In the United States, copyright owners have a number of exclusive rights, including the right to publicly display a work of visual art. This would include, for instance, the right to post a copyrighted photograph on a website. For over a decade, the prevailing theory has been that the unauthorized posting of third-party content on a website is infringement, but embedding that very same content is not. A recent decision from the Southern District of New York calls that theory into question.
At the outset, it’s worth giving a brief overview of the technology. A website is, at its core, a series of written instructions for how a web browser (e.g., Internet Explorer) should display a website. When you visit a site, the instructions tell your browser what text, images, and other content to display, where to locate that content, and how that content should be arranged on your screen. For instance, when you view a website on your computer, the instructions tell the browser to display the content differently than if you visited that same site on your phone.
With an image file, the instructions could tell the browser to pull the image from the website’s own server, or they could tell the browser to pull the image from a third-party server. In this article, we refer to the first option as “posting” (which involves an individual downloading the image and saving it to the same server as the website) and the second option as “embedding.” For consumers, the difference between a “posted” image and an “embedded” one is not apparent. In either case, the image would appear in whatever location was specified by the instructions, regardless of where the file is stored. When consumers visit a site with an embedded image, they see the full image, whether or not they requested it, looked for it, clicked on it, or otherwise.
For our purposes, the important part of the ruling is the portion dealing with embedded images. In the Ninth Circuit’s opinion, the issue of whether embedding an image constituted infringement turned on whether the image was hosted on the publisher’s own server (infringement) or a third-party server (not infringement). This is known as the “Server Test.” From that ruling, the web design industry decided that any embedding of third-party content was essentially fair game.
However, a recent opinion from the Southern District of New York held otherwise. The case of Goldman v. Breitbart News Networks LLC, et al. started with a Snapchat Story. The plaintiff (Goldman) took a photo of Tom Brady, Danny Ainge, and Kevin Durant walking along a street in New York City and posted it to a Snapchat Story. It went viral, fueling speculation that Brady was helping Ainge recruit Durant to the Boston Celtics. A variety of news websites featured articles on the topic, most of which embedded a copy of Goldman’s photo. Goldman sued, and the news organizations hinged their defense, in large part, on the familiar Server Test. Because they never actually stored a copy of the image, they argued that they could not be held liable for copyright infringement.
In rejecting the Server Test, the Court began with a detailed overview of the language and legislative history surrounding the display right. Per 17 U.S.C. § 101, to display a work is “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process.” To “transmit” a display is “to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.” A “device” or “process” is defined to include “one now known or later developed.”
In addition, the Court cited comments from the legislative history indicating that Congress did “not intend to freeze the scope of copyrightable subject matter at the present stage of communications technology.” Further, the Register of Copyrights had expressed concern that “information storage and retrieval devices when linked together by communication satellites or other means could eventually provide libraries and individuals throughout the world with access to a single copy of a work by transmission of electronic images.”
The Court also surveyed several cases from outside the Ninth Circuit that dealt primarily with other exclusive rights, such as the right to distribute a copyrighted work. In doing so, it cited a November 2017 case from the Northern District of Texas that rejected Perfect 10, holding that “[t]he text of the Copyright Act does not make actual possession of a work a prerequisite for infringement.”
Ultimately, the Court concluded that the unauthorized embedding of the plaintiff’s photograph did, indeed, infringe his right of public display. In large part, it came down to the fact that consumers did not need to take any specific volitional act to see the photo. When they visited the defendants’ sites, the image would appear just as it would if it was hosted on their own servers. In the Court’s view, “liability should not hinge on invisible, technical processes imperceptible to the viewer.”
The case is by no means settled. The Court divided the case into two phases—one to address infringement, and another to consider defenses and determine liability. In fact, the opinion notes that there are “a number of as yet unresolved strong defenses,” including “genuine questions about whether plaintiff effectively released his image into the public domain, a very serious and strong fair use defense, a defense under the Digital Millennium Copyright Act (the “DMCA”), and limitations on damages from innocent infringement.” Moreover, the defendants have already appealed, requesting an interlocutory review by the Second Circuit Court of Appeals, which is granted only in special circumstances. Given the ubiquity of embedding content on websites, and the current state of the law, now is a good time to review your use of third party content, develop a strategy for handling embedded content, and analyze the viability and strength of the company’s defenses, such as the DMCA safe harbor.
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (“Perfect 10”).
 H. Comm. on the Judiciary, 89th Cong., Copyright Law Revision Part 6: Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill, at 25 (Comm. Print. 1965).
The Leader’s Institute, LLC v. Jackson, 2017 WL 5629514 (N.D. Tex. 2017).
Jon Jekel is an Associate in the Silicon Valley office, where he advises artists, inventors, entrepreneurs, and Fortune 500 companies on business and intellectual property matters. In that capacity, he has served clients in a wide array of industries, including analytics, cosmetics, cleantech, consumer products, cloud computing, computer...
Lisa Greenwald-Swire is a Trademark and Copyright Principal in the Silicon Valley office of Fish & Richardson. Her practice focuses on global trademark counseling and prosecution including brand strategy, strategic portfolio development, licensing, and trademark rights on the...