMCA”), 17 U.S.C. § 512.

Following discovery, each party moved for summary judgment, ECF Nos. 88 (Pl. Mot.)

and 91 (Def. Mot.), and to disqualify the opposing party’s expert witness, ECF Nos. 85 (Def.

Mot. in Limine) and 99 (Pl. Mot. in Limine). Because there are no genuine disputes of material

fact as to whether Defendant satisfied the statutory requirements for safe harbor protection under

the DMCA, or as to Defendant’s liability for false CMI, Defendant’s motion is GRANTED and

Plaintiff’s motion is DENIED. In addition, because the Court does not rely on testimony from

either party’s expert, both motions to exclude expert testimony are DENIED as moot.

I. BACKGROUND1

A. The Shutterstock Platform

The Shutterstock platform is an online marketplace for photographic images and other

content. Def. 56.1 ¶ 1; Pl. Counter 56.1 ¶ 1. It hosts more than 424 million images available for

license, and approximately 200,000 images are added every day. Def. 56.1 ¶ 2; see also ECF

No. 94 (Shimmin Decl.) ¶ 2. Except for those who have been previously suspended from the

platform, anyone who agrees to Shutterstock’s “Contributor Terms of Service” and “Contributor

Guidelines” can become a “Contributor” and upload their images to Shutterstock for licensing.

Def. 56.1 ¶¶ 3-5; see also Shimmin Decl. Ex. A (Contributor Terms of Service); Shimmin Decl.

Ex. D (Submission and Account Guidelines).

When a Contributor uploads an image to Shutterstock, it is reviewed for “spamming (i.e.,

submitting hundreds of virtually identical images),” “watermarks that might suggest [it was]

1 Except where otherwise noted, the Background section consists of undisputed facts drawn from

the parties’ Rule 56.1 statements. See ECF No. 96 (Def. 56.1), 105 (Pl. 56.1), 122 (Def. Counter

56.1), 126 (Pl. Counter 56.1). “While the parties nominally dispute [many] of each other’s

factual assertions, the majority of the parties’ disagreements go to the phrasing, weight, or

impact of a fact instead of actually disputing the fact itself.” Julian v. MetLife, Inc., No. 17 Civ.

957 (AJN), 2021 WL 3887763, at *6 (S.D.N.Y. Aug. 31, 2021) (quotation marks omitted).

Accordingly, where the Court includes citations to a party’s counter-Rule 56.1 statement, that

party “do[es] not dispute the fact, . . . has not offered admissible evidence to refute that fact, or

. . . simply seeks to add [their] own ‘spin’ on the fact or otherwise dispute the inferences from the

stated fact.” Thomason v. Target Corp., 20 Civ. 8982 (JPC), 2022 WL 1137165, at *1 n.1

(S.D.N.Y. Apr. 18, 2022).

In addition, the Court takes judicial notice of Defendant’s 2018 and 2021 Form 10-Ks. See

Silsby v. Icahn, 17 F. Supp. 3d 348, 354 ("The Court can take judicial notice of public disclosure

documents that must be filed with the [SEC]."); see also Donoghue v. Astro Aerospace Ltd., No.

19 Civ. 7991 (JPO), 2021 WL 1964294, at *1 (S.D.N.Y. May 17, 2021) (“Courts resolving

summary judgment motions regularly accept SEC filings for the truth of their contents.”) The

Court does not, however, take judicial notice of Defendant’s 2011 Form S-1 Registration

Statement. Plaintiff requests that the Court judicially notice this document, but offers no

explanation for how facts that underlie this case, which developed in 2018—when Plaintiff’s first

photographs were uploaded to Shutterstock—at the earliest, “can be accurately and readily

determined from” an SEC registration statement filed years earlier, Fed. R. Evid. 201(b)(2).

pulled from a third-party site,” quality issues like “poor focus” or “composition,” and “the

material depicted therein (e.g., pornography, hateful imagery, trademarks, copyrighted materials,

people’s names and likenesses without a model release).” Def. 56.1 ¶ 10; see also Pl. 56.1 ¶¶ 17,

18 (conceding that Shutterstock rejects images based on their “lighting, blurriness, composition,

or framing”). In addition, Shutterstock reviewers consider limited metadata fields, namely the

image’s description, title, and keywords. See Burroughs Decl. Ex. 12 (How Is Content

Reviewed Fact Page); Burroughs Decl. Ex. 38 (Shimmin Dep. Tr.) at 95-96; Burroughs Decl. Ex.

46 (How to Review Metadata – Reviewer Guidelines). The “vast majority” of images uploaded

to Shutterstock are reviewed by just one reviewer “for at most roughly twenty seconds.” Def.

Counter 56.1 ¶ 19.

If an image passes Shutterstock’s review, it is ingested into the Shutterstock platform.

All metadata associated with the image is automatically removed to avoid computer viruses and

prevent the dissemination of personally identifiable information. Def. 56.1 ¶ 15.2 The

Shutterstock system then automatically creates multiple small-sized, low-resolution copies (i.e.,

thumbnails) of the image, and adds a “Shutterstock” watermark to all copies of the image

displayed for license on its public-facing website (except very small thumbnails) “in order to

prevent third parties from using the images without a license.” Id. ¶¶ 16-18; see also Pl. Counter

56.1 ¶¶ 16-18.

Following ingestion, the image becomes available for licensing through Shutterstock.

