Vondran Legal® Copyright Essentials - Image Infringement and the "Server Test"

Introduction

Photographers have a right to protect their copyrights from being infringed.  But, just how far does that go, and can websites and platforms like Instagram, YouTube, Amazon, and other be liable for direct copyright infringement or contributory copyright infringement (secondary liability) for allowing infringing images, photos, and videos to be displayed on their websites where the content is not actually stored by these companies but rather stored on a third-party hosting site?  

This blog looks at some recent case law in the 9th Circuit, which, for now, follows the "server test" in holding that sites like Amazon and Instagram are not liable for copyright infringement where they do not host the infringing content on their servers (thus, as the courts hold, there is no "copy" being made and thus no violation of the copyright holders "exclusive right to display copyrighted content)."

The 9th Circuit courts focus on whether the content is stored on their servers, and if not, they are only providing "access" to the copyrighted content, which apparently is not deemed an infringement (although to me this seems to be an improper "distribution" of the copyright).

Courts outside the 9th Circuit do not have such deference for the "embedding company" (ex. Instagram or Amazon) and would allow for infringement actions. See cases cited below.

There is also a pending question about whether allowing access to videos (ex., on YouTube) amounts to allowing "public performance" of the copyrighted content, including streaming content, which could result in an infringement action.

For now, the 9th Circuit seems to be fairly well settled unless the case makes it up to the United States Supreme Court.

Exclusive "Bundle of Rights" afforded to copyright holders

The rights granted to the copyright holder are set forth in 17 U.S.C. 106 which include:

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: 

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly;

and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

At issue was #5 (the right to display pictoral works and images).

Perfect 10, Inc. v. Amazon.com, Inc. (9th Cir. 2007) 487 F.3d 701, 710.)

Here are a few snippets from the first case from 2007 that discussed the so-called "server-test" finding no liability for copyright infringement where Google did not host the allegedly infringing images on their servers.

• In this appeal, we consider a copyright owner's efforts to stop an Internet search engine from facilitating access to infringing images. Perfect 10, Inc. sued Google Inc., for infringing Perfect 10's copyrighted photographs of nude models, among other claims. Perfect 10 brought a similar action against Amazon.com and its subsidiary A9.com (collectively, "Amazon.com").
  
  

• Perfect 10 markets and sells copyrighted images of nude models. Among other enterprises, it operates a subscription website on the Internet. Subscribers pay a monthly fee to view Perfect 10 images in a "members' area" of the site. Subscribers must use a password to log into the members' area. Google does not include these password-protected images from the members' area in Google's index or database.

• In this case, Perfect 10 argued that Google and Amazon were liable for copyright infringement because when their search engines displayed thumbnail images of Perfect 10's copyrighted photographs, it facilitated access to those images. They claimed that by displaying these thumbnails, Google and Amazon were helping users find and view infringing material.
  
  
• On the other hand, Google argued that its search engine was simply providing links to websites where the images could be found and viewed, but it did not host or store any of the infringing content itself. Additionally, they claimed that their use of thumbnail images fell under fair use as it was transformative and served a different purpose than the original copyrighted work.
  
  
• How google works:  

  Google's computers, along with millions of others, are connected to networks known collectively as the "Internet." "The Internet is a world-wide network of networks . . . all sharing a common communications technology." Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F. Supp. 1231, 1238 n.1 (N.D. Cal. 1995). Computer owners can provide information stored on their computers to other users connected to the Internet through a medium called a webpage. A webpage consists of text interspersed with instructions written in Hypertext Markup Language ("HTML") that is stored in a computer. No images are stored on a webpage; rather, the HTML instructions on the webpage provide an address for where the images are stored, whether in the webpage publisher's computer or some other computer. In general, webpages are publicly available and can be accessed by computers connected to the Internet through the use of a web browser.

  Google operates a search engine, a software program that automatically accesses thousands of websites (collections of webpages) and indexes them within a database stored on Google's computers. When a Google user accesses the Google website and types in a search query, Google's software searches its database for websites responsive to that search query. Google then sends relevant information from its index of websites to the user's computer. Google's search engines can provide results in the form of text, images, or videos.

