In Gordon v. Nextel Communications,^1346 the plaintiff brought suit against Nextel and its
advertising agency for copyright infringement for the unauthorized use of several of his dental
illustrations in a television commercial for Nextel’s two-way text message. The plaintiff also
claimed a violation of the CMI provisions of the DMCA based on alleged removal of the
copyright notice from the illustrations. The district court granted summary judgment on the CMI
claims on the ground that the plaintiff failed to present any evidence that the defendants
intentionally removed or altered the copyright information or that the defendants knew that the
copyright information had been removed.^1347
On appeal, the Sixth Circuit affirmed. The decision is important because the Sixth
Circuit ruled for the first time that vicarious liability may apply with respect to violations of the
CMI provisions (the rationale of the holding would presumably also apply to the anti-
circumvention provisions of the DMCA). In particular, the court held that, regardless of the
defendants’ actual knowledge of the removal or alteration of the copyright information, they
could be held vicariously liable if, just as in the case of ordinary infringement, they had the right
and ability to supervise the conduct constituting the violation and they had an obvious and direct
financial interest in the conduct.^1348
The court noted that, although the record was not clear in this regard, it was reasonable to
infer that the advertising agency retained the ability to supervise the development of the
commercial. And both defendants had direct financial interests in the exploitation of the
copyrighted materials. As a result, the court ruled that, even though the CMI provisions require
the intentional removal of CMI or the distribution of copies of works “knowing” that CMI has
been removed or altered, “it is inappropriate to permit summary judgment to be granted based on
the defendants’ lack of actual knowledge of the removal of the copyright management
information when they may be vicariously liable for its removal.”^1349 Thus, although the
plaintiff had to prove that the direct violators of the CMI provisions possessed actual knowledge
of the unauthorized change to the CMI, the plaintiff need not prove that Nextel and its
advertising agency, as vicarious infringers, had such knowledge.
Ultimately, however, the Sixth Circuit affirmed the district court’s grant of summary
judgment to the defendants on the ground that, even if the persons from whom the advertising
agency had obtained the material containing the illustrations upon which the commercial was
based had removed the copyright information from the illustrations, those persons testified
without contradiction that they believed the materials had been authorized for use in television
commercials. Accordingly, such removal was not done with reasonable grounds to know that it
would “induce, enable, facilitate, or conceal an infringement,” as required by Section
1202(b).^1350
(^1346) 68 U.S.P.Q.2d 1369 (6th Cir. 2003).
(^1347) Id. at 1370.
(^1348) Id. at 1371.
(^1349) Id. at 1372.
(^1350) Id. at 1373.