See Def. 56.1 ¶ 12; Pl. 56.1 ¶ 15. Simultaneously with becoming available on the Shutterstock

platform, the image also becomes accessible through third-party platforms such as TinEye,

2 This paragraph is one of several where the parties have included citations to their expert’s

report or testimony. In each case, the non-expert evidence supports the Court’s recitation of

facts. See infra Section III.C (addressing implications of the Court’s non-reliance on parties’

motions to exclude expert testimony).

StockFresh, and HelloRF that use the Shutterstock application programming interface (“API”).

Def. 56.1 ¶¶ 71-72, 74; Pl. Counter 56.1 ¶¶ 71-72, 74. Because the Shutterstock API provides

real-time access to the same content available on Shutterstock’s website, an image that is

removed from Shutterstock automatically becomes completely unavailable for license via the

API.” Def. 56.1 ¶¶ 74-75.

Licensees can choose a monthly subscription option and gain access to all of

Shutterstock’s photography (though such licensees are limited in their number of downloads per

month), or they can license individual photographs at a rate specific to each image. Pl. 56.1 ¶ 9;

Def. Counter 56.1 ¶ 9. When an image is licensed through Shutterstock, Defendant keeps a

portion of the license fee paid for contributor-uploaded images and pays the rest to the

contributor. Def. 56.1 ¶ 13; Pl. Counter 56.1 ¶ 13.

The Shutterstock platform includes a “DMCA Policy” that sets forth the procedure for

submitting notices of copyright infringement pursuant to the DMCA,” Def. 56.1 ¶ 22; Pl.

Counter 56.1 ¶ 22, and identifies and provides the contact information for Shutterstock’s

designated agent for receiving takedown notices, Def. 56.1 ¶ 23. In addition, Defendant’s

Contributor Terms of Service reserves Defendant’s right to “suspend access to [any] Content

[uploaded by contributor] and terminate [the contributor’s] account” in the event it “receives a

[copyright infringement] complaint about [the contributor’s] Content.” Contributor Terms of

Service § 12(e).

B. Plaintiff’s Images

Plaintiff is an accomplished photographer who has earned numerous awards for his

photography. Pl. 56.1 ¶ 1; Def. Counter 56.1 ¶ 1. On December 30, 2020, Plaintiff’s attorney

emailed Defendant stating that an “image owned by [Plaintiff]” was “being sold on” Defendant’s

website without Plaintiff’s permission (the “Noticed Image”). ECF No. 93 (Lackman Decl.) Ex.

D (Noticed Image Claim) at 3-4; see also Def. 56.1 ¶ 32; Pl. 56.1 ¶ 47. The image had been

submitted to Shutterstock on or about April 20, 2020, by Contributor Moajjem Hossain a/k/a

Hane Street (“Hane Street”). See Def. 56.1 ¶ 37; Pl. Counter 56.1 ¶ 37. On January 4, 2021,

Defendant replied to Plaintiff’s email, requesting a DMCA-compliant takedown notice.3 See

Noticed Image Claim 2-3; Def 56.1 ¶ 33; Pl. Counter 56.1 ¶ 33. Plaintiff provided such a notice

on January 15, 2021, identifying two Shutterstock URLs that contained his image. See Lackman

Decl. Ex. E (Takedown Notice Email Correspondence); Lackman Decl. Ex. F (Takedown

Notice); Def. 56.1 ¶ 34; Pl. Counter 56.1 ¶ 34. Four days later, Defendant removed the image

from both URLs. See Takedown Notice Email Correspondence 2.

The following year, on February 2, 2022, Plaintiff filed suit, alleging that Defendant

infringed his copyrights in the Noticed Image, 323 other images submitted by Hane Street

between April 22 and November 18, 2020, and one image submitted by Shutterstock Contributor

Gouranga Charan Bishoi (“Bishoi”) on or about March 19, 2018. See Def. 56.1 ¶¶ 41-43; Pl.

Counter 56.1 ¶¶ 41-43. On April 29, 2022, Plaintiff filed an Amended Complaint, identifying

twelve more images in which his copyright was allegedly infringed, for a total of 337.4 See Def.

56.1 ¶ 47; Pl. Counter 56.1 ¶ 47. The twelve additional images had been submitted between May

3, 2021 and April 8, 2022 by Shutterstock Contributor Muhammad Raza a/k/a Raza 76j

(“Raza”). See Def. 56.1 ¶ 48; Pl. Counter 56.1 ¶ 48.

3 Plaintiff disputes that his December 30 email “was not in compliance with the DMCA.” Pl.

Counter 56.1 ¶ 33.

4 Defendant disputes Plaintiff’s ownership of forty-seven of the 337 images because their

copyrights were allegedly registered as part of “Group Registration[s]” containing more than the

750-photograph maximum permitted by the Copyright Office. Def. 56.1 ¶¶ 78-83. For his part,

Plaintiff contends that the 750-photograph maximum went into effect the day after these forty-

seven copyrights were registered. See Pl. Counter 56.1 ¶ 82.

Though Plaintiff indisputably used image metadata identifying him as the copyright

owner and author, Pl. 56.1 ¶ 3; Def. Counter 56.1 ¶ 3, as it pertains to the images in issue here,

he estimates that only approximately sixty to seventy-five percent contained such metadata, see

Lackman Decl. Ex. H (McGucken Dep. Tr.) at 168-69. As to the remaining twenty-five to forty

percent, any metadata associated with Plaintiff’s images was removed by Shutterstock upon

ingestion. See Def. 56.1 ¶¶ 15, 55; Pl. Counter 56.1 ¶¶ 15, 55 (disputing only that metadata is

removed “automatically”).