  The Google search engine that provides responses in the form of images is called "Google Image Search." In response to a search query, Google Image Search identifies text in its database responsive to the query and then communicates to users the images associated with the relevant text. Google's software cannot recognize and index the images themselves. Google Image Search provides search results as a webpage of small images called "thumbnails," which are stored in Google's servers. The thumbnail images are reduced, lower-resolution versions of full-sized images stored on third-party computers.

  When a user clicks on a thumbnail image, the user's browser program interprets HTML instructions on Google's webpage. These HTML instructions direct the user's browser to cause a rectangular area (a "window") to appear on the user's computer screen. The window has two separate areas of information. The browser fills the top section of the screen with information from the Google webpage, including the thumbnail image and text.

  The HTML instructions also give the user's browser the address of the website publisher's computer that stores the full-size version of the thumbnail. By following the HTML instructions to access the third-party webpage, the user's browser connects to the website publisher's computer, downloads the full-size image, and makes the image appear at the bottom of the window on the user's screen.

  Google does not store the images that fill this lower part of the window and does not communicate the images to the user; Google simply provides HTML instructions directing a user's browser to access a third-party website. However, the top part of the window (containing the information from the Google webpage) appears to frame and comment on the bottom part of the window. Thus, the user's window appears to be filled with a single integrated presentation of the full-size image, but it is actually an image from a third-party website framed by information from Google's website. 

  The process by which the webpage directs a user's browser to incorporate content from different computers into a single window is referred to as "in-line linking." Kelly v. Arriba Soft Corp., 336 F.3d 811, 816 (9th Cir. 2003). The term "framing" refers to the process by which information from one computer appears to frame and annotate the in-line linked content from another computer. 

   Google also stores webpage content in its cache. For each cached webpage, Google's cache contains the text of the webpage as it appeared at the time Google indexed the page, but does not store images from the webpage. 

  Google may provide a link to a cached webpage in response to a user's search query. However, Google's cache version of the webpage is not automatically updated when the webpage is revised by its owner. So if the webpage owner updates its webpage to remove the HTML instructions for finding an infringing image, a browser communicating directly with the webpage would not be able to access that image. However, Google's cache copy of the webpage would still have the old HTML instructions for the infringing image.

  Unless the owner of the computer changed the HTML address of the infringing image, or otherwise rendered the image unavailable, a browser accessing Google's cache copy of the website could still access the image where it is stored on the website publisher's computer. In other words, Google's cache copy could provide a user's browser with valid directions to an infringing image even though the updated webpage no longer includes that infringing image.

  Google also raises an affirmative defense under title II of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512. Congress enacted Title II of the DMCA "to provide greater certainty to service providers concerning their legal exposure for infringements that may occur in the course of their activities." Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (internal quotation omitted). 

  Sections 512(a) through (d) limit liability for (respectively):

  "(1) transitory digital network communications;

  (2) system caching;

  (3) information residing on systems or networks at the direction of users;

  and

  (4) information location tools."

  A service provider that qualifies for such protection is not liable for monetary relief and may be subject only to the narrow injunctive relief set forth in section 512(j). 17 U.S.C. § 512(a). In order to obtain preliminary injunctive relief beyond  is allowed by title II of the DMCA, Perfect 10 must also demonstrate a likelihood of overcoming Google's defenses under title II of the DMCA.

  Perfect 10 claims that Google's search engine program directly infringes two exclusive rights granted to copyright holders: its display rights and its distribution rights. "Plaintiffs must satisfy two requirements to present a prima facie case of direct infringement:

  (1) they must show ownership of the allegedly infringed material

  and

  (2) they must demonstrate that the alleged infringers violate at least one exclusive right granted to copyright holders under 17 U.S.C. § 106." Napster, 239 F.3d at 1013; see 17 U.S.C. § 501(a).

