Defending Against the “Display” Right

There are at least three areas of copyright law implicated by the “display” right. The “server test,” the non-extraterritoriality of the copyright act, and the statute of limitations. For defense counsel, case law among them is consistent. In other words, copyright infringement is not always found just because an unauthorized use is “visible” on the internet nor does the statute of limitations run anew each day a work is visible. Under published decisions, “display” does not mean “visibility.”

For instance, in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1161 (9th Cir. 2007), the Ninth Circuit codified the Server Test, holding that when an unauthorized image is visible by way of viewing a particular website through a technology called embedding, there is no copyright infringement because the image is not stored on that website’s server. Embedding is made available by certain social media applications, such as Instagram, and refers to when a party links to another’s social media post, which viewers can then view on that party’s website—but the post itself remains on the Instagram server. That decision has been applied throughout California. See, e.g., Hunley v. Instagram, 2021 WL 4243385, at *1 (N.D. Cal. 2021) (applying service test and dismissing complaint).

The location of the server also is critical to other areas of copyright law. For instance, it is well established that the U.S. Copyright Act does not apply to infringements that occur outside of the United States. Craig v. UMG Recordings, Inc., 380 F.Supp.3d 324, 331 (S.D.N.Y. 2019); see also Update Art, Inc. v. Modiin Publishing, Ltd., 843 F.2d 67, 73 (2d Cir.1988); Robert Stigwood Grp., Ltd. v. O'Reilly, 530 F.2d 1096, 1101 (2d Cir.), cert. denied, 429 U.S. 848 (1976); see also, EEOC v. Arabian Am. Oil Co., 499 U.S. 244, 248 (1991) (“[I]t is a long-standing principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.”). That is because for a company to be liable under the U.S. Copyright Act for copyright infringement that occurred outside the United States, it must have committed a predicate act within the United States. See Craig, 380 F. Supp. 3d at 331.

Courts have held that just because a U.S. citizen can view a foreign infringement on the internet does not cause a foreign infringement to be subject to U.S. copyright law. In fact, courts have expressly held that there must be a “plus” factor beyond the mere accessibility of the copyrighted work on the internet. State St. Glob. Advisors Tr. Co. v. Visbal, 431 F. Supp. 3d 322, 340 (S.D.N.Y. 2020). In State St. Global, the court explained that “plus” factors include (1) the direction of copyrighted material into the United States, (2) when foreign “acts are intended to, and do, have an effect within the United States,” and (3) the uploading of copyrighted materials to servers located in the United States. See also, Perfect 10, Inc. v. Yandex N.V., 962 F. Supp. 2d 1146, 1153 (N.D. Cal. 2013), as amended (Sept. 6, 2013) (hosting of images on servers in Russia does not constitute copyright infringement in the United States, and expressly rejecting the claim that when images are hosted on servers located in Russia, it violates the “exclusive display right” because users in the United States could download them). Thus, visibility is not the critical factor if not hosted on a U.S. server.

Overwhelmingly, nationwide courts also have held that the “display” right is not activated each day an image remains on the internet for purposes of calculating the statute of limitations. There is one outlier, but it applies only to claims against the federal government and has been otherwise repudiated. See APL Microscopic, LLC v. the United States, 144 Fed. Cl. 489 (Ct. of Fed. Claims 2019); 4 Nimmer on Copyright § 12.01[E][1] (court of federal claims only has jurisdiction over claims against the federal government). See also Bell v. The Oakland Comty. Pools Project, Inc., 2020 WL 4458890, at *5, n.3 (N.D. Cal. May 4, 2020); Fischer v. Forrest, 2017 WL 128705, at *7 n.9 (S.D.N.Y. Jan. 13, 2017) (acknowledging that work published on a website one year and remaining on the website years later “does not give rise to a discrete claim....”).

Combined, these concepts provide defense counsel persuasive arguments in the copyright space for embeds, an alleged foreign infringement, or a late-filed claim.