Kaytie Hobbs, Blog Chair, University of Cincinnati Law Review
The Copyright Act confers on copyright holders the exclusive right to display their works.With the rapid development in technology, we have entered an era that allows copying another’s work to be completed quickly and easily – sometimes only needing one or two clicks. Responding to this new reality, courts have crafted different tests to apply this exclusive right in the realm of technology and the Internet.
The Ninth Circuit’s “server test,” affirmed on appeal in Perfect 10, Inc. v. Amazon.com, Inc., provides that if a computer owner stores information and then serves it to a third party, that owner is displaying another’s work in violation of the Copyright Act; however, if that computer owner does not store information, but still causes the information to materialize on third parties’ screens through framing and linking, it does not constitute display.
A district court in New York recently criticized and rejected this test in Goldman v. Breitbart News Network, LLC.There, the Court held that embedding a tweet in a web page – even though the information is not saved and stored in a server – without permission of the photographer, violates the display right of the copyright holder.
A. The Copyright Act of 1976
Congress has the constitutional authority to grant authors copyright protection for a limited time in order to promote the useful arts.Pursuant to this authority, Congress passed the Copyright Act of 1976 (the “Act”), which protects original works of authorships that are fixed in a tangible medium.Copyright holders enjoy a range of exclusive rights, including the right to display their copyrighted works publicly.
Section 101 of this Act provides definitions for several key terms. First, the Act provides guidelines when considering what constitutes a display. To “display” a work is to “show a copy of it” through any device or process.This is separate from the definition of what it means “to display or perform a work ‘publicly.’” To display a work publicly, the Act offers two qualifying situations: (1) displaying the work at a place open to the public, or anywhere a substantial number of people “outside of a normal circle of a family” and friends are gathered;” or (2) transmitting or communicating a performance or display of the work to the public as outlined in (1), or to the public, through any device or process.The transmission still exists whether the public receives the work at the same place or time, so long as those members are capable of receiving the display or performance.This second provision is referred to as the Transmit Clause. Second, a “copy” is defined as a material object that is fixed by any method.Third, a work is said to be “fixed in a tangible medium” when it is communicated for “a period of more than transitory duration.”
Unauthorized exercise of a copyright holder’s exclusive rights listed in Section 106 of the Act constitutes copyright infringement and is subject to direct liability.
B. The Server Test
The Ninth Circuit affirmed the server test proposed by the lower court in the case of Perfect 10, Inc. v. Amazon.com, Inc.On appeal, the Ninth Circuit examined whether Google infringed Perfect 10’s exclusive display rights through Google’s Image Search that showed Perfect 10’s copyrighted photos through two avenues: (1) its use of thumbnails and (2) in-line linking and framing photos.
Thumbnails are retrieved after Google Image Search responds to the text in a user’s search query by producing results that are associated with the search.These thumbnail images are stored on Google’s servers.After the user clicks on a thumbnail, the user’s web browser processes HTML instructions that then cause a window to pop up on the user’s screen.This results in the user seeing a split screen. The top displays Google’s Image Search along with the associated thumbnails and the text of the original search in the search bar.The bottom section of the screen provides the full-size image of the previously chosen thumbnail.To produce this full-sized image in the bottom window, HTML instructions are processed by the user’s browser to download the image from the original third-party’s webpage and display it under the top portion of the screen.This process is called in-line linking.Framing describes the visual of the split screen, on which a website’s information, the top portion of the screen, frames the in-line linked work, the bottom image, from the third-party’s computer.
Perfect 10 initiated this lawsuit against Google, claiming that Google’s thumbnails and in-line linked content infringed on its exclusive right to display its copyrighted images.
To prove a prima facie case of copyright infringement, a plaintiff must show ownership of the copyrighted material and a violation of an exclusive right listed in Section 106 of the Act.Perfect 10’s ownership of images was not disputed; the real question was whether Google’s actions infringed Perfect 10’s exclusive right to display those images.The resolution depended on application of the server test, as articulated in the district court.
