Secondary infringement seeks to impose liability for copyright infringement on third parties that enable the infringement that is actually committed by others. For example, the record store selling bootleg CDs. The “server text” has been in effect since 2007, when the Ninth Circuit ruled that embedding an image does not constitute a “display” of a work subject to copyright infringement. In Perfect 10, the plaintiff operated a website charging for access to view photographs, several of which had been copied and published on third party websites. The Ninth Circuit found that Google and Amazon were not liable for direct or secondary infringement because they did not host or physically transmit the content from the third-party websites themselves, they just provide the user’s computer with instructions to the website that stores the content.
Since 2007, courts outside of the Ninth Circuit have been faced with similar cases and rejected the server test. The Northern District Court of Texas in 2017 cited the Ninth Circuit’s Perfect 10 ruling and rejected it, holding that the pertinent issue was whether or not the image was visible to the public as opposed to whether or not the alleged infringer possessed a copy of the work dis-played. “The text of the Copyright Act does not make actual possession of a copy of a work a prerequisite for infringement. To display a work, someone need only show a copy of the work; a person need not actually possess a copy to display a work. And to display a work publicly, a person need only transmit or communicate a display to the public.” The Northern District Court of Illinois and Southern District Court of New York have made similar rulings.
In Hunley v. Instagram, LLC, No. 22-15293 (9th Cir. July 17, 2023), two photographers sued Instagram concerning the embedding feature that allows third parties to embed Instagram posts into their websites. Plaintiffs argued that third party news websites had embedded Plaintiffs’ photographs into articles about the Black Lives Matter protests and U.S. presidential campaign, which constituted copyright infringement and that said infringement was facilitated by Instagram’s embedding feature. Instagram’s defense was that there was no secondary infringement because there was no direct infringement; by embedding the Instagram posts, the websites that visually showed Plaintiffs’ photographs were not downloading or hosting the images, just providing a link to the original posts (which were lawfully made by Plaintiffs themselves on Instagram).
The Ninth Circuit in Hunley confirmed its interpretation that to “display” a work under the Copyright Act required possession of a copy. The Copyright Act provides that the owner of copyright “has the exclusive rights to … display the copyrighted work publicly” 17 U.S.C. §106(5). The definition of display is to “show a copy … either directly or by means of a film … or any other device or process.” The definition of copies is “material objects … in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device [and] includes the material object in which the work is first fixed.” And “[a] work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”
The Ninth Circuit holds that embedding does not “fix in a computer’s memory” the embedded image. Therefore, an embedded image is not a “copy” and cannot be an infringing “display” under the Copyright Act.
Finally, the Ninth Circuit rejected the Plaintiffs argument that user perception should determine whether an image was “displayed”, not whether or not the image was fixed in a certain computer’s memory, on the ground that user perception is considered within the definitions of the Copyright Act (“‘Copies’” are material objects . . . from which the work can be perceived”).
Ultimately, the Ninth Circuit confirmed the 12(b)(6) dismissal on the ground that without direct infringement, Instagram cannot be liable for secondary infringement, leaving photographers and other visual artists with the difficult consequence that posting their content on a site that facilitates embedding allows third parties to avoid acquiring a license before using their images.
