Most people involved with website development or social media understand that it is legally dangerous to download content, such as a copyrighted photograph, from a third-party web location and then post it so that others can view it, recognizing that the activity might violate reproduction and public display rights. However, ever since the 2007 opinion of the Ninth Circuit in Perfect 10, Inc. v. Amazon.com, Inc., they have also assumed that the practice of embedding (or “framing”) content from an external source within their site – so that customers can see what the third-party has posted – does not involve a reproduction nor a public display, and so is lawful, barring another reason for infringement, such as contributory liability. However, on February 15, 2018 a New York district court judge – in Goldman v. Breitbart News Network – challenged the reasoning of Perfect 10, and she concluded that one who embeds content may be engaged in a public display, thus making the practice far more risky. Since the practice of embedding copyrighted content is now so widespread, it is vital that the courts find some consistency in their treatment, but as with so many new technological innovations, the language of the Copyright Act may not clearly provide the appropriate answers.
In Perfect 10, several individuals downloaded copyrighted photos from Perfect 10’s private “members only” website, and then posted them on their own publicly available websites so that anyone could freely view them. Google’s image search engine reproduced the photographs and displayed thumbnails of them to help users find the full-sized versions on the Web. At the time of the lawsuit, when users clicked on a thumbnail, Google would show them the full web page that contained the image in a scrollable and resizable frame within the Google ecosystem. Perfect 10 sued, claiming that Google unlawfully reproduced and displayed its images as thumbnails, but more importantly here, also alleged that Google violated its public display rights by framing the websites that included its copyrighted photographs.
To begin, it should be clear that the originating website operators were engaged in illegality by reproducing and displaying the photographs without authority. The question in Perfect 10 was about Google’s responsibility for helping its customers find and see the infringing images. Regarding the thumbnails, the Ninth Circuit determined that Google’s actions were a fair use, relying on it previous ruling in Kelly v. Arriba Soft Corp. The issues regarding the embedded images, though, caused the court more consternation, because it was forced to examine the behind-the-scenes technology that underlies website development to reasonably address it. This, of course, took it into the world of HTML code and dynamic programming practices, a topic beyond the scope of this piece. For now, though, it is enough to think of websites as providing a series of instructions that tell a browser where on the web to find various pieces of content and how to arrange them on the screen. As a website designer, these may be elements that the designer placed in separate server locations or it could be content placed by third parties in publicly available spots. Thus, unlike a traditional book which is static and hard to edit, website designers can easily make changes by, for instance, adding content to new separate server locations, altering existing content pieces, finding new content, or changing the instructions to reorganize the collection of elements. So, in a sense, when you go to a website, your browser is actually following coded instructions to seek out various web addresses, and request transmissions of content from those addresses to specified locations on your personal device’s screen so that you can see what the designer intends.
When the designer includes, or embeds, an element from a third-party source, the million-dollar question is who is actually making the transmission that ultimately is displayed on the customers’ screens. Or another way to think about this question is to ask whether the third-party, by posting the content, is making the display or whether the website, where customers go to see the content, is doing it. Based on experience in the physical world, the latter may be the more immediate choice, since the natural expectation is that what one sees at a location is displayed by that location. According to this view, the website incorporates external elements into designated locations on the screen, and then makes the display at the site. For this reason, the underlying concept is sometimes called the Incorporation Test.
The Ninth Circuit, though, effectively took the position that the display is made from the server address where the content originates, and that the browser merely tells the computer to select that display so that visitors can see it on their screens. Logically, this has been termed the Server Test. The court reached its conclusion by heavily relying on the statute which, in part, defines the act of displaying as showing a copy of the work. It then jumped to the conclusion that one had to be in possession of the copy to make the display, and so ruled that Google, which did not have possession of the copy, could not have done it. Rather, the display was made from the computer that housed the content. Despite this fact, the court recognized that Google could be liable as a contributory infringer if it knew that its site was accessing the infringing photos and failed to take steps that could have possibly prevented further damage.
In Goldman v Breitbart News, Judge Katherine Forrest ruled that the Ninth Circuit was wrong to rely on the Server Test, and that a website thus can face direct liability, under particular circumstances, for making a display by embedding a copyrighted work in a website. The case involved a copyrighted image of Tom Brady, Danny Ainge and others that was first posted by the photographer as a Snapchat Story, but was soon copied by several individuals on Twitter with accompanying tweets. Breitbart News, as well as other defendants, embedded the photo on its website alongside news articles, which speculated that Tom Brady might be helping the Boston Celtics recruit Kevin Durant. The photographer sued, alleging that the defendants displayed his photo without permission.
