Is The Server Test Ready for a Reboot? | Weintraub Tobin - JDSupra .

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It’s been referred to as one of the top copyright cases to watch this year. This case, Alexis Hunley, et al v. Instagram, LLC, could mean the end to the server test, a once widely-followed copyright doctrine established by the 9th Circuit in Perfect 10, Inc. v. Amazon.com Inc., now rejected by a number of courts.

Alexis Hunley et al v. Instagram involves a potential class-action claim against Instagram related to its embedding practice. “Embedding” means the process of copying unique HTML code assigned to the location of a digital copy of the photo or video published to the Internet, and the insertion of that code into a target webpage or social media post so that photo or video is linked for display within the target post. The named plaintiffs are two photojournalists whose photographs of the George Floyd protests and the 2016 election were featured on websites of various traditional media outlets without those outlets having obtained any license from the plaintiffs because those media companies used Instagram’s proprietary embedding tools. The plaintiffs alleged that Instagram encouraged the embedding of photos in order to drive up advertising revenue.

In September, U.S. District Judge Charles R. Breyer dismissed the case, holding that the media companies are not liable for direct copyright infringement and that Instagram is not liable for secondary copyright infringement. The Court relied on the Ninth Circuit’s 2007 opinion in Perfect 10, Inc. v. Amazon.com, Inc., which established the “server test,” which essentially stands for the proposition that a website does not legally “display” a copyrighted image if that website does not communicate the work to viewers from a copy of that image stored on its own servers. The Court concluded that the media companies’ websites functioned like the Google search engine in Perfect 10 when it displayed thumbnail images as a result of a Google image search. The Court found that because the media companies are not storing the files on their actual servers, they were not liable for copyright infringement. Since the media companies who embedded images from Instagram were not liable for direct copyright infringement, the Court concluded that Instagram cannot be liable for secondary copyright infringement. The Court invited the plaintiffs to raise their issue with the Ninth Circuit if they believed the server test violated copyright law.

The photographers have taken the lower court up on its offer. In June, 2022, the photographers filed an appeal with the 9th Circuit, arguing for a review of the applicability of the server test, which they claim is outmoded and impractical and has been rejected by other courts that have considered the same issue presented on appeal. One of the cases rejecting the server test was Sinclair v. Ziff Davis from the Central District of New York.

In Sinclair, the Court refused to dismiss a photographer’s infringement case against Ziff Davis based on the argument that Instagram’s terms of service permitted the embedding of Sinclair’s images on third-party websites. The Court noted that while Instagram’s terms did give Instagram the right to use Sinclair’s photograph, the terms were ambiguous regarding the right of third parties to embed content on their own websites.

The practice by digital media publishers to embed or link to third party images is not some new aberration. It’s been a long-standing practice. For years, many websites operated under the assumption that embedding was legal under the “server test.” However, the general acceptance of the server test began to show signs of erosion beginning with 2017 with Goldman v. Breitbart News Network LLC in which U.S. District Judge Katherine B. Forrest said that copyright infringement “should not hinge on invisible, technical processes imperceptible to the viewer.” Recently, in the 2022 case of McGucken v. Newsweek LLC, which dealt with facts similar to Sinclair and Alexis Hunley, Judge Failla of the Southern District of New York characterized the server test as not following the purpose and intent of the Copyright Act, particularly given that most artists now share their work online.

The plaintiffs in Alexis Hunley claim that the server test is a technological loophole which did not exist when the Copyright Act was enacted by Congress, which has no support or explanation in the plain language of the Copyright Act, and for which no public policy justification exists. In their appeal, the plaintiffs argue that the District Court went well beyond the applicability of Perfect 10 which applied to the use of embedded images in search engine results, not the websites of third-party media publishers. The plaintiffs contended that no court has expanded the server test to apply to embedding technology from Instagram to the publishers of third-party websites. Rather, courts outside of the 9th Circuit have explicitly rejected the server test’s application beyond search engines and have never applied it to situations where website publishers embed photographs into articles.

The plaintiffs in Alexis Hunley allege that since 2013, third-party publishers such as BuzzFeed and Time have freely embedded copyrighted works onto their websites without ever paying licensing fees or obtaining permission from the copyright holders. Add to that the fact that in early 2020, Instagram made clear that its “embeds API” does not automatically grant a display license to third parties. According to various stories on the subject, an Instagram spokesperson said, “While our terms allow us to grant a sub-license, we do not grant one for our embeds API. Our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content if a license is required by law.”