Does Embedding Constitute Copyright Infringement?
Among the many exclusive rights afforded to copyright holders is the right to display their work publicly. Whether embedding content onto a website without authorization violates this right requires the preliminary determination of what constitutes “displaying” something on a computer screen. 17 U.S.C. § 101 defines the “display” of a work as showing a “material object” in which the work is fixed, “either directly or by means of a film, slide, television, image, or any other device or process. . . .”
Those who often share and those who enable the sharing of third-party content as part of their business model have relied on the long-held assumption that embedding content is not the same as displaying it, but rather that it is closer to coding: All that embedding requires is to give the website instructions in HTML (that is, lines of code) that cause the user’s browser to interact with the server that hosts the original content. Content owners, on the other hand, argue that embedding is a violation of their exclusive right regardless, because the whole point of embedding content is being able to show it on one’s website without having to reproduce it.
First Line of Defense: Embedding Permitted under an Express or Implied License
To determine whether embedding a piece of media is permitted, one should first check the terms and conditions of the platform hosting the original content. For the most part, these include a license for the platform to host, use, distribute, and publicly display any user-generated content (among other rights) and, further, to sublicense these rights to others. However, it is still unclear as a matter of law whether the platforms grant third parties a permitted sublicense when they enable the embedding of user-generated content.
Some platforms’ terms include broad language that allows the display of users’ publicly shared content. For example, YouTube’s terms (as of August 22, 2021) include an explicit grant to “each other user” of the platform of a license to access and use uploaded content, which includes the right to “reproduce, distribute, prepare derivative works, display, and perform it, only as enabled by a feature of the Service (such as video playback or embeds).” Similarly, Vimeo’s terms (as of August 22, 2021) include a grant to the platform of permission to “embed the video on third-party websites” and “distribute the video via our APIs.” Because the platform also gives users control over their videos’ privacy settings, its terms clearly state that, “[b]y enabling access to your video to any third party, you grant each such person permission to stream (and/or download or embed, as applicable) to your video.”
Other platforms, on the other hand, include language that gives broad rights to the platforms themselves, including “the right to sublicense,” but are not clear on whether other users of the platform are given similar rights to share content. Nevertheless, companies and online publishers have relied on these terms and conditions to embed user-generated content. They reason that by posting content publicly on these platforms, users are granting the platform a sub-licensable license that then they exercise when they share the content using the platform’s built-in tools. After all, they argue, by making embedding so easily accessible, platforms are encouraging such sharing and thus inherently granting the embedders a sublicense on the content.
Courts, however, have dismissed this argument and pointed to the fact that, while various platforms’ terms may include a sub-licensable right, if they do not also include an express sublicense grant to those who embed content using their built-in tools, then a sublicense cannot be automatically granted. See, e.g., Agence France Presse v. Morel, 769 F. Supp. 2d 295 (S.D.N.Y. 2011); Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020), adhered to in part on reconsideration, No. 18-CV-790 (KMW), 2020 WL 3450136 (S.D.N.Y. June 24, 2020). Courts have likewise rejected a possible implied sublicense on the grounds that implied licenses “can only exist where an author creates a copyrighted work with knowledge and intent that the work could be used by another for a specific purpose,” such as embedding. SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301, 317 (S.D.N.Y. 2000).
The issue is far from settled. This past May, photographers sued Instagram on behalf of a proposed class of users whose content was embedded without permission. The lawsuit claims that Instagram’s built-in tools for embedding induce third parties to infringe their works while the platform directly profits from this practice. Interestingly, a spokesperson from Instagram’s parent company, Facebook, announced last year that the platform does not provide those who use its embedding tools a license on the contents being shared. They also explicitly clarified that the platform requires those who wish to embed photos hosted on it to obtain permission from the copyright holder, when required by law. Some expect the platform to implement technical changes that allow users greater control over embedding settings, in line with what other platforms already do. It is easy to see, however, why such changes have yet to be made: By allowing third-party embedding of content hosted on Instagram or Facebook, the platform’s traffic is exponentially increased, and so is its ad-generated revenue.
Second Line of Defense: The Server Test
The earliest cases addressing the allegedly unauthorized embedding of third-party content found that embedding images did not violate the exclusive right to publicly display and therefore did not constitute copyright infringement. Stemming initially from the Ninth Circuit’s 2007 Perfect 10 v. Google, Inc. decision, the “server test” requires that, in order to violate a copyright owner’s exclusive right to display, the content must be electronically stored in the infringer’s server (i.e., “fixed”) and such copy used to fill the user’s screen with it. 508 F.3d 1146 (9th Cir. 2007). Under this test, any practice that involves sharing content using a social media platform’s built-in tool, such as embedding, would not amount to copyright infringement because these tools do not require the sharer to generate a copy of the content or store it on the sharer’s servers in order to show it to others. Instead, these tools allow the sharer to direct a user’s browser to retrieve the original content from the third-party source that actually stores the content.