Of Plaintiff’s 337 images at issue in this case, 165 were licensed on the Shutterstock

platform—some multiple times. See Def. 56.1 ¶ 64; Pl. Counter 56.1 ¶ 64. The remaining 172

images were never licensed. Def. 56.1 ¶ 66; Pl. Counter 56.1 ¶ 66. In total, Shutterstock “issued

938 licenses to third-party customers.” Def. 56.1 ¶ 64; see also Pl. Counter 56.1 ¶ 64.

Approximately sixty-five of the 938 licenses were licensed under” Shutterstock’s “free trial

subscription,” meaning Shutterstock did not directly receive any revenue from them. Def. 56.1 ¶

65.5 The remaining 873 licenses generated $2,131.60 in revenue, which was split between

Defendant and Contributors. See Def. 56.1 ¶ 64; Pl. Counter 56.1 ¶ 64.

While the parties purportedly dispute precisely when the 337 images were removed from

the Shutterstock platform, their disagreement is semantic. The Bishoi contributor account was

terminated, and its images removed, on January 23, 2019, after Shutterstock’s matching software

detected potential infringement regarding certain other images uploaded by Bishoi. Def. 56.1 ¶

45. The Hane Street account was similarly terminated, and its images removed, on February 11,

2021, following a complaint by an unrelated third-party regarding unrelated images. See id. ¶

5 Plaintiff contends that “Shutterstock uses images such as [his] to advertise its subscriptions and

attract new customers,” thereby “generat[ing] revenue . . . attributable to the infringement of

[his] works.” Pl. Counter 56.1 ¶ 65.

46. Finally, the Raza account was terminated, and its images removed, on April 18, 2022, after

Defendant received notice of “unrelated infringing activity from a ‘Good Samaritan.’” Id. ¶ 50.

Though the Contributor accounts were terminated, some thumbnails remained on the

Shutterstock platform backend. For example, “image previews” for the Raza-uploaded images

were not removed from Shutterstock until May 11, 2022. See Burroughs Decl. Ex. 44 (Raza

Removed Image Preview Log)6; Def. 56.1 ¶ 63. However, because they were backend copies,

these previews “were not visible on or linked to Shutterstock’s website, and could not be found

by the general public.” Def. Counter 56.1 ¶ 50. Likewise, thumbnails of Plaintiff’s images

remained accessible on StockFresh, TinEye, and HelloRF until at least July, August, and

September 2022, respectively. See Pl. 56.1 ¶ 52; Def. Counter 56.1 ¶ 52.

II. LEGAL STANDARD

Summary judgment is appropriate when the admissible evidence, in conjunction with the

pleadings, demonstrates “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 dispute is “genuine” if “a reasonable jury

could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

248 (1986); accord Roe v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008). “Factual disputes

that are irrelevant or unnecessary will not be counted.” Anderson, 477 U.S. at 248.

When considering a motion for summary judgment, the Court “constru[es] all the

evidence in the light most favorable to the non-movant,” Anemone v. Metro. Transp. Auth., 629

F.3d 97, 113 (2d Cir. 2011) (quoting McBride v. BIC Consumer Prods. Mfg. Co., 583 F.3d 92,

6 Plaintiff attempts to offer this exhibit as proof that the Bishoi and Hane Street images were also

not “fully remove[d] . . . until at least May 2022.” Pl. Counter 56.1 ¶¶ 45, 46. But this exhibit

relates to the “submitter id” associated with the Raza account. See Burroughs Decl. Ex. 45 (Raza

Submitter Account) at 1. The thumbnails associated with the Bishoi and Hane Street images

were removed on February 16, 2022 and May 17 and 18, 2021, respectively. See Def. 56.1 ¶¶

62, 61.

96 (2d Cir. 2009)), and “resolve[s] all ambiguities, and credit[s] all factual inferences that could

rationally be drawn, in favor of the party opposing summary judgment,” Roe, 542 F.3d at 35

(quoting Brown v. Henderson, 257 F.3d 246, 251 (2d Cir. 2001)). However, the non-moving

party “cannot defeat the motion by relying on the allegations in his pleading, or on conclusory

statements, or on mere assertions that affidavits supporting the motion are not credible.”

Gottlieb v. County of Orange, 84 F.3d 511, 518 (2d Cir. 1996) (citation omitted). He must

advance more than a “scintilla of evidence,” Anderson, 477 U.S. at 252, and “must do more than

simply show that there is some metaphysical doubt as to the material facts,” Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). If the “opposing parties tell two

different stories, one of which is blatantly contradicted by the record, so that no reasonable jury

could believe it, a court should not adopt that version of the facts for purposes of ruling on a

motion for summary judgment.” Scott v. Harris, 550 U.S. 372, 380 (2007).

Where, as here, “both sides move for summary judgment, neither side is barred from

asserting that there are issues of fact, sufficient to prevent the entry of judgment, as a matter of

law, against it.” Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir. 1993). “[T]he

court must evaluate each party's motion on its own merits, taking care in each instance to draw

all reasonable inferences against the party whose motion is under consideration.” Id. (quotation

omitted).

III. DISCUSSION

A. DMCA Safe Harbor

“[D]efendants who fall within the DMCA’s Safe Harbor provisions, 17 U.S.C. § 512,

cannot be held liable for copyright infringement.” Steinmetz v. Shutterstock, Inc., 629 F. Supp.

3d 74, 80 (S.D.N.Y. 2022); see 17 U.S.C. § 512(a)-(d). “In order to be eligible for protection

under the Safe Harbor provisions, a defendant must meet certain threshold requirements.” Id.