In the preceding case, the District Court for the Central District of California considered adoption of both the incorporation test and the server test, before accepting the latter.In adopting the server test, the District Court noted that the incorporation test would create a “chilling effect” on the internet.
So, the server test provides that an accused infringer who has storeda copyrighted work on a computer, then serves that work to a third party, violates that copyright holder’s display right.The display right is not violated when the accused infringer does not store the copyrighted work before serving it to a user.This is true even in cases of framing, or in-line linking.Thus, the server test hinges on one crucial fact: whether the accused infringer has stored the copyrighted work before serving it to the user.
The Ninth Circuit relied on the definitions provided in Section 101 of the Act to justify the creation of this test. The decision referenced the statutory meanings of “display,” “copies,” and “fixed in a tangible medium.”Using these definitions, the Court concluded that an image is “fixed” when stored on a computer’s server, and that this stored image is the copy.Thus, an infringing display of a copyrighted image occurs when a computer shows a copy of an image that is fixed in that computer’s server.
Using the server test, the Ninth Circuit concluded that Google’s use of thumbnails constituted infringement of Perfect 10’s exclusive right to display its photos, while the in-line linking did not.This conclusion rested on the simple fact that Google’s servers stored the thumbnail versions of the copyrighted photos while the process of in-line linking does not involve a stored copy of those photos.This is because in-line linking and framing copyrighted photos is based not on storing the images but on the HTML process directing the user to the third-party’s computer that stores the full-size image.
While the server test indicated that Google infringed on Perfect 10’s images through storing and serving thumbnail images of copyrighted work, the Ninth Circuit found that Google was likely to succeed on its fair use defense and be absolved of liability.
C. New York District Court’s Criticism and Rejection of the Server Test
In February of 2018, the District Court in the Southern District of New York rejected and criticized the server test in Goldman v. Breitbart News Network, LLC, ultimately holding that various news outlets violated the exclusive display right of photographer Goldman by embedding into their articles his copyrighted photo of Tom Brady and Danny Ainge.
After Goldman’s initial upload to Snapchat, the image was copied and uploaded to other social media sites, including Reddit and Twitter.The defendants, consisting of online news sources, wrote articles including the tweeted photo, speculating about whether the Boston Celtics would, with Brady’s assistance, recruit Kevin Durant.Rather than copying, saving and then serving the photo from their servers, the defendants included the tweeted photo in the articles through a process called embedding.
To show photos on websites, HTML codes can either instruct a user’s browser to pull a stored image up from the website’s own server, or retrieve the image from a third-party server.Embedding photos consists of the latter; the HTML code will embed the image’s code that is on a third-party’s server to the website, creating one page that is a seamless mixture of text and photos, even if those photos are hosted on a third-party’s server.Here, the news outlets embedded the tweeted photo in their articles so that users were able to see the full-size photo without clicking on a hyperlink or a thumbnail.
Like the Ninth Circuit, this District Court began with the statutory definition of “display” – though also included the definition of displaying a work “publicly,” including the Transmit Clause.The District Court also delved into the legislative history of the Act, and highlighted the intent of the drafters of the 1976 Amendments to extend to new technology.This broad scope, the Court emphasized, applied to the exclusive right to display copyrighted work – and could be done “by any method.”
The defendants in this case argued for adoption of the server test, and urged the Court to find that providing the HTML instructions for the embedded photo was not a display of the copyrighted photo.The court expressly rejected that argument and stated that the text of the Act does not require possession of a copyrighted work to constitute infringement.The Court then referred to the Transmit Clause, which does not use the word “copy” (unlike the definition for display).However, the Transmit Clause does use the word “display.”