Relying on this interpretation of the Copyright Act, over the last 14 years, technology companies and social media networks have developed business models that not only allow but also encourage content sharing by means of embedding. In turn, some argue, this has hurt content creators and copyright holders, who were essentially left with no recourse under the act to stop the dissemination of their work, other than a potential claim for contributory infringement.
Recognizing the evolving nature of the internet and the way we use it as well as the Copyright Act’s intent to evolve alongside it, more recently, the Southern District of New York rejected the “server test” as applied to embedding cases, in Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585 (S.D.N.Y. 2018). The case involved a photo of Tom Brady and others posted to Snapchat by the photographer, which went on to become viral and, after being posted on Twitter by several users, was embedded by the defendants without the plaintiff’s authorization. In rejecting the “server test,” the court noted that nothing in the Copyright Act’s plain language, legislative history, or subsequent Supreme Court jurisdiction indicates that physical location or possession of an image is necessary in order to “display” it. Moreover, the court held that factual distinctions with the Perfect 10 decision rendered the test inapplicable to the circumstances of the case, including the fact that Perfect 10 involved a search engine, which required users to actively click on an image before it was displayed full-size.
In the latest case involving the unauthorized embedding of media, the work at issue was footage of a starving polar bear, which the plaintiff posted to Instagram and Facebook and was later embedded by several news outlets and publishers without obtaining a license. Nicklen v. Sinclair Broad. Grp., Inc., No. 20-CV-10300 (JSR), 2021 WL 3239510 (S.D.N.Y. July 30, 2021). In denying the defendant’s motion to dismiss, the Southern District again refused to apply the “server test” and found that Nicklen’s exclusive right to display had been violated. The court again held that the “server test” is “contrary to the text and legislative history of the Copyright Act,” which “defines to display as ‘to show a copy of’ a work . . . not ‘to make and then show a copy of the copyrighted work.’” Furthermore, the court reasoned that applying the “server test” to cases involving embedding would mean that once a copyright owner decides to promote his or her work by uploading it to a social media platform, the copyright owner’s right to display would be reduced to the right of first publication. As in Breitbart, the court also found the Perfect 10 decision to be inapplicable outside the context of search engines. Concluding that the defendant’s fair use defense could not be resolved at this stage, the court denied the defendant’s motion to dismiss.
While Breitbart was settled, Nicklen could still potentially reach the U.S. Court of Appeals for the Second Circuit. Although the “server test” is still good law in the Ninth and (arguably) Seventh Circuits, these decisions could mean that a potential circuit split is looming on the horizon.
Third Line of Defense: Permissible Fair Use
Courts have also addressed the issue of whether embedding content constitutes permissible fair use. Whether an embedder can shield itself from liability with a fair use defense is a fact-specific question that requires a multifactor analysis of (i) the purpose and character of the use, (ii) the nature of the copyrighted work, (iii) the amount and substantiality of the portion used, and (iv) the effect of the use on the potential market for or value of the work. The complexity of this analysis means that cases involving the embedding of media can result in different findings depending on the context in which such media are shown.
On the other hand, courts have usually found permissible fair use where the media embedded was itself the subject of the article. For example, in Walsh v. Townsquare Media, Inc., the defendant published an article embedding a photograph from rapper Cardi B’s Instagram depicting a composite image of the rapper with a lipstick from her recent collaboration with a luxury brand. 464 F. Supp. 3d 570 (S.D.N.Y. 2020). Similarly, in Boesen v. United Sports Publications, Ltd., the defendant published a news article and embedded a tennis player’s Instagram post, which contained the plaintiff’s photograph of her playing. No. 20-CV-1552, 2020 WL 6393010 (E.D.N.Y. Nov. 2, 2020). In both cases, the courts found such uses to be transformative and thus fair. The courts reasoned that the defendants had used the photographs “for an entirely different purpose” than the originals, that the photographs had been previously published by their subjects, and use of the photographs did not hurt a potential market for the work.
The determination of whether embedding media constitutes copyright infringement is far from settled. Undoubtably, as in other aspects of copyright law, obtaining prior authorization before sharing third-party content is always the safest course of action. Of course, that requires one to identify the actual copyright owner, which is not always an easy thing to do: Rights may have been assigned, the work may actually be owned by the creator’s employer, or the content uploaded may itself be infringing. Relying on the terms and conditions of a sharing site is fraught with complications especially in the face of recent authority rejecting implied sublicenses. Courts’ rejection of the “server test” and refusal to find sublicenses in districts like the Southern District of New York not only portend a circuit split but also could mean that litigation against content embedders and social media platforms alike will flock to such defense-hostile jurisdictions. Although fair use is gaining traction as a defense to copyright infringement claims brought as a result of the unauthorized embedding of content even in such districts, the analysis is fact-specific, so relying on this defense is also not a guaranteed win. Especially because this is an evolving area of the law, should you face such a claim (or need to bring one), be careful to know where your district stands on these issues and develop your case or defenses accordingly.