from the this-is-bad dept
Just earlier this week we noted that a judge easily laughed Playboy’s silly lawsuit out of court because merely linking to infringing content is not infringing itself. But a judge in New York, Judge Katherine Forrest, has ruled on a different case in a manner that is quite concerning, which goes against many other court rulings, and basically puts some fundamental concepts of how the internet works at risk. It’s pretty bad. In short, she has ruled that merely embedding content from another site can be deemed infringing even if the new site is not hosting the content at all. This is wrong legally and technically, and hopefully this ruling will get overturned on appeal. But let’s dig into the details.
The case involved a photographer, Justin Goldman, who took a photograph of quarterback Tom Brady on Snapchat. Somehow that image made its way from Snapchat to Reddit to Twitter. The photo went a bit viral, and a bunch of news organizations used Twitter’s embed feature to show the tweet and the image. Goldman sued basically all the news publications that embedded the tweet — including Breitbart, Vox, Yahoo, Gannett, the Boston Globe, Time and more. Now, multiple different courts around the country have said why this should not be seen as infringing by these publications. It’s generally referred to as “the server test” — in which to be direct infringement, you have to host the image yourself. This makes sense at both a technical and legal level because “embedding” an image is no different technically than linking to an image. It is literally the same thing — you put in a piece of code that points the end user’s computer to an image. The server at no point hosts or displays the image — it is only the end user’s computer. In the 9th Circuit, the various Perfect 10 cases have established the server test, and other courts have adopted it or similar concepts. In the 7th Circuit there was the famous Flavaworks case, where Judge Posner seemed almost annoyed that anyone could think that merely embedding infringing content could be deemed infringing.
But Judge Forrest has decided to carve a new path on this issue in Southern New York, teeing up (hopefully) an opportunity for the 2nd Circuit to tell her why she’s wrong. Even more troubling, she actually relies on the awful Aereo “looks like a duck” test to come to this conclusion. Let’s dig into her reasoning. The key issue here is the exclusive right to “display” a work under copyright, known as 106(5) under copyright law.
It’s also important to note that this ruling is just at the summary judgment stage, and doesn’t mean that the various publications will be found to have infringed — it just means that the court is letting the case go forward, meaning that the various publications might now raise various defenses as to why their embedding is not infringing. It’s still concerning, because given the “server test” in other jurisdictions, such a case would easily be tossed on a motion to dismiss or summary judgment because there’s no legitimate claim of copyright infringement if no direct infringement can be shown. But here, Judge Forrest argues that because an embed leads an end user’s computer to display an image, that somehow makes the publisher who included the embed code possibly liable for infringing the display right. Because it looks like a duck.
This is not a new issue by any means. I found a story from over a decade ago in which I warned that we’d see a lot more stupid lawsuits about embedding content from platforms, and have to admit I’m a bit surprised we haven’t seen more. The reason that’s the case is almost certainly because of the reliance of many courts on the server test, leading many to realize such an argument is a non-starter. Until now.
Forrest basically says that even though the image never touches the publisher’s server, and the only thing the publisher is doing is linking to an image in a manner that makes the end-user’s browser grab that image from another location and display it, it still counts as infringement — because of the Aereo ruling. If you don’t recall, Aereo involved a creative (if technically stupid) method for streaming over-the-air broadcast TV to users by setting up many local antennas that were legally allowed to receive the signals, and then transmitting them over the internet (which is also legal). But, the Supreme Court came up with a brand new test for why that’s not allowed — which we’ve called the “looks like a duck” test. The ruling found that because Aereo kinda looked like cable to the end user, the technical rigamarole in the background to make it legal simply doesn’t matter — all that matters is how things looked to the end user. Forrest argues the same is true here:
Moreover, though the Supreme Court has only weighed in obliquely on the issue, its language in Aereo is instructive. At heart, the Court?s holding eschewed the notion that Aereo should be absolved of liability based upon purely technical distinctions?in the end, Aereo was held to have transmitted the performances, despite its argument that it was the user clicking a button, and not any volitional act of Aereo itself, that did the performing. The language the Court used there to describe invisible technological details applies equally well here: ?This difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into a ?copy shop that provides patrons with a library card.??
We were worried about the wider impact of the Aereo “duck” test — and people told us it wasn’t that big a deal. Indeed, until this ruling, Aereo hasn’t been (successfully) cited very often. Many thought that the very specific nature of Aereo might limit that precedent to a very specific situation involving cable TV. This ruling suggests that the silly “duck” test may be spreading. And that’s bad, because it’s based on ignoring what’s actually happening at the technological level, in which the technology may be designed specifically to not violate any of the exclusive rights of copyright law.