Because the defendants took steps to embed and show the photo on their websites, the Court found that they infringed on the exclusive display right.The Court’s rationale for rejecting Perfect 10’s server test was twofold. First, the statute’s text does not require a copy of an image to find infringement of the exclusive right to display – a fact on which the Ninth Circuit’s test rested.This Court held that the Perfect 10 holding “erroneously collapsed the display right in Section 106(5) into the reproduction right in 106(1).”To support this argument, the Court cited Section 110(5)(A) of the Act, as it referenced infringers who would not actually have copies of the copyrighted work.Therefore, the Court argued that the Act’s plain language recognized that making a copy was not a prerequisite to finding infringement of the display right.Second, the Court held that factually, the test was limited to the narrow case at hand.
Accordingly, the Court concluded that the defendants infringed Goldman’s exclusive right to display his copyrighted photo through embedding those tweets into their websites.Like the Ninth Circuit, though, this District Court noted that the defendants have strong fair use defenses.
A. The Statutory Language Favors the Server Test
The Ninth Circuit’s server test relies on a chain of definitions provided in the Act. The Act allows a copyright holder to enjoy the exclusive public display right. Naturally, one will first think to look to the definition of “display,” which requires the examiner to next define the word “copies,” and then still to define “fixed.” This is the line of reasoning the Ninth Circuit followed in Perfect 10: to display a work is to show a copy of it, which is a material item that must be fixed in a tangible medium, i.e.stored on a computer server, in order to constitute a display.
The Ninth Circuit did not give much weight to the definition of “publicly” as defined in Section 101.Using the definition of a public display leads courts to the Transmit Clause, which would indicate infringement when a display of copyrighted work is communicated by any device or process.The Ninth Circuit elaborated on this clause in only the footnote, writing that the single transmitted item was the HTML code and not the copyrighted work itself. This disregarded provision was subject to heavy criticism by the Goldman judge, who exclusively relied on this segment in the Act to determine that the embedded photo was publicly transmitted.
The Ninth Circuit did not spend much time on this issue simply because it did not need to; the plain language in the Act does not require courts to jump first to that language. Infringement of a copyright holder’s exclusive right to display a work publicly first requires that courts find there is actually a display, as a sort of threshold question; then, courts can look to the definition of publicly. Thus, there are really two inquiries that result while examining accused violations of the public display right: first, if there was a display, and second, if that display was public. Finding that there was no copy in Perfect 10, there was no need to determine whether the accused infringers displayed the copyrighted work “publicly,” because there was no true “copy” to transmit.
Further, the definition of displaying a work “publicly” appears secondary to the definition of “display.”Section 101 places quotes around the specifically defined words or phrases; instead of “displaying a work publicly,” it places quotes solely around the word “publicly.”This seems to suggest that this provision serves to clarify the required audience rather than the required action. This does not displace the previous definition of “display.”
Further compounding this view is the definition of the Transmit Clause itself, which does not provide for transmitting a copyrighted work but to transmit a displayof the copyrighted work.This is another example of the statute circling back to the definition of display, which of course, requires that a copy be made. Providing directions to the copyrighted work is not a display of the work itself. If the Transmit Clause were to be the sole definition for courts to consider, Congress would have no reason to define “display” by itself at all, especially considering that Section 106(5) is the only clause that provides a right relating to displays.
Section 106(5) preserves the copyright holder’s exclusive right to publicly display her copyrighted work; a private display will not infringe on her copyright.The most natural reading of this dictates that there are two steps to find infringement of this display right, with the corresponding explanations guiding courts on both factors. Each definition serves those two separate purposes in the Act: the first defines what constitutes a display, i.e.requiring a copy, and the second explains how that display may be communicated to the public audience. The server test reflects that.
The Copyright Act must be read as a whole; strengthening the textualist argument are other statutory provisions. The Goldman court stated that the Perfect 10 court “collapsed” the display right into the reproduction right. The reproduction right provides copyright holders the right to reproduce the material object; in the simplest of terms, it is what most people think of when they hear the word “copy.”Often, the rights listed in Section 106 will overlap; this is one of those instances.The reproduction right protects just that: the right to reproduce, or copy, the copyrighted work. There is no further requirement for displaying the work, or to communicate that display to the public. The House Report explicitly provided that these work together.
