USDC, S.D. New York, February 15, 2018 

District court holds that websites’ display of embedded tweets featuring plaintiff’s photograph violated plaintiff’s exclusive right of public display, despite fact that photograph was not hosted on websites’ servers, rejecting application of Ninth Circuit’s “Server Test.”

Plaintiff Justin Goldman took a photograph New England Patriots quarterback Tom Brady with Boston Celtics’ General Manager Danny Ainge and others in East Hampton, New York, in July 2016, and uploaded the photo to his own Snapchat story. The photo went “viral” as speculation mounted that Brady would help recruit basketball star Kevin Durant to the Celtics, and was shared on Twitter and other social media platforms. Various online news outlets subsequently “embedded” (or displayed images of) tweets featuring the photograph within articles about Brady and Ainge on their websites, using HTML code to retrieve the tweets from Twitter’s servers. As a result of the embedding function, none of the websites downloaded, copied or stored the photograph on their own servers; instead, the function directed the internet browsers of users who accessed the defendants’ sites to retrieve images of the embedded tweets from Twitter and place the images alongside the text of the articles. Plaintiff sued the news outlets for copyright infringement, and the defendants moved for partial summary judgment on the issue of whether their display of the embedded tweets on their websites violated plaintiff’s exclusive right to publicly display his photograph under Section 106(5) of the Copyright Act.

On their motion for summary judgment, defendants argued that the Ninth Circuit’s “Server Test,” articulated in its 2007 decision in Perfect 10, Inc. v. Amazon, shielded them from liability because they did not host the photograph on their server. In Perfect 10, the Ninth Circuit held that whether a website publisher is directly liable for infringement turns entirely upon whether the image is hosted on the publisher’s own server. In doing so, the circuit court held that Google was liable for infringement in connection with the display of thumbnail images as part of its Google Image Search, because it hosted those images on its server, but was not liable for the full-size images accessed by clicking on the thumbnails, which were hosted on third-party servers. Plaintiff countered that Perfect 10’s Server Test is inconsistent with the purposes of the Copyright Act and does not in any event apply to cases like his. He also argued that the test’s application could have a “devastating” impact on photography and visual artwork licensing industries by eliminating incentives for websites to pay licensing fees.

The court sided with plaintiff and granted partial summary judgment in his favor. It held that “the plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.” The court emphasized that the act’s definition of public display includes transmission by “any device or process,” and that the act defines devices and processes to include ones “now known or later developed.” The act’s legislative history, the court added, indicated an intent to include within the display right “each and every method by which images … comprising a … display are picked up and conveyed.” The court reasoned that defendants’ display of the photo, irrespective of its location, constituted a public display by “any device or process” within the act’s definition. As it stated, “[E]ach and every defendant itself took active steps to put a process in place that resulted in a transmission of the photos so that they could be visibly shown. Most directly this was accomplished by the act of including the code in the overall design of their webpage; that is, embedding. Properly understood, the steps necessary to embed a Tweet are accomplished by the defendant website; these steps constitute a process. The plain language of the Copyright Act calls for no more.”

Looking to the Supreme Court’s 2014 decision in American Broadcasting Cos., Inc. v. Aereo, Inc., the court reasoned that “mere technical distinctions invisible to the user should not be the lynchpin on which copyright liability lies.” Noting that the Supreme Court rejected a form-over-function approach in holding Aereo liable for infringing broadcasters’ performance rights, despite creating a complicated infrastructure that enabled users to control what content was being transmitted, the court concluded a similarly practical approach was appropriate here.

In addition to expressing skepticism for Perfect 10’s interpretation of the Copyright Act’s display right, the court also held that “there are critical factual distinctions between Perfect 10 and this case such that … it would be inapplicable here.” Namely, “[i]n Perfect 10, Google’s search engine provided a service whereby the user navigated from webpage to webpage, with Google’s assistance,” which the court held “is manifestly not the same as opening up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not.”

Finally, the court dismissed the concerns of defendants and their amici curiae that a decision in favor of plaintiff would “radically change linking practices, and therefore transform the internet as we know it.” It stated that defendants have several outstanding “strong defenses to liability” that would be addressed at later stages of the case, including whether the photograph was released into the public domain, whether defendants engaged in fair use — a “very serious and strong” defense, according to the court — and whether they were innocent infringers.