Barry Skidelsky

A recent SDNY federal court decision (Goldman v. Breitbart et al, case no. 17-cv-3144, rel. 2/15/18) has led to new copyright liability concerns among website owners and their counsel. Those concerns are shared by, inter alia, various media, public policy and consumer groups.

Here’s the back story. In the summer of 2016, plaintiff Justin Goldman snapped a photo of Tom Brady (Boston Patriots quarterback) and Danny Ainge (Boston Celtics general manager), among others, on the street in East Hampton. Shortly thereafter, Goldman uploaded the photograph to Snapchat. The photo then went viral across various social media platforms, including Twitter where it was uploaded by several other users.

Over the following 48 hours, several online news outlets and blogs (defendants in this case) published articles relating to the possibility that Brady was helping Ainge recruit for the Celtics Kevin Durant (currently on the Golden State Warriors basketball team). Those articles prominently featured the photo by “embedding” the tweet in them, which led to this litigation based on an alleged violation of 17 USC 106(5), the exclusive right to “display” copyrighted works publicly.

The related concepts of websites linking and embedding objects (such as image, audio, video or other files), as elaborated below, have resulted in relatively novel copyright infringement and additional claims being made in this and other cases over the last decade. To better appreciate those claims, it helps to understand some basic website technology.

When a user visits a website, his or her Internet browser first requests and receives from a remote server textual content in the form of a single HTML document or file. Hypertext Markup Language (HTML) is simply a technical protocol or set of instructions for the proper display and functioning of web sites. Following instructions in that first file, web browsers then download additional files which are combined or rendered into what a user perceives as a multimedia website. Thus, websites are essentially an organized hierarchy of individual files or web pages.

Linking and embedding are ways to incorporate objects such as content files into a website. Although functionally equivalent, the main differences between them are where that other content or data is stored and what happens if the source file is updated after being linked to or embedded in your website.

“Linking” is like a pointer that refers to data in files remaining stored somewhere else, and any changes to that linked source file will show up at your end (i.e., as sort of a dynamic update). “Embedding” refers to data stored in your file, but without a connection to the original source file. Any update to that embedded source file will not show up on your end (i.e., your website will not change if and when the source file does). Which brings us back to the subject “embedded” tweet.

On their motion for partial summary judgment, the media defendants in Goldman argued that the Ninth Circuit’s “server test,” articulated in its 2007 decision in Perfect 10 v. Amazon, 508 F.3d 1146, shielded them from liability because they did not copy the photo to their websites or store it on their servers. In Perfect 10, the Ninth Circuit held that whether a website publisher is liable for copyright infringement turns on whether the content is hosted on the publisher’s server.

Rejecting the Ninth Circuit’s “server test,” the Goldman court denied defendants’ motion. Instead, it granted partial summary judgment to the non-movant plaintiff in accordance with CPLR 3212(b)—which in relevant part provides: “If it shall appear that any party other than the moving party is entitled to a summary judgment, the court may grant such judgment without the necessity of a cross-motion.”

The SDNY court held that the plain language of the Copyright Act, its legislative history, and the Supreme Court’s guidance in the 2014 Aereo case (134 S. Ct. 2498), provide no basis for a rule that would allow the physical location or possession of an image to determine who may or may not have displayed a work within the meaning of 17 U.S.C. 106(5).

In other words, that the Goldman defendants embedded (rather than copied) the photo stored on Twitter’s servers was not determinative nor a valid defense—although the court made clear that defendants’ have several other outstanding “strong defenses to liability” that would be addressed at later stages of the case, including inter alia fair use and innocent infringement.

Emphasizing that the Copyright Act’s definition of public display includes transmission by “any device or process, whether now known or later developed,” the court found that each of the defendants took “active steps” to put a process in place that resulted in a transmission of the photo by including HTML embed codes in the design of their webpages. This reasoning arguably applies to linking (in addition to embedding) third-party content.

In its reasoning, the court focused not only on the publishers’ conduct but also the end users experience, concluding that “mere technical distinctions invisible to the user should not be the linchpin on which copyright liability lies.”

This decision has been decried by amici and others as ill-conceived, as well as disruptive of a broad consensus and industry practice in effect since Perfect 10 was decided a decade ago that effectively treated the “server test” as a copyright safe harbor. Regardless of how the rest of this case later plays out, the SDNY’s undermining of the “server test” is problematic for users far beyond the sophisticated defendants in Goldman, given that embedding and arguably linking to (as contrasted with copying) copyrightable content online now increases litigation risks and costs. Proceed with caution.

Barry Skidelsky is a NYC-based attorney, consultant, arbitrator and mediator with a diverse national practice focused on media, entertainment, technology and telecommunications. Currently Chair of the NYSBA’s Entertainment, Arts & Sports Law Section, Barry also practices before the FCC in Washington, D.C. Contact him at bskidelsky@mindspring.com.