  Even if a plaintiff satisfies these two requirements and makes a prima facie case of direct infringement, the defendant may avoid liability if it can establish that its use of the images is a "fair use" as set forth in 17 U.S.C. § 107. See Kelly, 336 F.3d at 817.

• Courts Holding: 

  In considering whether Perfect 10 made a prima facie case of violation of its display right, the district court reasoned that a computer owner that stores an image as electronic information and serves that electronic information directly to the user ("i.e., physically sending ones and zeroes over the [I]nternet to the user's browser," Perfect 10, 416 F. Supp. 2d at 839) is displaying the electronic information in violation of a copyright holder's exclusive display right. see 17 U.S.C. § 106(5).

  Conversely, the owner of a computer that does not store and serve the  electronic information to a user is not displaying that information, even if such owner in-line links to or frames the electronic information. The district court referred to this test as the "server test." 

Bottom line:  The embedded content was not infringing because the embedding website (Google) does not store a copy of the underlying image on their own servers. Thus, they could not infringe the copyright owners exclusive right to display copyrighted content.

Hunley vs. Instagram, LLC - 73 F.4th 1060 (9th Circuit - 2023) case law

Following the Perfect 10 cases came the Hunley case which essentially affirmed the Perfect 10 case affirming the server-test and denial of liability for copyright infringement on the defendant.  Here are a few snippets from this case:

The Copyright Act grants authors the exclusive right "to display the copyrighted work publicly." 17 U.S.C. § 106(5). To infringe this exclusive right to public display, the infringer must "show a copy of [the work], either directly or by means of a film, slide, television image, or any other device or process." 17 U.S.C. § 101 (definition of "display"). The Copyright Act defines "copies" as "material objects . . . in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Id. (definition of "Copies"). [**16]  For copyright purposes, "copy" does not necessarily mean a duplicate of the original, but includes the original itself: "The term 'copies' includes the material object . . . in which the work is first fixed." Id. (definition of "Copies"). And "[a] work is 'fixed' in a tangible medium of expression when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." Id. (definition of "fixed").

To perform or display a work "publicly" means

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance [**17]  or display receive it in the same place or in separate places and at the same time or at different times.

17 U.S.C. § 101 (definition of "publicly"). Part (2) of this definition is know as the Transmit Clause. 

To "transmit" a display means "to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent." Id. (definition of "transmit"). By this definition, an internet communication of an image necessarily implicates the Transmit Clause. Perfect 10, 508 F.3d at 1161 n.7. A transmitted image is "fixed" for copyright purposes "if a fixation of the work is being made simultaneously with its transmission." 17 U.S.C. § 101 (definition of "fixed").  In sum, infringing the exclusive right of public display requires the transmission of a display. For a display to be actionable, it must display a copy. A copy means either an original or a duplicate that is fixed, and fixation requires embodiment in a perceivable format.

We interpreted the Copyright Act's fixation requirement and found that an image is "fixed in a tangible medium of expression" when it is "embodied (i.e., stored) in a computer's server, (or hard disk, or other storage device)." Id. at 1160 (citing MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 517-18 (9th Cir. 1993)). [**19]  Applying that interpretation, we concluded that a "computer owner shows a copy 'by means of a . . . device or process' when the owner uses the computer to fill the computer screen with the photographic image stored on that computer." Id. (quoting 17 U.S.C. § 101. And "a person displays a photographic image by using a computer to fill a computer screen with a copy of the photographic image fixed in the computer's memory." Id. This requirement that a copy be "fixed in the computer's memory" has come to be known as the "Server Test." See id. at 1159 ("The district court referred to this test as the 'server test.'") (quoting Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 838-39 (C.D. Cal. 2006)); Free Speech Sys., LLC v. Menzel, 390 F. Supp. 3d 1162, 1171 (N.D. Cal. 2019).