“These include that it must (1) be a ‘service provider’ as defined by the statute; (2) have adopted

and reasonably implemented a policy for the termination in appropriate circumstances of users

who are repeat infringers; and (3) not interfere with standard technical measures used by

copyright owners to identify or protect copyrighted works.” Id. “If a defendant meets the

threshold requirements, it must also meet additional specific conditions for protection under §

512(c).” Id. Section 512(c) immunizes a service provider from liability for copyright

infringement stemming from its “storage at the direction of a user of material that resides on a

system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c)(1).

As set forth below, as a “service provider” that has satisfied both the general “conditions

of eligibility” and each element of the Section 512(c) safe harbor, Defendant is immune from

liability for copyright infringement stemming from its “storage at the direction of a user of”

infringing material.

1. Whether Shutterstock Is a “Service Provider”

The threshold question when considering applicability of a DMCA safe harbor is whether

Defendant is a “service provider.” As relevant here, the DMCA defines a “service provider” as

“a provider of online services or network access, or the operator of facilities therefor.” Id.

§ 512(k)(1)(B).

Shutterstock squarely falls within this definition because it “provide[s] [an] online

service[]” and “operat[es] . . . facilities,” id., “that allow[] independent contributors to connect

with and make their images available for licensing to users in need of content,” Steinmetz, 629 F.

Supp. 3d at 81; see Wolk v. Kodak Imaging Network, Inc., 840 F. Supp. 2d 724, 744 (S.D.N.Y.

2012), aff’d sub nom. Wolk v. Photobucket.com, Inc., 569 F. App’x 51 (2d Cir. 2014) (holding

that Photobucket, a website that “enables users . . . to upload digital photographs and videos so

that they may be stored and viewed on the website,” is a service provider); Viacom Int’l Inc. v.

YouTube, Inc. (Viacom I), 718 F. Supp. 2d 514, 518 (S.D.N.Y. 2010), aff’d in relevant part, 676

F.3d 19 (2d Cir. 2012) (holding that YouTube, a website “onto which users may upload video

files” that are “then made available for viewing,” is a service provider); Io Grp., Inc. v. Veoh

Networks, Inc., 586 F. Supp. 2d 1132, 1143 (N.D. Cal. 2008) (treating Veoh, a website “that

enables the sharing of user-provided video content over the Internet,” as a service provider).

Plaintiff urges the Court to disregard Steinmetz, a case considering the very same

defendant, and this common, albeit capacious, understanding of “service provider,” on the

ground that “Shutterstock provides no public services.” ECF No. 129 (Pl. Opp. Br.) at 10.

Plaintiff principally relies on Agence France Presse v. Morel, which rejected the contention that

Getty Images (another image licensing website) was, as a matter of law, a “service provider”

because “licensing copyrighted material online more closely resembles the mere sale of goods

. . . than facilitating users’ activities online.” 934 F. Supp. 2d 547, 566 (S.D.N.Y. 2013). Agence

France Presse, however, “is an outlier in the DMCA case law” and is “[c]ontrary to the broad

reading given by almost every court confronted with similar services and circumstances.”

Steinmetz, 629 F. Supp. 3d at 82; see also Greg Young Publ’g, Inc. v. Zazzle, Inc., No. 16 Civ.

4587 (SVW), 2017 WL 2729584, at *6 (C.D. Cal. May 1, 2017) (“[Agence France Presse] is an

outlier for a reason: its analysis is not persuasive” and its “premise is faulty.”). The Court

declines to follow Agence France Presse here and holds that Defendant is a service provider for

purposes of the DMCA’s safe harbor provision.

2. Repeat Infringers

To qualify for any safe harbor, Defendant must have “(i) adopt[ed] a policy that provides

for the termination of service access for repeat copyright infringers; (ii) inform[ed] users of the

service policy; and (iii) implement[ed] the policy in a reasonable manner.” Wolk, 840 F. Supp.

2d at 744; see also 17 U.S.C. § 512(i)(1)(A).

The Steinmetz Court has already made such findings with respect to this exact Defendant:

Defendant also has implemented a policy for repeat infringers that complies with

the DMCA. The policy is set forth in the [Contributor Terms of Service] and puts

contributors on notice that Defendant retains the right to limit access or terminate

accounts for copyright infringement. Defendant also reasonably enforces its policy

by enabling copyright owners to submit takedown notices and responding to such

notices. Defendant keeps records to identify repeat infringers and regularly

terminates contributors’ accounts due to infringing activity, including in this case.

This is sufficient to satisfy the repeat infringer prong.

629 F. Supp. 3d at 83 (citing cases); see also Contributor Terms of Service; Submission and

Account Guidelines.

Plaintiff’s sole argument to the contrary is that Defendant “failed to terminate” the Hane

Street account for roughly a year following notice of infringement in a separate, unrelated case,

and that “[i]t also failed to terminate ‘Raza 76J[]’ . . . for two months after notice” in this case.

ECF No. 106 (Pl. Br.) at 24. Even setting aside that the “repeat infringer policy requirement

does not focus on the particular infringement at issue,” and instead “addresses how the site is

generally managed,” Ventura Content, Ltd. v. Motherless, Inc., 885 F.3d 597, 614 (9th Cir. 2018)

(concluding that “[n]o trier of fact could conclude from the evidence in the record that

[defendant] had failed to reasonably implement a repeat infringer policy”), these two accounts

were terminated shortly after Defendant received Hane Street’s second and Raza’s first notice of

infringement, see Def. Counter 56.1 ¶¶ 78, 80. The Court agrees with the Steinmetz Court that

Defendant has “adopted,” “informed users of,” and “implemented a repeat infringer policy” in

compliance with 17 U.S.C. § 512(i)(1)(A).

