A New York federal court judge handed a photographer a mixed result when it dismissed her copyright infringement claim but allowed her Digital Millennium Copyright Act (DMCA) allegations to move forward in a dispute that began on Instagram.

Photojournalist Matilde Gattoni, based in Italy, photographed a colorful building in Essaouira, Morocco, that included the figure of a woman in a long dress walking down an empty street. In August 2016, she placed the photograph—which has a pending copyright registration in the United States—on her Instagram page, accompanied by a copyright notice.

According to Gattoni, roughly one month later, clothing retailer Tibi copied and cropped the photograph (removing the woman) and placed it on the company’s social media page without licensing the image or obtaining her consent to use it. Tibi also removed the copyright notice, but did include a hyperlinked reference to Gattoni’s Instagram page.

Gattoni sued under two theories: copyright infringement and violation of the DMCA, which prohibits the intentional and knowing removal of copyright management information. Tibi moved to dismiss the suit, which requested statutory damages of up to $150,000 for copyright infringement and at least $2,500 and up to $25,000 under the DMCA.

U.S. District Court Judge Robert W. Sweet issued a mixed opinion, tossing the copyright claim but allowing the DMCA charge to move forward.

Although Gattoni met three of the four requirements to state a claim for copyright infringement (that the subject was an original work, that she owns the copyright in that work and that the defendant acted to infringe the copyright), she was lacking one prong of the test: that the copyright has been registered in accordance with the statute.

Courts are split on the issue of whether a work qualifies as registered under the statute when an application for copyright is pending, Judge Sweet explained. “Some courts have taken an ‘application approach,’ under which a pending copyright registration application is sufficient to satisfy Section 411(a), while others have taken a ‘registration approach,’ under which a certificate of registration issued by the Copyright Office is a prerequisite to suit.”

The U.S. Court of Appeals Second Circuit, has not addressed this question, but federal courts in the circuit have followed the registration approach, the judge said, requiring either a valid copyright registration or evidence that an application was made and registration was refused.

In granting the nature to dismiss without prejudice, the court said, “Because Gattoni has alleged only that the registration for the allegedly infringed film is pending, and because no application has been made by Gattoni to amend the Complaint if and when the Photograph became registered, Gattoni has not properly pled the pre-requisite element of a copyright infringement claim.”

Turning to the plaintiff’s DMCA claim, the court noted that whether an application for copyright remains pending is not a bar to such an action. Gattoni therefore satisfied the elements to establish a violation of the statute, as she demonstrated the existence of the copyright management information on her photograph, the removal and/or alteration of that information, and that the removal and/or alteration was done intentionally.

The presence of the hyperlinked credit tag used by Tibi in its post caused the court some hesitation but was not enough to dismiss the claim. “Certainly, the presence of a credit ‘tag’ that hyperlinks to Gattoni’s Instagram page … ‘undermines the strength of Plaintiff’s allegations regarding Defendant’s intent,’” Judge Sweet wrote. “However, the Defendant cites no authorities that ‘tagging’ the author of a Photograph conclusively means the Defendant lacks the required scienter under the DMCA.”

Drawing all reasonable inferences in Gattoni’s favor at the early stage of litigation, the court denied the motion to dismiss the plaintiff’s DMCA claim and granted her leave to amend the complaint with either a valid copyright registration or rejection of her copyright registration application.

To read the opinion in Gattoni v. Tibi, LLC, click here.

Why it matters: Gattoni’s lawsuit highlights the challenges facing copyright owners on social media and the dangers of linking to content without permission. Even Tibi’s attempt to give credit to Gattoni—with the use of the hyperlinked tag—was insufficient to keep it out of copyright trouble.