Applying the Server Test to the facts, we concluded that Google's in-line linking (what we now call embedding) did not display a "copy" of Perfect 10's copyrighted images as that term is defined in the Copyright Act. Id. at 1160-61. Because Google did not store a copy of the full-size images, but merely embedded them and allowed them to be displayed alongside its search results, "Google does not have a copy of the images for purposes of the Copyright Act." Id. Without a copy on its servers, "Google transmits or communicates only an address which directs a user's browser to the location where a copy of the full-size image is displayed. Google does not communicate a display of the work itself." Although "Google may [have] facilitate[d] the user's access to infringing images," we concluded that "such assistance . . . does not constitute direct infringement." 

We have subsequently applied the Server Test outside the search-engine context. For example, in Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021), a photographer sued a storage-service website over its use of his photo of the Indianapolis skyline. Although the image was not shown directly on Wilmott Storage Services's website, it was visible through a "reverse image search." 

Because it was "undisputed" that the infringing photos were stored on Wilmott's own server, "Wilmott transmitted, and therefore displayed, the Indianapolis photo without Bell's permission." We concluded that the storage and display was sufficient to hold Wilmott directly liable under the Copyright Act. 

We have also applied the Server Test to blogs, see Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 978 (9th Cir. 2011) (noting that "Blogger account holders may upload images from the web onto Google's server in order to post them on their blogs, or may use a hyperlink to images hosted on other servers."), and to online bulletin boards, Evox Prods., LLC v. Verizon Media, Inc., No. 21-56046, 2022 U.S. App. LEXIS 33551, 2022 WL 17430309, at *1-2 (9th Cir. Dec. 6, 2022) (unpublished) (holding Verizon liable for infringing the display right when it stored the image on its Yahoo Autos and Tumblr servers after its license with copyright owners had expired).

Holding:  To assert secondary liability claims against Instagram, Hunley must make the threshold showing "that there has been direct infringement by third parties." Oracle Am., Inc., 971 F.3d at 1050. Time and BuzzFeed wrote the HTML instructions that caused browsers to show Hunley and Brauer's photographs on Time and BuzzFeed websites. However, under Perfect 10 these instructions did not constitute "display [of] a copy." 

Rather, Instagram displayed a copy of the copyrighted works Hunley posted on its platform, and the web browser formatted and displayed the images alongside additional content from Time and BuzzFeed. Because BuzzFeed and Time embedded—but did not store—the underlying copyrighted photographs, they are not guilty of direct infringement. See Perfect 10, 508 F.3d at 1160-61. Without direct infringement, Hunley cannot prevail on any theory of secondary liability. See Giganews, 847 F.3d at 671. As a result, Instagram is not secondarily liable (under any theory) for the resulting display. The district court did not err in dismissing this case on the basis of the Server Test.

Other courts that have upheld the server test (no liability to embedding site)

Hunley points out that other circuits have not adopted the Server Test. The statement is true, but of little use to Hunley. At least two circuits have referred to the Server Test without either endorsing or rejecting it.

In Soc'y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 55 (1st Cir. 2012), the First Circuit cited Perfect 10's Server Test when it noted that the infringing images "were embodied in a medium (here, the computer server and internet) where they could be perceived . . . by those who accessed the server."

The Gregory court declined to adopt or reject the Server Test:

Although the question of whether a computer has "displayed" a copyrighted work may be a difficult one in other contexts, see, e.g., Perfect 10, 508 F.3d at 1160-62, it is beyond question here that the Archbishop has "displayed" the Works on his website. We need not delineate the outer bounds of the scope of the term "display" where, as here, the fact that the Works were "displayed" on the Archbishop's website is undisputed.

Similarly, the Seventh Circuit cited with approval Perfect 10's distinction between direct and secondary infringement in Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012), a public performance case. The Flava Works court observed that "myVidster is giving web surfers addresses where they can find entertainment." Citing Perfect 10 and offering analysis consistent with the Server Test, the court stated:

By listing plays and giving the name and address of the theaters where they are being performed, the New Yorker is not performing them. It is not "transmitting or communicating" them. Is myVidster doing anything different? To call the provision of contact information transmission or communication and thus make myVidster a direct infringer would blur the distinction between direct and contributory infringement and by doing so make the provider of such information an infringer even if he didn't know that the work to which he was directing a visitor to his website was copyrighted.