The defendants, of course, thought it was well-settled after Perfect 10 that they could not be directly liable for making the display, based on the Server Test. However, the judge disagreed with the Ninth Circuit’s interpretation and application of the Copyright Act. Specifically, she took issue with the notion that one had to be in possession of a copy to make a display from that copy. Actually, this is probably correct. For instance, if someone were to live-stream a movie from a theater to viewers outside the theater, this would certainly be a public display, even though the infringer is not the one projecting the film. The judge then made her own strict reading of the language in the Copyright Act – specifically the definitions of pertinent words, such as “display” and “display a work publicly” – and she concluded that when a website includes an embedded photo, it is the one transmitting the display because it uses a process whereby the image is received beyond the place from which it was sent. In essence, she took the position that when a website actively takes steps to embed a display so that visitors automatically see the image at its location, then the website is directly responsible for the display at that location.
Interestingly, Judge Forrest indicated that her reasoning was heavily influenced by the Supreme Court’s decision in American Broadcasting Cos., Inc. v. Aereo, Inc., which effectively involved an over-the-air television retransmission company that tried to get around public display rights by allocating separate miniature antennae to customers on its property, so that, in theory, the customers would be the ones transmitting the displays to themselves. In effect, Aereo’s goal in devising the system was to make it appear as if the customers were making lawful private transmissions, rather than the typical outcome, which would have Aereo transmitting to the public.
Judge Forrest referenced the case to claim that invisible technological details should not be the linchpin that guides her decision, but rather she needed to consider the overall practical realities that result from the technology. In other words, judges should be careful not to give unwarranted significance to the nuances of how HTML accomplishes website goals, but instead they should pay attention to how the coding techniques might be used to get around the clear intent of the law. She also cited the dissent to demonstrate the importance of volition, and the role of the user, when addressing websites that embed content. In her view, websites that simply embed a display have the necessary volition to be held liable for making that display because the viewer does not choose to see the content; rather the content is automatically delivered by the instructions of the website developer. However, if the user actively clicks to see the display, then the user is purposely making a choice to have the server deliver the content so that it can be seen at the website. In her mind, this is what distinguishes a search engine, which requires a visitor to click a link or thumbnail before embedding the image, from a website such as Breitbart, that simply includes the image on its site. In this regard, the judge was following the lead of a district court judge in Texas that came to the same conclusion in the 2017 case, The Leader’s Institute, LLC v. Jackson. Thus, this position, which is contrary to the approach in Perfect 10, appears to be gaining traction.
Judge Forrest’s opinion is definitely well-conceived, and it has intuitive appeal, given that it provides a partial compromise between the Server and Incorporation tests. It also is perhaps more defensible than the 9th Circuit’s reasoning in Perfect 10, at least in terms of its interpretation of the strict language in the Copyright Act. Nonetheless, I am not totally persuaded that the act of providing a clickable thumbnail or link in the appropriate spot – thus requiring a customer action to fill the frame – is meaningfully different from traditional embedding when it comes to determining who is making the display, whether it be the server, the website or the viewer. The case also puts at risk many well-established embedding practices now used by websites, so one can expect significant opposition to the ruling, including a possible appeal to the Second Circuit.
Under the circumstances, I believe that the best way to make a persuasive case supporting the Server Test is to focus attention on the economic objectives that underlie display rights, which essentially are intended to give copyright owners control over the range of people who might be able to view their works. That explains why the transmission from the movie theater would be infringing, since it allows more people to see the film than the copyright owner intended to reach from that authorized location. However, a copyright owner who posts content without restrictions on an Internet server understands that anyone can view it, no matter where they may be physically located. Thus, when a website embeds that content, it does not increase the range of people who are capable of seeing it. Rather, the site is simply providing customers an additional avenue to see what the copyright owner has invited them to view already. Also, the website, by embedding content, does not diminish the control that a copyright owner has over the viewing audience for the work because he or she may always stop the display by removing the content from the source computer server. Thus, given this economic framework, the Server Test may be the more appropriate way to model the communications architecture used in website design.
Only time will tell how the courts will ultimately resolve the controversy over display rights and direct infringement. But let’s be clear that even in a world ruled by the Server Test, copyright interests may have other reasons to object to various web design techniques when developers embed their content in ways the copyright owners consider inappropriate. For instance, the website may chop or resize the content, or integrate it seamlessly with other stylistic elements or images. In this way, the website may run afoul of the copyright owner’s derivative rights, even in a dynamic website environment. (see The Future of Inline Web Designing Under Perfect 10). So here, once again, we see how new technologies challenge traditional copyright principles that were established long before the emergence of digital capabilities. The battle over display rights will be a critical first step in shaping the ways that websites can legally provide content in useful and entertaining ways. It definitely will be worth our attention.