In what is perhaps William Shakespeare's most famous play, Romeo and Juliet, Juliet asks herself: "What is in a name?" She concludes that a name is of no consequence, noting that a rose would smell the same regardless of its name and extrapolating that the family name of her love interest, Romeo, should not matter. However, due to a recent decision by the U.S. Court of Appeals for Fifth Circuit, we are not in Verona anymore. In Energy Intelligence Group v. Kayne Anderson Capital Advisors, 2020 WL 219008 (5th Cir. 2020), the court held that the filename of a document could constitute copyright management information (CMI) within the Digital Millennium Copyright Act (DMCA) and unauthorized altering or removal of it could be the basis of liability under the copyright law. This decision has significant ramifications for both copyright litigation strategies and how authors and copyright owners should name their digital files.

Copyright Management Information and the DMCA

More than two decades ago, Congress passed the DMCA in order to provide protection to copyright owners in the digital age. Microsoft v. AT&T, 550 U.S. 437, 458 (2007). Among the two most well-known provisions are: (1) the anti-circumvention provision, which provides a cause of action to copyright holders when unauthorized persons go around technological measures in order to access copyrighted works, 17 U.S.C. §1201; and (2) the CMI provision, which provides a cause of action to copyright holders when unauthorized persons attribute certain types of false information about or remove certain types of information associated with a copyrighted work. 17 U.S.C. §1202.

The latter provision, which was the subject of Energy Intelligence Group, defines "copyright management information" as certain types of information that is conveyed with a work of authorship, including: "(1) The title and other information identifying the work, including the information set forth on a notice of copyright. (2) The name of, and other identifying information about, the author of a work … . [and] (7) Identifying numbers or symbols referring to such information or links to such information." The purpose of CMI is to inform the public that something is copyrighted and to prevent infringement. Pers. Keepstakes v. Personalizationmall.com, 2012 WL 414803, *6 (N.D. Ill. Feb. 8, 2012).

This provision comes into play when an unauthorized person intentionally, knowingly, or in certain circumstances with constructive knowledge, falsely assigns, removes or alters CMI to induce, enable, facilitate or conceal copyright infringement. 17 U.S.C. §1202. Thus, a cause of action under this section of the DMCA involves allegations and proof of: (1) the existence of CMI on the work; (2) falsification, removal and/or alteration of that information; and (3) intent. Sadowski v. Roser Communications Network, 2020 WL 360815, *3 (S.D.N.Y. 2020). As the U.S. Court of Appeals for the Second Circuit has noted, with respect to the intent prong, this is a "double scienter" requirement; there must be (1) scienter of falsification, removal, or altering of CMI; and (2) scienter of infringement. Krechmer v. Tantaros, 747 Fed. Appx. 6, *9 (2d Cir. 2018).

Of particular note, a cause of action under §1202 does not require that one use any technological measures to alter CMI or that the CMI was associated via an automated copyright protection or management system. Murphy v. Millennium Radio Group LLC, 650 F.3d 295, 305 (3d Cir. 2011). Thus, although the CMI provision is within the DMCA, it is not only for works published in the digital age.

Proximity of CMI to a Work

A few years after Congress enacted the DMCA, litigants began to test the extent to which CMI information must be proximate to an infringed work to provide a cause of action under §1202. In Schiffer Pub. v. Chronicle Books, 2004 WL 2583817 (E.D. Pa. Nov. 12, 2004), the court confronted this issue with respect to a book title. At issue were 118 photographs that were contained in thirteen books that the plaintiff published. The defendant published these photographs within another book.

The plaintiff alleged copyright infringement and prevailed on that claim. It also alleged violation of the DMCA because the defendant falsely named itself as the copyright holder of the pictures within its own book and removed the plaintiff's copyright notices. The only CMI to which the Plaintiff's pointed was a copyright notice on the inside covers of its books. The court concluded that this was not proximate enough to the work at issue because it was not near or on the images themselves. Id. at 14. Thus, because the notice was at the front of the books and not on the individual photographs or the pages on which they appeared, the notice did not constitute CMI for those photographs.

Similarly, when CMI appears on a website, but it is not associated with specific works contained within the website, copying of only those works without the CMI is not necessarily a violation of the DMCA. For example, in Personal Keepsakes v. Personallizationmall.com, 975 F. Supp. 2d 920, 929 (N.D. Ill. 2013), the plaintiff alleged violation of the DMCA when the defendant copied poetry from the plaintiff's website.