3. Standard Technical Measures

In addition, Defendant must have “accommodate[d] and . . . not interfere[d] with standard

technical measures.” 17 U.S.C. § 512(i)(1)(B). As defined by the DMCA, “standard technical

measures” are:

[T]echnical measures that are used by copyright owners to identify or protect

copyrighted works and—

(A) have been developed pursuant to a broad consensus of copyright owners and

service providers in an open, fair, voluntary, multi-industry standards process;

(B) are available to any person on reasonable and nondiscriminatory terms; and

(C) do not impose substantial costs on service providers or substantial burdens on

their systems or networks.

Id. § 512(i)(2).

In arguing that Defendant fails to satisfy this test, Plaintiff points to his use of metadata,

unpersuasively arguing that “[i]t is widely accepted in the photography industry that a

photograph’s metadata constitutes a standard technical measure.” Pl. Br. 25. “[A]s the party

asserting that metadata is a standard technical measure,” however, Plaintiff “has the burden of

proving it.” BWP Media USA Inc. v. Polyvore, Inc., 922 F.3d 42, 57 n.9 (2d Cir. 2019) (Walker,

J., concurring) (citing Nat’l Commc’ns Ass’n, Inc. v. AT&T Corp., 238 F.3d 124, 131 (2d Cir.

2001)). Yet Plaintiff “has not come close to establishing that there is a broad consensus among

copyright owners and service providers that preserving metadata should be” considered a

“standard technical measure.” Id. at 56 (considering a document “entitled ‘Guidelines for

Handling Image Metadata,’ authored by the Metadata Working Group, which is made up of

representatives from Adobe, Apple, Canon, Microsoft, Nokia, and Sony,” as “wholly deficient in

establishing that preserving metadata is ‘standard.’”).

It is undisputed that Plaintiff’s original photographs contain metadata identifying him as

the artist and copyright owner, see ECF No. 92 (McGucken Decl.) Ex. 3 (Pl.’s Images), and that

Defendant “removes any and all metadata associated with the images uploaded by contributors,”

Def. 56.1 ¶ 15; see also Pl. Counter 56.1 ¶ 25 (“Shutterstock strips all author metadata from all

photographs that it displays on its site.”). At least for some of Plaintiff’s images uploaded to

Shutterstock, though, there was no such metadata. See Def. Counter 56.1 ¶ 3; see also Steinmetz,

629 F. Supp. 3d at 83 (rejecting contention that Defendant “interfered with standard technical

measures” because Plaintiff “offer[ed] no evidence showing that the same metadata existed in

the file uploaded to Defendant’s website”).

As to the remaining images, Plaintiff has offered no evidence that the use of metadata is a

“standard technical measure.” Indeed, Plaintiff’s purported evidence consists solely of two

sentences in the twenty-one-page expert report of Thomas Maddrey—the subject of Defendant’s

motion in limine. See ECF No. 90 (Maddrey Decl.) Ex. 30 (Maddrey Expert Report). In those

sentences, Maddrey merely asserts that “[p]hotographers rely on the inclusion of ‘metadata’ to

organize, sort, and track their works both inside their studios and across the internet,” and that

Plaintiff “specifically noted using automated metadata population to include the copyright

symbol, his name, and contact information.” Id. at 14-15. Plaintiff has offered no evidence that

metadata’s supposed status as a “standard technical measure” was, inter alia, “developed

pursuant to a broad consensus of copyright owners and service providers.” 17 U.S.C.

§ 512(i)(2)(A).7

7 Plaintiff contends that, “[a]t the very least, whether deletion of metadata constitutes

interference with standard technical measures is a genuine issue of material fact that cannot be

resolved at this stage.” Pl. Opp. Br. 14 (citing Gardner v. CafePress Inc., No. 13 Civ. 1108

(GPC), 2014 WL 794216, at *6 (S.D. Cal. Feb. 26, 2014)). In Gardner, the defendant asserted

that the plaintiff “offered no evidence that using metadata as a copyright protection tool has been

‘developed pursuant to a broad consensus of copyright owners and service providers in an open,

fair, voluntary, multi-industry standards process.’” 2014 WL 794216, at *6. Nonetheless, the

court held that the plaintiff “offered sufficient evidence to create a dispute of material fact as to

whether CafePress’s deletion of metadata when a photo is uploaded constitutes the failure to

accommodate and/or interference with ‘standard technical measures.’” Id. This Court fails to

understand how, absent evidence that the use of metadata as a means to protect one’s copyright

is a “standard technical measure” in the first place, the deletion of metadata could, by itself, ever

“constitute[] the failure to accommodate and/or interference with ‘standard technical measures.’”

Id.

Accordingly, Defendant has “accommodate[d] and . . . not interfere[d] with standard

technical measures.” Id. § 512(i)(1)(B).

4. 17 U.S.C. § 512(c)

As stated above, Section 512(c) immunizes a service provider from liability for copyright

infringement stemming from its “storage at the direction of a user of material that resides on a

system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c)(1).

To qualify, a defendant must not have “actual” or “red flag” knowledge of infringement.

Viacom Int’l, Inc. v. YouTube, Inc. (Viacom II), 676 F.3d 19, 30-32 (2d Cir. 2012); see also 17

U.S.C. § 512(c)(1)(A). If it does, or if it receives notification of infringement, it must act

“expeditiously to remove, or disable access to,” the infringing material. Id. § 512(c)(1)(A)(iii),

(C). In addition, the defendant must “not receive a financial benefit directly attributable to the

infringing activity” if it “has the right and ability to control such activity.” Id. § 512(c)(1)(B).

