The modern evolution of “embedded” content creates uncertain copyright protection for online graphics. A client’s simple question about embedding an image onto his website can quickly spiral into a complex debate.
Unfortunately, the text of the Copyright Act does not yield clear answers; when drafting the Act in 1976, Congress was not considering how the nuisances of embedding—a foreign concept—would affect a copyright owner’s display rights. There was no need to address the technical distinctions in how an online image can be displayed in 1976. So, lawyers, copyright owners, and media users across the country seek answers from judicial intervention. However, as courts continue to contemplate Perfect 10 v. Amazon and Goldman v. Breitbart News Network, case law muddies potential clarifications.
Let us backtrack. In 2007, the Ninth Circuit upheld the “server test” for embedded content and display rights in Perfect 10 v. Amazon. 508 F.3d 1146 (9th Cir. 2007). Under this test, displaying a copyrighted image by merely “linking” or “framing” content that is stored on another website—as opposed to saving the image and sharing it from one’s own server—does not violate the copyright owner’s display rights. For example, even though Google was displaying potentially copyrighted images in Perfect 10, Google neither stored nor directly communicated images to users’ browsers. Instead, Google’s software directed browsers to access a third-party’s website through an “embed code.” For over a decade, the server test has been the backbone of embedded content jurisprudence, and the bright line of the server test was reaffirmed by the Ninth Circuit as recently as July 2023. See Hunley v. Instagram, LLC, 73 F.4th 1060, 1077 (9th Cir. 2023).
While the server test remains controlling in the Ninth Circuit, other jurisdictions apply it inconsistently. This became apparent in 2018 when the Southern District of New York refused to apply the server test in Goldman, 302 F. Supp. 3d 585 (S.D.N.Y. 2018). Breitbart argued it could not be liable for copyright infringement because it did not save the disputed image on its servers, but simply embedded a “tweet” of Goldman’s photograph onto its websites. The court rejected this application of the server test, stating “mere technical distinctions invisible to the user should not be the lynchpin on which copyright liability lies.”
The Goldman lawsuit settled before it was considered by the Second Circuit and has not become the law of the land. Following Goldman, there has been a recent trend in the Southern District of New York toward rejecting Perfect 10, and outside of the Ninth Circuit, the server test is not widely adopted. The First Circuit has indicated a position parallel to Perfect 10, but it has not addressed the embedding defense post-Goldman. See Soc'y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 55 (1st Cir. 2012). Additionally, the Seventh Circuit applied the server test in a case of contributory copyright infringement, noting that the practice of displaying videos through an embedded code is not an infringement. See Flava Works, Inc. v. Gunter, 689 F.3d 754, 757–759 (7th Cir. 2012). Yet, it too has not responded to the recent challenges against Perfect 10.
Since the advent of Goldman, many lawyers (and commentators) have anticipated the fall of the server test and advised their clients to prepare for a world without this defense. A quick review of news aggregation sites reveals that many articles discussing a newsworthy photo or video clip refrain from embedding the very subject of the article. Instead, they favor an in-line link that prompts the reader to navigate directly to the platform, like X (nee Twitter) or Instagram, that hosts the content controlled by the copyright owner. Despite this industry reaction, there is no clear trend toward Goldman or away from Perfect 10, outside of the Southern District of New York. Neither standard has gained such momentum to suggest the dismissal of the other; jurisdictions remain scattered, yet parties grow insecure in their defenses.
As the practice of embedding continues to grow, lawyers cannot ignore the challenges against the server test or the current jurisdictional inconsistencies. Instead, it is imperative to discuss all potential ways to avoid infringement with clients including implicit licenses within platforms’ terms, fair use, innocent infringer defenses, express authorization, etc. In 2023, the District Court of Utah analyzed as a matter of first impression whether the defendant’s act of embedding provided a defense to liability. Bowery v. Best Little Sites, No. 221CV00567DBBJCB, 2023 WL 3212619, at *2–7 (D. Utah May 2, 2023). The defendant—knowing that the server test was not binding in the Tenth Circuit—refused to depend only on Perfect 10 and asserted a safe harbor defense as well as his embedding defense. The district court ultimately found Perfect 10 to be persuasive and held that the defendant could assert an embedding defense. But, this case illustrates the hesitancy to rely on Perfect 10 and a shift toward creative defenses for alleged infringers.
In short, unless you find yourself in the Ninth Circuit, the answer to your client’s question cannot be a simple yes or no. While rumors about the fall of the server test are premature, there is enough to warn your client about the strength of the defense and other means to justify the online display of copyrighted materials.
