IP Law Daily Embedding tweets with Tom Brady image infringed photographer’s display right
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Friday, February 16, 2018

Embedding tweets with Tom Brady image infringed photographer’s display right

By Thomas Long, J.D.

News media companies—including Breitbart, Time, and Gannett—infringed a photographer’s copyrighted photo of New England Patriots quarterback Tom Brady when they caused embedded tweets containing the photo to appear on their websites, the federal district court in New York City has decided. The media companies’ actions violated the photographer’s exclusive right to display the photo, and the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) did not shield them from liability for infringement, the court said. Partial summary judgment was granted in the photographer’s favor (Goldman v. Breitbart News Network, LLC, February 15, 2018, Forrest, K.).

Plaintiff Justin Goldman took a photo of Tom Brady, Boston Celtics general manager Danny Ainge, and others on the street in East Hampton, New York, on July 2, 2016. Goldman uploaded the photo to his Snapchat Story, a social media platform on which the photo was available to view for only 24 hours. The photo then went "viral" on several social media platforms and finally ended up in tweets posted by several users. The defending media companies—operators of news outlets and blogs—published articles online featuring the photo. Each of the defendants’ websites prominently featured the photo by "embedding" a tweet containing it into articles they released over the course of the next two days. The articles were focused on the question of whether the Celtics would successfully recruit player Kevin Durant, and if Tom Brady would help seal the deal. Goldman filed suit for copyright infringement against the media companies.

The court explained that the process of "embedding" an image entailed adding a certain code to a webpage’s HTML code, causing the image, which was hosted on a third-party site, to appear on the webpage. The code directed the user’s browser to the third-party server to retrieve the image. The result was a seamlessly integrated webpage of text and images, although the images could be hosted in varying locations. In this case, none of the defendants actually downloaded the photo from Twitter, copied it, and stored it on their own servers.

The court also explained that, although concepts like tweeting and embedding were unknown when the Copyright Act of 1976 was drafted and enacted, the legislative history indicated that Congress intended the copyright protected conferred by the 1976 Act to broadly encompass new technologies. Specifically, "Congress cast a very wide net" in considering the display right—the right implicated in this case. Congress intended to include each and every method by which images comprising a display were picked up and conveyed to the public, the court said. Making reference to the Supreme Court’s decision in American Broadcasting Cos., Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014)—which involved infringement by a streaming video provider of television broadcasters’ exclusive right to publicly perform their copyrighted works—the court noted that the technologically innovative methods used by Aereo did not absolve it from infringement liability.

The defendants argued that the scope of the display right should be limited by the so-called "Server Test" applied by some jurisdictions, particularly the Ninth Circuit. Under the Server Test, a website publisher’s liability for infringement depended on whether the image at issue was hosted on the publisher’s own server or was embedded or linked from a third-party server. The court disagreed with the defendants, stating that the Server Test was not the correct application of the law with regard to the facts of this case. First, the court noted that most cases in the Southern District of New York in which courts had adopted the Server Test did not involve the display right, but other rights, such as the distribution right. The only case in the district that involved the display right offered only a simple factual statement of the test; the court in that case denied summary judgment based on material disputes as to the content of the allegedly infringing images. Second, in a trademark decision rendered in the district, the court had held that a defendant was liable for "framing" the plaintiff’s logo on its website, giving emphasis to the fact that there was a "seamless presentation" on the defendant’s site. Finally, the court noted that other jurisdictions had rejected the Server Test entirely.

In the court’s view, the physical location of the photo at issue in this case did not determine liability under 17 U.S.C. §106(5) for violation of the exclusive display right. The court rejected the defendants’ argument that, despite the seamless presentation of the Brady photo on their webpages, they simply provided "instructions" for users to navigate to a third-party server on which the photo resided. There was no basis for a rule that allowed 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. Furthermore, even if the court were to find the Server Test consistent with the Copyright Act, there were factual differences from the cases in which it had been applied, making it inapplicable here.

The Copyright Act did not state or suggest that possession of an image was necessary in order to display it, the court said. Section 101 provided that displaying a work publicly meant to transmit a display of the work by means of any device or process, including devices and processes developed after the statute was enacted. The defendants took active steps to display the images, according to the court. They had to specifically and deliberately place lines of code in their webpage instructions to cause the Brady photo to appear on their webpages, without requiring users to take any action, such as clicking on a link or a thumbnail. The steps required to embed the image on the defendants’ websites constituted a "process" for purposes of the Act.

With respect to the Server Test, the court noted that the holding of the case in which the doctrine was first described—Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)—hinged on making a "copy" of the image to be displayed, with the copy being stored on the defendant’s server. The Ninth Circuit in Perfect 10 said that it was not conflating the display right in Section 106(5) with the reproduction right in Section 106(1), but in the opinion of the Southern District of New York, that was exactly what the Ninth Circuit did. Even if the Ninth Circuit correctly interpreted the Copyright Act, the holding in Perfect 10 was heavily informed by two factors: that the defendant operated a search engine, and that the user made an active choice to click on an image to cause it to be displayed. Those facts were not present here. Operating a search engine was not the same as operating a web publication or blog that displayed a full-size image to a user, who did not have to take any action to display the image.

Although the court granted partial summary judgment to Goldman on the question of infringement of his display right, it cautioned that there were still "unresolved strong defenses to liability separate from this issue." These defenses would mitigate any "chilling effect" on the core functionality of the web, in the court’s view.

"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," the court said. "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."

The case is No. 17-cv-3144 (KBF).

Attorneys: Kenneth P. Norwick (Norwick & Schad) for Justin Goldman. Tenley Mochizuki (Katten Muchin Rosenman LLP) for Breitbart News Network LLC. Marc Andrew Lebowitz (Lebowitz Law Office LLC) for Heavy, Inc. Lacy Herman Koonce, III (Davis Wright Tremaine LLP) for Time Inc. Jennifer A. Golinveaux (Winston & Strawn LLP) for Yahoo, Inc.

Companies: Breitbart News Network LLC; Heavy, Inc.; Time Inc.; Yahoo, Inc.

MainStory: TopStory Copyright TechnologyInternet NewYorkNews

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