Finally, a defendant must have “designated an agent to receive notifications of claimed

infringement.” Id. § 512(c)(2). Shutterstock has satisfied each of these requirements:

a. Stored at the Direction of Users

To qualify for the safe harbor under Section 512(c), the infringing material must have

been stored on Defendant’s system “at the direction of a user.” 17 U.S.C. § 512(c)(1). Here,

too, Steinmetz is instructive as to the mechanics of Defendant’s platform and confirms that

Shutterstock images are indeed stored “at the direction of a user”:

Defendant neither seeks out contributors nor curates the portfolio connected with

its contributor platform. Instead, anyone can sign up to be a contributor, so long as

they agree to the [Contributor Terms of Service], and anyone can submit an image

for licensing, subject only to a limited review for objectionable content for which

it might be rejected. At bottom, the contributor platform is user-directed. The fact

that Defendant has the ability to reject content does not make it ineligible for the

Safe Harbor. The review process keeps out images that are either not valuable (high

quality) to users or customers (a service of its own) or content that, if posted, would

violate other laws, i.e., pornography or hate speech, and possibly subject Defendant

to liability under other laws. Furthermore, given that 200,000 images are added to

the platform daily, no reasonable factfinder could conclude that Defendant engages

in the type of thorough review and approval process suggested by Plaintiff and

which might support a finding that the images were not stored at the direction of

contributors (users).

629 F. Supp. 3d at 84.

Defendant argues that “[t]he Steinmetz court[] . . . overlooked key evidence,” while

“[h]ere, there is undisputed evidence that Shutterstock seeks out contributors and curates its

portfolio,” and that “only Shutterstock can make photography accessible on its public site.” ECF

No. 134 (Pl. Reply) at 12. That is not, however, what Plaintiff’s evidence shows. Plaintiff first

directs the Court to the testimony of Heather Shimmin, Defendant’s Rule 30(b)(6) corporate

representative. But Ms. Shimmin merely testified that she personally “encourage[s] other

photographs [sic] that [she] know[s] in the community to join Shutterstock.” Shimmin Dep. Tr.

35:21-25. Plaintiff then points to Defendant’s “Curated Collections” page, Burroughs Decl. Ex.

42 (Curated Collections Page), which makes clear that those specific collections are curated from

the Shutterstock portfolio as a whole—not that the entire Shutterstock portfolio is somehow

curated.

Elsewhere, Plaintiff cites Judge Walker’s concurrence in Polyvore for the proposition that

images stored on Shutterstock are not stored “at the direction of users” because each image is

given a “separate URL[] that could be viewed by anyone at any time.” Pl. Br. 27 (quoting

Polyvore, 922 F.3d at 59 (Walker J., concurring)). Plaintiff’s use of Polyvore is inapposite

because “[t]here [was] a question of material fact as to whether Polyvore’s additional copies

were made solely to facilitate access by users.” Polyvore, 922 F.3d at 58 (Walker J., concurring)

(“Without facts in the record about the purpose and function of these additional copies, I am

unable to determine whether the copies here were made to ‘render’ user-uploaded content

‘viewable over the Internet to most users.’” (quoting Viacom II, 676 F.3d at 39)). Here, in

contrast, there is no such question of fact: “Shutterstock’s system automatically creates multiple

small-sized, low-resolution copies (i.e., thumbnails) of every contributor-supplied image posted

to its website for license so that the potential customer can get a sense of how the image might

look.” Shimmin Decl. ¶ 16; see also Viacom II, 676 F.3d at 40 (Thumbnails “serve[] to help . . .

users locate and gain access to material stored at the direction of other users” and are “protected

by the § 512(c) safe harbor.”).

b. Knowledge and Expeditious Removal

Two distinct provisions require a service provider with knowledge of infringement to

“act” or “respond” “expeditiously to remove, or disable access to,” the infringing material. 17

U.S.C. §§ 512(c)(1)(A)(iii), (C). Section 512(c)(1)(A)(iii) applies when a service provider

obtains “actual knowledge” of infringing material, whereas Section 512(c)(1)(C) applies when a

copyright owner (or person authorized to act on their behalf) provides “notification of claimed

infringement.”

A DMCA notice “that fails to comply substantially with the” required elements outlined

in Section 512(c)(3)(A) “shall not be considered under paragraph (1)(A) in determining whether

a service provider has actual knowledge,” unless (1) the notification “substantially complies”

with elements (ii) (identifying “the copyrighted work claimed to have been infringed”), (iii)

(identifying “the material that is claimed to be infringing”), and (iv) (providing “[i]nformation

reasonably sufficient to permit the service provider to contact the complaining party”); and (2)

the service provider has not “promptly attempt[ed] to contact the person making the notification

or take[n] other reasonable steps to assist in the receipt of notification that substantially complies

with all the” notification requirements. Id. § 512(c)(3).

There is no evidence that, prior to the commencement of this action, Defendant had any

knowledge that the images referenced in the Amended Complaint, aside from the Noticed Image,

had been uploaded to Shutterstock. With regard to the Noticed Image, Plaintiff’s original

December 30, 2020 email, stating that an “image owned by” him was “being sold on”

Defendant’s website without permission, did not “comply substantially” with DMCA

notification requirements, id. § 512(c)(3)(B)(i), because, inter alia, it was not made “under

penalty of perjury,” id. § 512(c)(3)(A)(vi); see also Perfect 10, Inc. v. CCBill LLC, 488 F.3d

1102, 1112 (9th Cir. 2007) (“We . . . do not require a service provider to start potentially

invasive proceedings if the complainant is unwilling to state under penalty of perjury that he is

an authorized representative of the copyright owner, and that he has a good-faith belief that the

material is unlicensed.”). Thus, the email was not a proper “notification of claimed

infringement” that triggered Defendant’s Section 512(c)(1)(C) obligation to “expeditiously . . .

remove, or disable access to, the material that is claimed to be infringing.” Nor could it confer

“actual knowledge” of infringing activity for purposes of Section 512(c)(1)(A) because on

January 4, 2021 (two business days later), Defendant “promptly . . . contact[ed] the person

making the notification” to request a DMCA-compliant notice. 17 U.S.C. § 512(c)(3)(B)(ii); see

also Noticed Image Claim 2-3.

