On July 17, 2023, the Ninth Circuit affirmed the applicability of the "Server Test" to embedded content on third-party sites and affirmed dismissal of a copyright action in favor of defendant, social media platform Instagram. In its decision, the court declined to narrow its landmark holding in the 2007 case Perfect 10 v. Amazon, ultimately finding that the embedded conduct was non-infringing because the "embedding website does not store a copy of the underlying image." See Hunley et al. v. Instagram, LLC, No. 22-15293 (9th Cir. July 17, 2023)
In Hunley, two photographers appealed dismissal of a copyright class action suit brought against Instagram, alleging that the photo-sharing site violated their exclusive public display right by permitting third-party sites to embed user content on their own platforms.
The suit arose after the online news publications Buzzfeed and Time used the embed function to feature the plaintiffs' photographs alongside original news content. These organizations did not seek to license the works, but rather displayed the plaintiffs' public Instagram posts in their entirety via the embed function—including their user handles, the photos themselves, and the photo caption.
The plaintiffs brought suit against Instagram on a theory of secondary liability. Thus, any potential recovery hinged on the direct liability of Buzzfeed and Time. The district court found that the Ninth Circuit's decision in Perfect 10 v. Amazon precluded plaintiffs' suit and dismissed the action.
The Copyright Act grants authors the exclusive right to display their copyrighted works publicly. See 17 U.S.C. § 106(5). Infringing this exclusive right essentially requires the transmission of an unauthorized copy of the copyrighted work. As the Ninth Circuit explained in Hunley, "[a] copy means either an original or a duplicate that is fixed, and fixation requires embodiment in a perceivable format."
In its analysis, the Ninth Circuit provided a fulsome summary of embedding technology, and how the technology works. When a website embeds Instagram content in a webpage, it does not store or display a copy of the embedded content from its own server. Rather, it employs a set of HTML instructions that direct the browser to retrieve and display content from Instagram's server. The host server retains control over the image and is able to allow or disallow embedding, or make changes to the embedded content, for example by replacing or deleting images.
In Perfect 10, the Ninth Circuit addressed embedded content in the context of Google Image's search function, holding that the Google Image search function did not violate the right of public display by including pared-down thumbnail images or by embedding full-size images from third-party websites in its results list. The court noted that the full-size embedded images were not actually embodied in the computer's server.
Thus, the court devised the "Server Test," arguing that liability for a violation of the right of public display in the computer context arises only where a copy of the complained-of work is "fixed in the computer's memory." Because the Google Image search results merely embedded the photographs rather than displayed an embodiment from the company's server, Google did not maintain a copy and therefore did not violate the right to public display.
The Ninth Circuit found the embedded Instagram posts in the Hunley case were no different. By posting photographs to a public Instagram profile, the plaintiffs stored copies of those images on the Instagram server. The third-party news sites Buzzfeed and Time then embedded the content hosted on Instagram's servers and displayed it alongside original newswriting. These sites did not store copies of the underlying copyrighted photographs and "are not guilty of direct infringement." In the absence of direct infringement, Instagram could not be held secondarily liable.
The court rejected plaintiffs' request to limit the Server Test to search engines, reiterating that the application of the test depends on the method used for displaying a photo and not the context in which it is displayed. The court also rejected the plaintiffs' arguments that Perfect 10 is inconsistent with American Broadcasting Company v. Aereo, 573 U.S. 431 (2014), and certain passages of the Copyright Act's legislative history. In affirming the importance of Perfect 10, the Ninth Circuit noted that its decision "does not foreclose other avenues to relief for future technologies that configure retransmission in a new way."
Going forward, content creators and businesses should be cognizant of the application of the Server Test where copyrighted content is embedded and should consult legal counsel if questions involving said content arise.