The most natural reading of the Act favors application of the server test. The Act leads courts back to the statutory meaning of “display” by peppering that language into subsequent explanations of other terms found in the Act. The very basic, fundamental requirement to display a copyrighted work is that there be a copy of the work. Because the server test implements that first requirement, it is compatible with the plain language of the Act.
B. The Server Test Will Not Damage, But Advance, Underlying Policies in Copyright Law
The Copyright Act does not seek to reward those for their labor – instead, it encourages creativity by securing to authors a limitedmonopoly in exchange for disseminating their works to the public.This monopoly will encourage others to distribute their works to the public, as they have the comfort of knowing that they will solely reap profits for their work for that specified period of time.
Copyrights, while enjoying a generous duration, are not as strong as other property rights, as the ultimate policy goal is to release the work to the public. There are numerous defenses to allow use of copyrighted work. Following the exact language of the statute to require a copy will further this policy goal in that it will allow for more people to lawfully engage in spreading information; linking and framing without fear of liability will ensure a rich and diverse curated online collection of information. By disregarding this requirement, the number of copyright infringement cases could increase exponentially and have a negative effect on people who wish to lawfully share those works (whether lawfully displaying without a copy or lawfully copying protected by a defense). Thus, the server test will not undermine the goal of copyright law to disseminate information.
A further policy goal that is specific to the display right is protecting a copyright holder’s market for production and redistribution.The server test acts as a gatekeeper to ensure that those being held liable are only those who store copies and serve them to the public without a protected purpose; even those who embed tweets, or frame images, are still either providing HTML instructions or links to the original author, which reduces the author’s harm in her market for producing and distributing her copyrighted work. The ability for a user to go directly to the source will ensure that policy remains intact.
Rejecting the server test and implementing the law applied in the Goldman case, however, would run afoul of the policies behind the Act. If infringement was found for every case involving framed or embedded work, nearly every site could be liable. Even if the use is protected by a defense (e.g. fair use), judicial resources are wasted. In order to combat that potential liability, owners of websites would have to incessantly visit any linked material to ensure it is not infringing. This burden could lead to the termination of linking and framing, on which the Internet rests; the disastrous result would lead to hoarding, rather than distribution, of information.The server test, as noted by the District Court, also provides service providers with an easy-to-follow rule that will allow easy conformity.
In essence, the server test conforms to the realities of technology and still fits within the public display right. The right to display a work publicly must display the actual work; here, only an HTML is communicated as lines of text. Only when the infringing work is never stored on the server can an online provider escape liability.
While technology has altered copyright law substantially in years, the textual requirements in the statute must prevail in infringement cases. The Ninth Circuit’s server test follows the literal language of the Copyright Act, and is consistent with the underlying policy goals for that specific display right as well as the policies underlying copyright law as a whole.
The statutory language, broken down into two essential questions for evaluating the public display right, conforms to the server test, as it ensures that one step must be hurdled before continuing to the next. Even evaluating first under the Transmit Clause will still render a failure to conform to the statute since the transmitted item must be the actual work itself, not merely a link. This test also follows the underlying policy of copyright law by ensuring that people are not afraid to link to, and therefore provide the public with, more information. It also saves valuable time in the litigation context by quickly disposing of non-meritorious claims with this simple test that everyone can understand and comply with.
Looking at the bigger picture, it is clear that the text of the statute, further compounded with the overarching, prevailing policy goals behind copyright, favors applying the server test in cases regarding framing and linking.
The Copyright Act of 1976, 17 U.S.C. § 106(5) (2018)
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)
Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585 (S.D.N.Y. 2018)
U.S. Const., art. I, § 8, cl. 8. The power granted to Congress in this clause provides: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Copyright Act of 1976, § 102(a)
Copyright Act of 1976, § 101. “To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.”
Id. The full language in (2) follows: 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 or display receive it in the same place or in separate places and at the same time or at different times.
Copyright Act of 1976, § 501(a).
Supra note 3.
