Removal of Photographer’s “Gutter Credit” is Potentially Actionable Under DMCA

According to an opinion issued earlier this summer by the U.S. Court of Appeals for the Third Circuit (N.J.), removing the photographer’s credit from a magazine copy of his photograph before re-using it can qualify as “copyright management information” for purposes of determining whether a defendant has violated the Digital Millennium Copyright Act (“DMCA”), particularly 17 U.S.C. § 1202. Murphy v. Millennium Radio Group, No. 10-2163, 2011 U.S. App. LEXIS 11984 (3d Cir. June 14, 2011). Note that this opinion did not conclude whether or not the infringement occurred – just whether the removal of the photographer’s credit information that appeared in the “gutter” of a magazine could qualify as actionable removal of copyright management information under the DMCA. A determination of the substantive liabilities in this case has yet to be made.

Facts (according to the Third Circuit Opinion at pages 3-6)

Plaintiff Peter Murphy, a professional photographer, was hired in 2006 by New Jersey Monthly magazine to take the photograph of Craig Carton and Ray Rossi, two radio show hosts, who were to be named “best shock jocks” in an upcoming article. The photograph was risqué (showing Carton and Rossi “standing, apparently nude,” behind the radio station’s sign). Murphy retained copyright in the photo.

After the magazine was published, an employee of the radio station scanned the image (without the caption explaining the award or the gutter credit naming Murphy as the photographer) and posted it to the radio station’s web site and to another site. The radio station’s web site invited visitors to alter the image and submit it to the radio station for feedback. The radio station posted 26 of these alterations on its web site. At no time did the radio station or the hosts obtain Murphy’s permission to use the original or an altered version of the photo.

When Murphy found out about this use, his attorney sent a cease and desist letter to the radio station, demanding that the infringing use cease. Shortly thereafter, Carton and Rossi featured Murphy in one of their radio shows in which they allegedly recommended that listeners avoid doing business with him because “he would sue his business partners” and suggested that he was gay (despite his self-identification as a heterosexual married man with children of his own).


This lawsuit ensued. Murphy sued the radio station and the two hosts (collectively referred to in the opinion as “Station Defendants”) for copyright infringement under the Copyright Act, violations of § 1202 of the DMCA, and defamation under NJ law. After denying Murphy’s requests for additional discovery relating to his defamation claim, the Trial court ultimately granted the Station Defendants’ motion for summary judgment, which dismissed all of Murphy’s claims.

Murphy appealed, arguing that “by reproducing the Image on the two websites without the [magazine] credit identifying him as the author, the Station Defendants violated the Digital Millennium Copyright Act.” Id. at 9. In turn, the Station Defendants argued that the § 1202 cause of action could not survive because the gutter credit was not an “automated copyright protection or management system” – in essence claiming that the activity proscribed by § 1202 was limited only to digital information embedded within the work, not to any information that appeared “near the Image” in question. Id. at 10, 19.

Trial Court’s Opinion

In its opinion granting the Station Defendants’ summary judgment motion (Summary Judgment Opinion, ECF No. 43, Mar. 31, 2010), the trial court concluded that a “photography credit in the gutter of a print magazine . . . was in no way a ‘component of an automated copyright protection or management system'” as required by an earlier case in the same court (IQ Group, Ltd. v. Wiesner Publ., LLC, 409 F. Supp. 2d 587 (D.N.J. 2006)). Moreover, it opined that “the fact that a [magazine] employee used a software program to compose the page and insert the gutter credit does not bring this case into the scope of the DMCA.” Summary Judgment Opinion, ECF No. 43 at 6-7. Specifically, “[t]he DMCA should not be construed to cover copyright management performed by people, which is covered by the Copyright Act, as it preceded the DMCA; it should be construed to protect copyright management performed by technological measures of automated systems.” Id. at 7 (citations omitted).

The Appeal

Murphy appealed claiming numerous errors in the trial court’s opinion, among them that the court erred when it determined that § 1202 required the tampering with electronic copyright management information.

This appears to be a case of first impression. Murphy v. Millennium Radio Group, No. 10-2163, at 10-11 (3d Cir.). In its opinion vacating the trial court’s opinion and sent the case back for further proceedings, the appeals court focused its analysis of the DMCA issue largely on the issue of whether “the definition of ‘copyright management information’ should be restricted to the context of ‘automated copyright protection or management systems'” as defendants argued, and as the trial court opined. Id. at 12.

Remember that this case involves a photograph copied from its paper form – not an electronic image. Indeed, the radio station employee created the scanned copy (without copying the gutter credits or the caption that the magazine prepared). Thus, the image that the Station Defendants copied was not in electronic form when the copy was made.

However, is a digital image required in order to invoke the DMCA? Both the Station Defendants and Murphy agreed that “whatever CMI is, it is not necessary for it to be digital. For example, they concede that a bar code printed in ink on a paper label might be CMI.” Id. at 17 n.11. Their dispute focuses on whether the CMI must function “in connection with an electronic or automated copyright protection or management system” or whether it can appear in a variety of forms. Id. at 17 n.12.

The appellate court’s opinion focuses a great deal on the statutory construction of § 1201 of the DMCA (which requires the “circumvention of technological measures” – a phrase that does not appear in § 1202). In addition, the court noted that § 1202 explicitly defines copyright management information to include information ‘conveyed in connection with copies . . . of a work . . . including in digital form . . . .” In addition, nothing about the statute indicates that § 1201 and § 1202 have to be interpreted as interrelated. “Instead, to all appearances, § 1201 and § 1202 establish independent causes of action which arise from different conduct on the part of defendants, albeit with similar civil remedies and criminal penalties.” Id. at 13.

Ultimately, the appellate court concluded that “a cause of action under § 1202 of the DMCA potentially lies whenever the types of information listed in § 1202(c)(1) – (8) and ‘conveyed in connection with copies . . . .of a work . . . including in digital form’ is falsified or removed, regardless of the form in which the information is conveyed.” Id. at *22 (emphasis added). This essentially means that copying a work appearing in hard copy form by transforming it into a digital version – but omitting any credit details that appeared with the work in its hard copy form, can qualify as the basis for a cause of action under § 1202.

Further Activity in the Case

Note that this appeal only addressed whether the gutter credit information could qualify as “copyright management information,” thus permitting an application of § 1202 to the analysis. It does not address whether or not other aspects of the DMCA claim can be met, as this claim was not presented to the appellate court for consideration. It remains to be seen whether plaintiff’s claim on this cause of action can survive after this initial victory.

The appeal also addressed the copyright infringement and defamation claims, as well as the trial court’s cursory analysis of both in its Summary Judgment Opinion. Without going into detail here, the appellate court concluded that the trial court erred in finding that the Station Defendants’ use of the unaltered photograph constituted fair use (Id. at 20-27) and in declining to permit discovery into the defamation claim (Id. at 28-30). Both of these decisions were vacated and the case has been remanded for further proceedings.

The next scheduled event on the trial court’s docket – now that the case has been remanded to the lower court for further proceedings – is a status conference set for September 14, 2011.  ECF No. 56, Aug. 31, 2011.  It appears that during a Rule 16 scheduling conference held on August 30, the parties mentioned pending settlement discussions, as correspondence sent to the court indicates that additional discussions will be held on September 9.  Id