Also, it should worry people greatly that courts are using this “we don’t care about what’s actually happening, we just care what it looks like” standard for judging infringement. Because to infringe on a copyright requires a very specific set of facts. And here (as with Aereo) the court is saying “we don’t care about whether or not it actually violates one of the exclusive rights granted under copyright, we only care if it looks like it infringes.” That’s… a huge change in the law, and it’s not at all how copyright law has been judged in the past. It can and will be used to hamstring, limit, or destroy all sorts of unique and useful technological innovations.
Forrest also tries to distinguish this ruling from the Perfect 10 cases and the Flava Works case — even admitting that other 2nd circuit courts have used the server test. But, she says, they were all different — doing things like only using the server test for the distribution right, but not the display right, or not really endorsing the server test and ruling on other reasons.
Forrest also points to a trademark case that involved an embedded image which was found to be infringing — but that’s entirely different. The rules for trademark infringement are completely different than the exclusive rights related to copyright. With trademark, it’s not as specific, and the use of someone else’s logo broadly (as happened in the case cited) could easily be infringing on the trademark, but that doesn’t get to the copyright question which involves much more carefully limited rights.
But, most troulbing of all, Forrest argues that the server test… is just wrong:
The Court declines defendants? invitation to apply Perfect 10?s Server Test for two reasons. First, this Court is skeptical that Perfect 10 correctly interprets the display right of the Copyright Act. As stated above, this Court finds no indication in the text or legislative history of the Act that possessing a copy of an infringing image is a prerequisite to displaying it. The Ninth Circuit?s analysis hinged, however, on making a ?copy? of the image to be displayed?which copy would be stored on the server. It stated that its holding did not ?erroneously collapse the display right in section 106(5) into the reproduction right in 106(1).? Perfect 10 II, 508 F.3d at 1161. But indeed, that appears to be exactly what was done.
The Copyright Act, however, provides several clues that this is not what was intended. In several distinct parts of the Act, it contemplates infringers who would not be in possession of copies?for example in Section 110(5)(A) which exempts ?small commercial establishments whose proprietors merely bring onto their premises standard radio or television equipment and turn it on for their customer?s enjoyment? from liability. H.R. Rep. No. 94-1476 at 87 (1976). That these establishments require an exemption, despite the fact that to turn on the radio or television is not to make or store a copy, is strong evidence that a copy need not be made in order to display an image.
Except… that’s still very different. That’s still a case where the “small commercial establishments” are showing the work. In this case — and the very reason why the server test is so important — the content in question is never on the publisher’s premises or server. It only appears on the end user’s browser, because that browser goes and fetches it.
Even more bizarre, Forrest argues that Perfect 10 and the server test are different because the image is displayed on the end user’s computer:
In addition, the role of the user was paramount in the Perfect 10 case?the district court found that users who view the full-size images ?after clicking on one of the thumbnails? are ?engaged in a direct connection with third-party websites, which are themselves responsible for transferring content.? Perfect 10 I, 416 F. Supp. 2d at 843.
In this Court?s view, these distinctions are critical.
While this doesn’t involve the end user “clicking” first to get the display, it’s really no different. It is the end user who has the allegedly infringing content displayed on their computer, not the publisher. A direct connection is made between the end user and the hosting provider (in this case Twitter). The publisher never touches the actual content. Yet, Forrest argues that they can be direct infringers.
Despite the fact that EFF and others warned the court that this ruling would would massively upset the way the internet works, Forrest doesn’t seem to believe them (or care)… because maybe fair use will protect people.
The Court does not view the results of its decision as having such dire consequences. Certainly, given a number as of yet unresolved strong defenses to liability separate from this issue, numerous viable claims should not follow.
In this case, there are genuine questions about whether plaintiff effectively released his image into the public domain when he posted it to his Snapchat account. Indeed, in many cases there are likely to be factual questions as to licensing and authorization. There is also a very serious and strong fair use defense, a defense under the Digital Millennium Copyright Act, and limitations on damages from innocent infringement.
That’s… also wrong. Yes, publishers may be protected by fair use or other defenses. But fair use is much harder to get a ruling on at an early (summary judgment) stage in a case (a few courts are starting to allow this, but it’s not all that common). Having the server test be good law would prevent a flood of these kinds of cases from being filed. Without it, people can troll media sites that embed tweets and go after them, leading to long and costly litigation, even if they have strong fair use defenses. Also, the reference above to releasing the image “into the public domain” is nonsensical. No one is arguing that the image was in the public domain. It is clearly covered by copyright.
Given what a total and complete mess this ruling will cause on the internet should it stand, I fully expect a robust appeal. The 2nd circuit can be a mixed bag on copyright, but often does a pretty good job in the end. One hopes that the 2nd circuit reverses this ruling, endorses the server test, and keeps the internet working as it was designed — where embedding and linking to content doesn’t magically make one liable for infringement.