No Registration Required for DMCA Copyright Management Information Claim

Playboy sued (MTO) for copyright infringement and violating the Digital Millennium Copyright Act (DMCA).  Playboy owns the exclusive license to 3 photos of entertainer Azealia Banks.  Two registered photos are nude photos.  One unregistered photo is a non-nude photo.  Playboy alleges that MTO removed Playboy’s watermark and applied MTO’s own watermark to the photos before publishing the photos on MTO’s website.

MTO moved to dismiss Playboy’s complaint for failure to state a cause of action.  MTO argued that it had a license from Playboy to publish the photos, that MTO’s use of the photos was a fair use and that Playboy could not file suit on the unregistered photo.  The district court denied MTO’s motion to dismiss.

The DMCA encompasses more than providing a mechanism for copyright owners to remove infringing content from the Internet (17 U.S.C. § 512 – Limitations on liability relating to material online).  The DMCA also prohibits circumventing technological measures that effectively control access to a work protected by the Copyright Act.  (17 U.S.C. § 1201 – Circumvention of copyright protection systems).  Section 1203 provides civil remedies for removing copyright management information (CMI).

MTO argued that Playboy was required to register the unregistered photo before Playboy could make a DMCA claim. 

MTO is correct that plaintiffs ordinarily must register their copyrights before they may file an infringement claim.  But, as Playboy notes, the Complaint does not seek judgment let alone damages for copyright infringement of the unregistered photo. This representation is confirmed by a fair reading of the Complaint itself.

However, plaintiff’s failure to register its copyrighted work is not a bar to a DMCA action.  MTO relies solely on Thron v. HarperCollins Publishers, Inc., No. 01 Civ. 5437 (JSR), 2002 U.S. Dist. LEXIS 13670, 2002 WL 1733640 (S.D.N.Y. July 26, 2002). There, Judge Rakoff held that since the copyright registration was invalid, the information relating thereto did not constitute copyright management information as defined in the DMCA, and therefore plaintiff failed to state a DMCA claim by alleging digital alterations to his purportedly copyrighted photographs.  As Playboy persuasively notes, however, Thron does not address circumstances where a defendant purposefully attaches false CMI to unregistered copyright material in order to mask its misappropriation.

(Opinion pdf pages 7 – 9).

The district court denied MTO’s motion on its license and fair use arguments, too.  On a motion to dismiss for failure to state a claim, the complaint will be dismissed when the allegations in the complaint, taken as true, do not raise a claim entitling the plaintiff to relief as a result of the defendant’s alleged misconduct. 

In this case,

the existence of a license is not even suggested by anything in the Complaint itself; there is no whiff of a contract that clearly and unambiguously demonstrates the existence of a license to exploit Playboy’s copyrights,


the text of the article that accompanied the publication of Playboy’s images, standing alone, would not establish the fact-intensive defense of fair use.

(Opinion pdf pages 4 and 7).

This case is Playboy Enterprises International Inc. v. Mediatakeout.Com LLC, No. 15 Civ. 7053 (PAE), U.S. District Court, Southern District of New York.

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