Once Plaintiff provided Defendant with a DMCA-compliant takedown notice stating that

the Noticed Image was available at two different URLs, Defendant removed it within four days.

See Def. Exs. E, F. Plaintiff concedes that this was “expeditious.” Pl. Br. 29 (quoting case for

the proposition that “response times to remove infringing material from entities’ websites or

systems ranging from 5 to 14 days are expeditious” (citation omitted)).

Undeterred, Plaintiff urges that “Shutterstock failed to fully remove” any of his images

“from its site for at least three months after this action was filed.” Id. (emphasis added). In so

doing, Plaintiff directs the Court to evidence showing only that thumbnails for the twelve Raza-

uploaded images were not deleted until May 11, 2022. See Raza Removed Image Preview Log.

As noted above, the thumbnails associated with the Bishoi and Hane Street images were

removed on February 16, 2022 and May 17 and 18, 2021, respectively. See Def. 56.1 ¶¶ 62, 61.

The twelve Raza thumbnails “were not visible on or linked to Shutterstock’s website, and could

not be found by the general public.” Def. Counter 56.1 ¶ 50. “Moreover, Plaintiff did not send

any takedown notices or otherwise notify Shutterstock regarding these thumbnails.” Id. Because

these thumbnails were not specifically noticed by Plaintiff, Defendant is not liable for their

retention. See Steinmetz, 629 F. Supp. 3d at 84 (“[N]o DMCA liability attaches for the delayed

removal of [lingering back-end] copies, even if . . . the failure to remove those copies at the

outset violated Defendant’s internal policies,” because “Plaintiff never specified . . . the URLs

where he was able to view his image.”); Wolk, 840 F. Supp. 2d at 747 (rejecting argument that a

“DMCA-compliant notice of any and all other unidentified alleged infringements of [the

identified works] that may appear on the Photobucket site . . . provid[ed] Photobucket with the

requisite knowledge necessary to require it to remove those alleged infringements”).

Finally, Plaintiff argues that none of his 337 images was expeditiously removed because

they remained accessible on “TinEye and StockFresh and HelloRF . . . until at least July, August,

and September 2022, respectively.” Pl. Br. 29. TinEye, StockFresh, and HelloRF are

independent applications that merely use the Shutterstock API to receive “access to—not copies

of—the images in Shutterstock’s library.” Shimmin Decl. ¶ 63. The Shutterstock API “provides

real-time access into Shutterstock’s content library,” meaning that “[w]hen an image is removed,

it automatically becomes completely unavailable . . . through . . . the API.” Id. ¶ 65. Any

continued access to Plaintiff’s images through these platforms is attributable to “their failure to

refresh their cache,” for which Defendant is not liable. Steinmetz, 629 F. Supp. 3d at 84.

In short, Defendant expeditiously removed the single image (available at two URLs) for

which it had knowledge of infringement.

c. No Right to Control Infringement or Financial Benefit

A service provider which “has the right and ability to control” infringing activity, and

who seeks to avail itself of the Section 512(c) safe harbor, must “not receive a financial benefit

directly attributable to the infringing activity.” 17 U.S.C. § 512(c)(1)(B). The “‘right and ability

to control’ infringing activity under § 512(c)(1)(B) requires something more than the ability to

remove or block access to materials posted on a service provider’s website.” Viacom II, 676

F.3d at 38 (internal quotation marks omitted).

As in Steinmetz, “[t]he undisputed facts show that Defendant had no right to control the

initial infringing conduct by the Contributor[s]. Defendant did not invite or request the

Contributor[s] to upload.” 629 F. Supp. 3d at 85. And while images are subject to review by

Shutterstock before they are ingested into the platform, “Defendant cannot be precluded from

safe harbor simply because it failed to reject [an] image when initially uploaded.” Id.

d. DMCA Agent

Finally, Defendant has complied with the requirement to “designate[] an agent to receive

notifications of claimed infringement.” 17 U.S.C. § 512(c)(2). Its “DMCA Policy identifies and

provides the contact information for Shutterstock’s designated agent for receiving takedown

notices.” Def. 56.1 ¶ 23. And its “designated agent has been registered with the U.S. Copyright

Office and listed in the U.S. Copyright Office’s public directory at all relevant times.” Id. ¶ 24.8

8 Plaintiff disputes both of these points on grounds that Shutterstock “does not name or identify a

particular DMCA agent for Shutterstock” and instead designates its legal department as a whole.

Pl. Counter 56.1 ¶ 23; see also id. ¶ 24 (same). That distinction is immaterial. See Steinmetz,

629 F. Supp. 3d at 85 (holding that, in designating its legal department, “Defendant has complied

with the requirement that it have a designated DMCA agent and a process for receiving and

responding to takedown notices”).

B. False Copyright Management Information Claim

1. 17 U.S.C. § 1202(a)

Section 1202(a) provides that “[n]o 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 that is false.” 17 U.S.C.