Other jurisdictions hold the other way (liability to embedding site)

District courts outside the Ninth Circuit have often rejected the server test and have instead held that any embedding websites were liable for direct infringement. 

The Hunley court also noted the following:

Although no circuit has disapproved of Perfect 10, several district courts have either rejected or limited the Server Test. See, e.g., McGucken v. Newsweek LLC, 2022 U.S. Dist. LEXIS 50231, 2022 WL 836786 (S.D.N.Y 2022) (rejecting the Server Test); Nicklen v. Sinclair Broad. Grp., Inc., 551 F. Supp. 3d 188 (S.D.N.Y 2021) (rejecting the Server Test); Goldman v. Breitbart, 302 F. Supp. 3d 585, 586 (S.D.N.Y 2018) (holding that publishing an embedded tweet featuring Tom Brady was sufficient for direct infringement, even if Twitter did not store or host the infringing image); Leader's Inst., LLC v. Jackson,, 2017 U.S. Dist. LEXIS 193555, 2017 WL 5629514 (N.D. Tex. Nov. 22, 2017) ("[t]o the extent Perfect 10 makes actual possession of a copy a necessary condition to violating a copyright owner's exclusive right to display her copyrighted works, the Court respectfully disagrees with  the Ninth Circuit.").

Question:  Will the server test apply to embedded videos?  In addition, while Hunley confirms that the server test applies to online displays of images, it is less clear that it applies to online streaming of videos or audio. As the Ninth Circuit explained, the server test protects websites that embed images because they do not display a "copy" of the image, and a display requires a copy—but the performance of an audiovisual work does not require a copy (per the Aero case below)

Attorney Steve® Tip:  websites that rely on embedding third-party stored content should proceed with caution, and should consider carefully assessing the strength (or weakness) of other defenses like fair use before embedding content.

American Broadcasting Cos. v. Aereo, Inc.,

This was another case cited by the Plaintiff in Hunley.  The court drew the distinction between the right of display versus the right of public performance.

573 U.S. 431 (2014), was such an intervening decision. Aereo concerned whether a company's device that employed numerous small antennae, with each antenna receiving and transmitting television broadcasts to an individual subscriber, was "publicly performing" the broadcasts under the Copyright Act. In holding that it was, the Supreme Court emphasized high-level practicalities over "under the hood" technicalities, refusing to allow a technological "difference, invisible to subscriber and broadcaster alike," to "transform a system that is for all practical purposes" an infringer into a noninfringer. Aereo, 573 U.S. at 444.

However, infringing the public display right requires an underlying copy. By definition, displaying a work publicly requires that the infringer display a copy of the work, id. § 101 (definition of "display"); and transmission of a display means that someone has transmitted a copy of the work "to the public." Id. (definition of "To perform or display a work 'publicly'").

However, to infringe the public performance right, the infringer need not show or perform a copy of the underlying work. Id. § 101 (definition of "perform").

This difference between these two rights are significant in this case. 

Perfect 10 and Aereo deal with separate provisions of the Copyright Act—Perfect 10 addressed the public display right, and Aereo concerned the public performance right. In Perfect 10, we analyzed what it meant to publicly display a copy in the electronic context. See Perfect 10, 508 F.3d at 1161. 

By contrast, in Aereo the Court did not address what it means to transmit a copy, because the public performance right has no such requirement. See Aereo, 573 U.S. at 439-44. In other words, regardless of what Aereo said about retransmission of licensed works, Perfect 10 still forecloses liability to Hunley because it answered a predicate question: whether embedding constitutes "display" of a "copy." Perfect 10, 508 F.3d at 1160.

Aereo may have clarified who is liable for retransmitting or providing equipment to facilitate access to a display—but unless an underlying "copy" of the work is being transmitted, there is no direct infringement of the exclusive display right. Thus, Perfect 10 forecloses Hunley's claims, even in light of Aereo.

Bottom Line: The decision protects Instagram, at least for now, against claims of copyright infringement 

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