The plaintiff was in the business of designing and producing gift items personalized with poetry verses for special occasions. It alleged that the defendant removed the website name and copyright notice when copying a poem, and that each of those items constituted CMI. The court held that the website name did qualify as CMI because the copyright registration at issue was not owned by the website. With respect to the copyright notice, the plaintiff's claim failed because the notice was not on the poem, instead being on the footer of website, which would imply that the website, not the poem was the subject of copyright protection. Id. at 929. See also SellPoolSuppliesOnline.com v. Ugly Pools Arizona, 344 F. Supp. 3d 1075, 1083 (D. Ariz. 2018) (copyright notice at bottom of webpage did not constitute actionable CMI because it was not conveyed with the work).

By contrast, many courts have held that CMI that is located in the gutter credit of a photograph constitutes CMI. See Murphy v. Millennium Radio Grp., 650 F.3d 295, 305 (3d Cir. 2011); Mango v. BuzzFeed, 356 F. Supp. 2d 368, 377 (S.D.N.Y. 2019) (gutter credit is CMI).

'Energy Intelligence Group'

The recent decision in Energy Intelligence Group raised a new issue with respect to the relationship between CMI and the underlying work. The plaintiff published information and news relevant to the global energy industry. 2020 WL 219008, *1. One of its publications was a daily newsletter for which customers signed subscription agreements. Id. In violation of the subscription agreement and copyright law, a partner at the defendants shared the newsletter with other employees and third parties. The license for each additional employee would have been in excess of $1,500, which the defendants did not want to pay. Id. at 2.

In addition to there being a subscription agreement that delineated permissions, each newsletter was marked with copyright notices. Id. Therefore, the defendants knew that they were violating both their agreement and copyright law. As part of their plan to conceal the violation of the subscription agreement, the defendants changed the name of the digital file from "DE [YYMMDD]" to "123." Id. at 2. The plaintiff took the position that the name of the digital file, the PDF, constituted CMI. The defendants asserted that as a matter of law, the name of a PDF was not CMI because filenames are not listed in the statute and downloading and renaming files is common in the Internet era. Id. at 11.

The Fifth Circuit disagreed, noting that the DMCA defines CMI broadly, and specifically to include, the title and other information identifying the work, the name of, and other identifying information about, the author, copyright owner or performer, and such other information as the Register to Copyrights may prescribe. Id. Consequently, the Fifth Circuit held that a PDF's filename may be CMI if it is: (1) conveyed with copies of the underlying work; and (2) contains the title and other information identifying the work. Id.

Although not discussed by the court, by definition a digital filename is always conveyed with a work—a digital work must have a filename in order to be accessed. Therefore, the first prong will always be met. With respect to the second prong, the court concluded that the filename format: "DE [YYMMDD]" qualified as information that identified the work. Id. Consequently, the filename was deemed CMI.

One can readily see how this filename identified each of the plaintiff's works and distinguished each work from others that the plaintiff created and that third parties created. However, one can also see that at least presumptively, the test that the Fifth Circuit set forth for whether a filename qualifies as CMI will not be challenging to pass. For business reasons, it is generally helpful to have unique identifiers naming a document so that one can look through an index of files as selected the desired file based on its name.

Causes of action will also require allegations of and proof of sufficient scienter, 17 U.S.C. §1202, which was easily met in Energy Intelligence Group because there was testimony and other evidence confirming that the reason for renaming documents was to hide infringement. In other cases, proof of scienter might be more challenging to find, but one can easily imagine litigators pressing deponents who change the name of files, why they are doing so, and at a minimum creating a sufficient gray area to survive summary judgement. 

Conclusion

The recent decision of Energy Intelligence Group provides an opening for redress against parties who try to alter filenames of copyrighted works with the intent of disseminating those works without a license while hiding their actions. The copyright holder will, if there is sufficient intent, be able to recover under the DMCA, provided that the filename contains a minimum amount of information that identifies the work. Therefore, copyright holders should both design a system for naming each of their works that distinguishes each work and during discovery look for actions by which infringers change the names of their works and for their reasons for doing so.

Scott D. Locke is a partner at Dorf & Nelson and chairs the intellectual property practice group.