§ 1202(a). The requirements that “defendant knowingly provided false copyright information

and that the defendant did so with the intent to induce, enable, facilitate, or conceal an

infringement” is known as the “double scienter requirement.” Krechmer v. Tantaros, 747 F.

App'x 6, 9 (2d Cir. 2018).

Plaintiff argues that Defendant violated Section 1202(a) “by adding . . . a ‘shutterstock’

watermark” to his images “and distributing multiple copies of those works.” Pl. Br. 16.

Plaintiff’s false CMI claim pursuant to Section 1202(a) fails for the same reason such a claim

failed in Steinmetz: “neither required element is met.” Steinmetz, 629 F. Supp. 3d at 85.

First, Defendant’s use of a watermark does not constitute false CMI. It identifies

Defendant as the source of an image downloaded from its portfolio or platform.

Second, Plaintiff cannot establish that Defendant had any scienter, let alone double

scienter. The evidence shows that Defendant incorporates or attaches its watermark

to prevent, rather than to induce, enable, facilitate, or conceal, infringement.

Id.9

While Plaintiff claims that “Shutterstock adds the watermark bearing its logo . . . in order

to identify the images as Shutterstock’s own intellectual property and to advertise its brand,” Pl.

9 In his opposition and his reply in further support of his cross-motion, Plaintiff directs the Court

to Penske Media Corp. v. Shutterstock, Inc., which declined to dismiss a Section 1202(a) claim

premised on the addition of the Shutterstock watermark. 548 F. Supp. 3d 370, 382 (S.D.N.Y.

2021). That case is inapposite because Defendant’s motion was for dismissal under Federal Rule

of Civil Procedure 12(b)(6), not for summary judgment under Rule 56. The Penske Court

merely held that the plaintiff had satisfied the pleading standard, a materially different legal

standard than the one applicable here.

Counter 56.1 ¶ 19, his evidence shows only that Shutterstock adds watermarks generally and

does not support that Defendant adds its watermark to hold out a Contributor’s image as its own,

see Burroughs Decl. Ex. 28 (Shutterstock API Terms of Service) at 2 (“Any Content previewed

by Users through the Platform . . . shall incorporate the Shutterstock watermark.”); Shimmin

Dep. Tr. 73:14 (“I know a watermark is generated[.]”); Maddrey Expert Report 15 (“Shutterstock

appears to always add a large ‘Shutterstock’ watermark to each image selected for its library.”).

Defendant, in contrast, has offered evidence that it adds its watermark “in order to prevent third

parties from using the images without a license” and that it “is intended and understood to

identify Shutterstock as the source or distributor of the image, rather than as the author or

copyright owner.” Shimmin Decl. ¶ 17.

2. 17 U.S.C. § 1202(b)

Section 1202(b) makes it unlawful to “intentionally remove or alter any copyright

management information” or to “distribute . . . copies of works . . . knowing that copyright

management information has been removed or altered without authority of the copyright owner.”

17 U.S.C. § 1202(b)(1), (3). Section 1202(b) also contains a double scienter requirement: A

defendant must “know[], or . . . hav[e] reasonable grounds to know, that [its removal or

alteration of CMI] will induce, enable, facilitate, or conceal an infringement.” Id. § 1202(b).

Plaintiff claims that Defendant’s removal of his metadata violates this provision.

However, many of Plaintiff’s 377 images contained no such metadata when they were uploaded

to Shutterstock. See Def. 56.1 ¶ 3. Plaintiff’s Section 1202(b) claim must fail as to those

images. As to the remaining images, Plaintiff has not adduced any evidence that Defendant

removed his metadata “knowing, or . . . having reasonable grounds to know, that it will induce,

enable, facilitate, or conceal an infringement.” Id. Accordingly, Plaintiff’s Section 1202(b)

claim regarding any images that did contain his metadata also fails. See Stevens v. Corelogic,

Inc., 899 F.3d 666, 675 (9th Cir. 2018) (“[T]o satisfy the knowledge requirement, a plaintiff

bringing a Section 1202(b)(1) claim 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.”); see also id. at 674 & n.4 (that plaintiffs “have not offered any evidence to satisfy the

mental state requirement” “is a sufficient basis for concluding that [their] claims fail’).

C. Motion to Exclude Expert Testimony

In addition to their motions on the merits, each party moves to exclude the other’s expert.

See ECF Nos. 85 (Def. Mot. to Exclude), 99 (PI. Mot. to Exclude). Each party argues, among

other things, that the opposing party’s expert is unqualified. See ECF Nos. 86 (Def. Expert Br.)

at 11, 100 (PI. Expert Br.) at 2. However, “[b]ecause the Court does not rely on [either party’s]

expert reports [or] opinions to decide the summary judgment motions, [both] motions [to exclude

are] denied as moot.” Haley v. Tchrs. Ins. & Annuity Ass’n of Am., No. 17 Civ. 855 (JPO), 2021

WL 4481598, at *7 (S.D.N.Y. Sept. 30, 2021).

IV. CONCLUSION

For the foregoing reasons, Defendant’s motion for summary judgment, ECF No. 91, is

GRANTED and Plaintiff’s motion, ECF No. 88, is DENIED; both motions to exclude expert

testimony, ECF Nos. 85 and 99 are DENIED as moot; and Defendant’s letter-motion for oral

argument, ECF No. 133, is DENIED as moot. The Clerk of Court is respectfully directed to

terminate ECF Nos. 85, 88, 91, 99, and 133.

SO ORDERED.

Dated: September 30, 2023

New York, New York

nited States District Judge

22