IP Law Daily Third parties’ embedding of Instagram photos does not directly infringe photographers’ display rights
Tuesday, September 21, 2021

Third parties’ embedding of Instagram photos does not directly infringe photographers’ display rights

By John W. Scanlan, J.D.

Because the third parties did not store the copyrighted images on their servers, they did not “display” copies of the work when they embed the photos on their web pages.

Two photographers could not hold Instagram secondarily liable for copyright infringement for allowing third parties to embed the photographer’s photos on the third parties’ web sites because the third parties had not committed direct copyright infringement, the U.S. District Court for the Northern District of California ruled in granting Instagram’s motion to dismiss. Under the “server test,” the embedding process did not infringe the photographers’ exclusive right to display their photos because the third parties did not store the photographs on their own servers (Hunley v. Instagram, LLC, September 17, 2020, Breyer, C.).

Instagram is a large photo sharing application owned by Facebook that allows users to upload and share their photographs. One photographer argued that BuzzFeed, Inc., had embedded into a post about a 2020 protest a copyrighted photo from her Instagram account without permission; the other photographer alleged that Time.com had embedded into a post about the 2016 election a copyrighted photo from his Instagram account without permission. According to the plaintiffs, these third-party sites copied the HTML code assigned to their photos on Instagram and embedded this code into their web pages to direct users’ browsers to display the photos on the third-party pages while the photos were stored only on Instagram’s server. The photographers asserted that since 2013 Instagram has encouraged third parties to embed photos from Instagram on their web pages and had placed tracking code technology on photos on its server to facilitate the measurement and monetization of the photo sharing.

The photographers brought copyright infringement claims against Instagram, asserting that Instagram’s embedding features enabled third-party websites to violate their exclusive right to display their photos and, therefore, Instagram was secondarily liable for their infringement. Instagram moved to dismiss. To prevail, the parties agreed, the photographers were required to show underlying direct infringement by the third parties.

Server test. The actions by the third parties in embedding the images on their web pages did not violate the exclusive display rights of Instagram users such as the photographers, the court found. This case was governed by the Ninth Circuit’s 2007 decision in Perfect 10, Inc. v. Amazon.com, in which the court articulated the “server test” for determining when a computer displays a copyrighted work. Under that test, for purposes of the Copyright Act an image is fixed in a tangible medium of expression when stored in a computer server or other storage device. If the publisher of a website does not store an image, it does not “communicate” a copy of the image for purposes of the Act and, therefore, does not violate the copyright holder’s exclusive display right. Time and Buzzfeed did not store the images on their servers and could not be directly liable as a result of the embedding.

The court disagreed with the photographers’ argument that the application of the Perfect 10 decision should be limited to the search engine context in which that case arose, stating that the Perfect 10 court had relied upon the statutory language rather than policy considerations. The court declined the photographers’ request to follow instead the reasoning of a recent decision by a district court in New York rejecting the server test, finding that a district court in California is required to follow Ninth Circuit precedent.

Furthermore, while the photographers also argued that Perfect 10 could not apply to this case because it was contrary to the U.S. Supreme Court’s 2014 decision in American Broadcasting Cos. v. Aereo, Inc., the district court determined that these decisions were not “clearly irreconcilable.” Aereo involved the exclusive right to publicly perform a copyrighted work and was brought by broadcasters against a company that streamed broadcast television programming over the Internet to its subscribers. The High Court based its decision, in part, upon legislative purposes regarding the performance right because the relevant statutory language was ambiguous. The district court found that Aereo addressed the ambiguous language of Sec. 106(4) whereas Perfect 10 addressed the plain language of Sec. 106(5). As a result, the decisions were not clearly irreconcilable, with the court concluding by noting that the Ninth Circuit has continued to apply the Perfect 10 server test and did so less than a month ago.

The case is No. 3:21-cv-03778-CRB.

Attorneys: Adrian R. Bacon (Law Offices of Todd M. Friedman, P.C.) for Alexis Hunley. Allyson Roz Bennett (Durie Tangri LLP) for Instagram, LLC.

Companies: Instagram, LLC

MainStory: TopStory Copyright GCNNews CaliforniaNews

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