S.D.N.Y. Embittered by Embedding

Just a couple weeks ago, the Southern District of New York issued an opinion that may very well change the way we use social media. In Goldman v. Breitbart News Network, LLC et al., the court held that embedding a tweet containing a copyright protected photograph constituted copyright infringement.

By way of background, the photo in question was taken in July of 2016 by the plaintiff, Justin Goldman, and it depicted Tom Brady and Danny Ainge, among others, in East Hampton. Goldman uploaded the photo to his Snapchat Story, and from there it went viral, ultimately landing on Twitter. The defendants, a variety of news outlets, including Breitbart, Time, Vox, the Boston Globe, and NESN, embedded the tweets containing the photo into their articles about Tom Brady’s effort to help the Boston Celtics recruit Kevin Durant. Goldman sued the news companies for copyright infringement on the grounds that he never publicly released or licensed the photo, and therefore they infringed his exclusive right to publicly display the work under section 106(5) of the Copyright Act.

On motion for partial summary judgment, the defendants argued that the court should apply what they call “the Server Test,” in which a website publisher is only directly liable for infringement if the image at issue is hosted on the publisher’s own server. The Server Test originates from the 2007 case, Perfect 10 Inc.* v. Amazon, Inc. (yeah, that Perfect 10). In that case, the Ninth Circuit affirmed a Central District of California decision holding that the thumbnail images created by Google for display on Google Image Search infringed copyright because the thumbnails were stored on its own server. However, the court also held that the full-size images users would see after clicking the thumbnail did not infringe because they were merely linked to photos stored on third-party servers. The defendants felt that the Perfect 10 reasoning applied here.

Naturally, Goldman argued against applying the test, claiming it would not only yield a result that would be inconsistent with the Copyright Act, but would also eliminate any incentives for websites to pay licensing fees.

The court sided with Goldman and rejected applying the Server test. First, the court strongly disagreed with the notion that copyright infringement could hinge on whether a party had possession of the image:

Nowhere does the Copyright Act suggest that possession of an image is necessary in order to display it. Indeed, the purpose and language of the Act support the opposite view. The definitions in § 101 are illuminating. First, to display a work publicly means to “to transmit . . . a . . . display of the work . . . by means of any device or process.” To transmit a display is to “communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.” Devices and processes are further defined to mean ones “now known or later developed.” This is plainly drafted with the intent to sweep broadly.

The court, citing excerpts from the defendants’ declarations, also highlighted the affirmative effort made by the defendants to embed the tweets, namely, copying the embed code into the HTML code for the offending webpages.

Second, the court relied on the guidance of the Supreme Court of the United States’s decision in American Brodcasting Cos., Inc. v. Aereo, Inc., concerning a service provided by Aereo which allowed subscribers to stream television programs over the internet as they were being broadcast over the air. In Aereo, Aereo was found liable for infringing ABC’s public performance right even though the subscriber controlled which “performances” (TV shows) were being transmitted, not Aereo:

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.”

Third, the court emphasized that Perfect 10, though affirmed by the Ninth Circuit, was in fact not widely adopted. The case law is scattered at best, and those U.S. District Courts that did address Perfect 10 directly often did so with respect to the exclusive right to distribute a work under the Copyright Act, not the exclusive right to publicly display it. The court also noted that two deciding factors in Perfect 10 were that Google, the defendant, operated a search engine, and that the user made an active choice to click an image before it was displayed.

The court concluded with the position that the results are not nearly as dire as the defendants suggest. There are a number of important defenses available: the argument that Goldman released the photo to the public domain by sharing it on Snapchat, fair use, and a defense under the DMCA.

What’s important to note about this decision is that it only addresses the question of whether the act of embedding a copyrighted work violates the public display right under the Copyright Act. It does not address liability or any defenses. The parties agreed to let the court divide the litigation into two phases, with the ultimate decisions regarding liability occurring at a later date. In this particular case, there’s a strong argument for fair use, as the photo was newsworthy and was subsequently used by the defendants for sports journalism.

Personally, I’m not yet alarmed by this decision. As I mentioned, the court hasn’t ruled on liability yet, and the defendants may very well appeal the decision to the Second Circuit regardless. Moreover, as the court said, the case law on this issue is both sparse and scattered, and this is currently the law in but one U.S. district.

What do you think? Do you think the S.D.N.Y. got it right? I’d love to hear your thoughts in the comments!