Supranote 2. Perfect 10 also filed suit against Amazon.com and A9, a subsidiary of Amazon.com. Perfect 10 argued that Amazon.com was also infringing on Perfect 10’s copyrighted material because of its agreement with Google that permitted Amazon.com to in-line link to Google’s search results.
Id. at 1155.
Id. at 1156.
Id. at 1157.
Id. at 1159.
Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 838 (C.D. Cal. 2006). The incorporation test would define “display” as incorporating content on the website through linking images from the original hosting site to another, while the server test focuses on the act of storing a copy on a server. The District Court outlined issues with each test, which would either cause immunity from creating a website linking to only infringed works (in the case of the server test) or would cause liability for absolutely any website, even where the identity of the host was specified.
Id. The Court stated that adoption of the incorporation test would result in “a tremendous chilling effect on the core functionality of the web – its capacity to link, a vital feature of the internet that makes it accessible, creative, and valuable.” The opinion outlined justifications for adopting the server tests: the test’s reflection of the technological nature of the issue; the narrowness in prohibiting only direct infringement while still allowing contributory or vicarious liability; and the respect for the balance copyright law exists to protect between promoting creativity while providing information to the public
Id. at 1160.
Id. See also Nimmer, supra note 8. “By definition, “to ‘display’ a work means to show a copyof it, either directly or by means of a film, slide, television image, or any other device or process … .”An unauthorized displaydoes not constitute an infringement, unless it is done “publicly.””
Id. at 1160-61.
Id. at 1161. The Court distinguished this process from displaying a stored copy of the photo for two reasons. First, the HTML instructions do not consist of photographic images but rather consist purely of text. Because Google transmitted only the HTML address that directed a user to the third party’s webpage, it did not constitute a display of the image itself. Second, the HTML instructions gives the address of the image to the user, which does not result in creating the appearance of the photo itself. Instead, the user’s browser communicates with the server that contains the stored image which results in the image to become visible to the user. Therefore, showing photos through in-line linking is not a display because there is no stored copy of the copyrighted image.
Id. at 1176.
Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 587 (S.D.N.Y. 2018).
Id. at 586. Snapchat is a social media app. An upload to Twitter is referred to as a tweet.
Id. at 589. The Transmit Clause specifically provides that the exclusive right includes “transmit[ting] or otherwise communicat[ing] . . . a display of the work . . . to the public, by means of any device or process.”
Id. at 593.
Id. The court also noted factual differences between this case and Perfect 10, but stated its skepticism several times.
Id. The statutory definition for display requires that one “show a copy” of the work; the transmit clause, on the other hand, is found within the statutory definition for “displaying a work publicly” and does not use that same language – it does state that transmission is communicating a display of the work. See alsosupra note 52.
Supra note 52.
Id. at 594.
Id.See also Copyright Act of 1976, § 106(1), providing that the copyright holder has the exclusive right “to reproduce the copyrighted work in copies or phonorecords.”
Id. The referenced portion was § 110(5)(A) of the Act, which exempts from liability of infringement “small commercial establishments whose proprietors merely bring onto their premises standard radio or television equipment and turn it on for their customer’s enjoyment.”
Id. at 586.
Copyright Act, § 106(5) (2018).
Copyright Act, § 101 (2018)
See supranote 55
See supra note 94
See supra note 13
See Nimmer,supranote 36.
See supra note 17. The House Report provides that the reproduction right “means the right to produce a material object in which the work is duplicated, transcribed, imitated, or simulated in a fixed form from which it can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
Id. The House Report also states that a copyright holder’s exclusive rights are “cumulative and may overlap in some cases.”
See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S. Ct. 1282 (1991)
See also Cyberlaw Intellectual Property in the Digital Millennium § 5A.02. This adopts the view that framing enhances copyright policy by allowing the owners to maintain economic control over their work by controlling the server of the source. This control allows owners to create the conditions under which the work is downloaded (e.g. changing or removing the content, or requiring fees to gain access).
See Nimmer, supra note 8.
See supra note 42.