In 2007, the Ninth Circuit adopted the “server test” in the case of Perfect 10, Inc v Amazon.com, Inc.

In that case, Perfect 10 sued Google for allegedly infringing Perfect 10’s copyrighted photos of nude models.

The district court, in that case, applied what it called the “server test”:

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,” is displaying the electronic information in violation of a copyright holder’s exclusive display right. 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 inline links to or frames the electronic information.

Applying this test, the district court concluded that

Perfect 10 was likely to succeed in its claim that Google’s thumbnails constituted direct infringement but was unlikely to succeed in its claim that Google’s in-line linking to full-size infringing images constituted a direct infringement

The Ninth Circuit agreed.

However, two photographers recently challenged this test in copyright infringement suits against Instagram.

In Hunley et al v Instagram LLC, Plaintiffs Alexis Hunley and Matthew Brauer (collectively, Hunley) claimed that

an Instagram feature (an “embedding tool”) enables third-party websites to display copyrighted photos or videos posted to an Instagram account.  And according to Hunley, offering this tool makes Instagram secondarily liable for those third parties’ copyright infringement.

In the complaint, the plaintiffs alleged:

Instagram misled the public to believe that anyone was free to get on Instagram and embed copyrighted works from any Instagram account, like eating for free at a buffet table of photos, by virtue of simply using the Instagram embedding tool.

Instagram moved to dismiss and a district court judge in Northern California granted the motion, applying the server test:

Because they do not store the images and videos, [Instagram does] not “fix” the copyrighted work in any “tangible medium of expression.”  Therefore, when they embed the images and videos, they do not display “copies” of the copyrighted work.

However, just a few weeks after Instagram filed its successful motion to dismiss, the US District Court for the Southern District of New York refused to adopt the server test in a different case.

In Nicklen v Sinclair Broadcast Group, et al, as the court noted,

Plaintiff Paul Nicklen captured footage of a starving polar and posted the video to his Instagram and Facebook accounts. Dozens of news outlets and online publishers, including Sinclair Broadcast Group, Inc. and its affiliates (collectively, the “Sinclair Defendants”), embedded the video in online articles without first obtaining a license. Nicklen then sued the Sinclair Defendants for copyright infringement. The Sinclair Defendants now move to dismiss the Second Amended Complaint, arguing that embedding a video does not “display” the video within the meaning of the Copyright Act and that the video’s inclusion in an article about the video’s popularity was fair use.

The court said that the Perfect 10 decision wasn’t part of an ’unbroken line of authority” and hadn’t been widely adopted outside the Ninth Circuit.

As the court discussed,

Under the Copyright Act, “[t]o ‘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 non-sequentially.” 17 U.S.C. § 101. A device or process is defined as “one now known or later developed,” id., and to show means “to cause or permit to be seen.” …. Thus, under the plain meaning of the Copyright Act, a defendant violates an author’s exclusive right to display an audiovisual work publicly when the defendant without authorization causes a copy of the work, or individual images of the work, to be seen — whether directly or by means of any device or process known in 1976 or developed thereafter.

The court didn’t agree with Sinclair that “embedding is not display” and thus denied the motion to dismiss.

Many media companies have relied on the server test for years and based on their business models on being allowed to embed images. The Nicklen case makes such an assumption risky — at least outside of the Ninth Circuit.

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