Shari Claire Lewis

The exponential growth of social media, and the inevitable conflicts that result, is leading to more and more litigation. In many instances, courts are being asked to apply laws crafted before the Internet era to these modern disputes. For example, the U.S. District Court for the Southern District of New York recently decided an issue involving Twitter and the federal Copyright Act (the Act) that may have significant implications for online publications and, ultimately, for how people view the news.

In Goldman v. Breitbart News Network, No. 17-cv-3144 (KBF) (S.D.N.Y. Feb. 15, 2018), the court was faced with deciding whether an image shown on one website but stored on another website’s server implicated the display rights of the image’s owner within the meaning of the Act. The court’s conclusion—that the actual location of the image had no relevance—could very well change the way stories are published online.

The Case

The case arose on July 2, 2016 when Justin Goldman photographed Tom Brady, the New England Patriots quarterback, and an executive from the Boston Celtics basketball team on a street in East Hampton. Goldman uploaded the photo to Snapchat, where it went viral, reaching Twitter.

A number of online news outlets and blogs published articles featuring the photo and exploring whether the Boston Celtics would be able to recruit basketball player Kevin Durant with Tom Brady’s help. None of these websites actually downloaded the photo from Twitter, copied it, or stored it on their own servers (i.e., computers connected to the Internet). Rather, they made the photo visible in their articles through a technical process known as “embedding.”

(An image hosted on a third-party server is embedded on a webpage when a coder adds a specific “embed” code to the Hypertext Markup Language (HTML) instructions that make up the webpage. The code directs browsers to the third-party server to retrieve the image. An embedded image will then hyperlink (that is, create a link from one place in a hypertext document to another in a different document) to the third-party server. The result is a seamlessly integrated webpage that is a mix of text and images, even though the images may be hosted in varying locations. Most social media sites, including Facebook, Twitter, and YouTube, provide code that coders and web designers can copy to enable embedding on their own webpages.)

As a result of the embedding of the photo, the websites included articles about Tom Brady and the Celtics, with the full-size photo visible without visitors having to click on a hyperlink or a thumbnail to view the photo.

Goldman, who owned the copyright in the Brady photo and who claimed that he had never publicly released or licensed the photo, sued websites that had embedded it into their stories. He claimed that they had violated his exclusive right to display the photo under §106(5) of the Act.

The defendants urged the court to define the scope of Goldman’s display right in terms of what they referred to as the “Server Test,” as highlighted in Perfect 10 v. Amazon.com, 508 F.3d 1146 (9th Cir. 2007). According to the defendants, under this test, whether a website publisher was directly liable for infringement turned entirely on whether the image was hosted on the publisher’s own server or was embedded or linked from a third-party server.

The defendants argued that, despite the seamless presentation of the Brady photo on their webpages, they had simply provided “instructions” for the user to navigate to a third-party server on which the photo resided. According to the defendants, merely providing instructions did not constitute a “display” by the defendants as a matter of law.

For his part, Goldman maintained that the Server Test led to results incongruous with the purposes and text of the Act and that even if the Server Test was rightfully applied in certain instances, it was inappropriate in situations where the user (as here) took no action to “display” the image. Goldman contended that to adopt the Server Test broadly would have a “devastating” economic impact on the photography and visual artwork licensing industries, asserting that it would “eliminate” the incentives for websites to pay licensing fees and thus “deprive content creators of the resources necessary to invest in further creation.”

The court agreed with Goldman, and, in a decision by Southern District Judge Katherine B. Forrest, granted partial summary judgment in his favor.

The Court’s Opinion

In its decision, the court explained that §106(5) of the Act gives a copyright owner the exclusive right to “display the copyrighted work publicly.” To display a work under the Act, as defined in §101, is to show a copy of it, either directly or by means of a film, slide, television image, “or any other device or process.”

The court observed that the Act’s legislative history indicated that Congress intended copyright protection—including for the display right—to “broadly encompass new, and not yet understood, technologies.” Indeed, the court added, the Register of Copyrights had testified during hearings that preceded the passage of the Act that the definition of the display right was “intended to cover every transmission, retransmission, or other communication of [the image],” beyond the originating source that might store the image, but including “any other transmitter who picks up his signals and passes them on.” He highlighted the importance of the display right in light of changing technology, specifically warning that “information storage and retrieval devices … when linked together by communication satellites or other means … could eventually provide libraries and individuals throughout the world with access to a single copy of a work by transmission of electronic images” and therefore that “a basic right of public exhibition should be expressly recognized in the statute.”

Given that legislative history, and noting that the “Server Test” had not been widely adopted outside of the Ninth Circuit, the court decided that there was “no basis” for a rule that allowed the physical location or possession of an image to determine who may or may not have “displayed” a work within the meaning of the Act.  

Moreover, the court continued, the Act itself nowhere suggested that possession of an image was necessary to display it. Indeed, the court added, the purpose and language of the Act supported the opposite view—the court noted that to display a work publicly means to transmit a display of the work by means of “any device or process,” “now known or later developed.” In the court’s view, this text was “plainly drafted with the intent to sweep broadly.”

The court then found that the defendants’ websites had actively taken steps to “display” the Brady photo. For example, the court noted that the Boston Herald had “pasted a code line into its blog/article that contain[ed] Twitter HTML instructions” and that a Gannett vice president had submitted a declaration that stated, “[I]f I wanted that web page to display a photo that a third party user had posted to a site like Twitter, I could do so without me ever having to make a copy of the photo. I would simply include in my HTML code some additional coding containing a link to the URL of the Twitter page where the photo appeared.”

According to the court, it was “clear” that each and every defendant had taken “active steps to put a process in place that resulted in a transmission of the photos so that they could be visibly shown.” Most directly, the court added, this was accomplished by the act of “including the code in the overall design of their webpage; that is, embedding.”

The court reasoned that because the Act included “each and every method by which images … comprising a … display are picked up and conveyed,” the steps necessary to embed a Tweet were sufficient to violate Goldman’s copyright in the photo. There was nothing in either the text or purpose of the Act that suggested that physical possession of an image was a necessary element to its display for purposes of the Act.

The court found further support for its conclusion from the U.S. Supreme Court’s decision in American Broadcasting Cos. v. Aereo, 134 S. Ct. 2498, 189 L. Ed. 2d 476 (2014), where the Supreme Court held that Aereo had infringed copyright holders’ rights by selling its subscribers a technologically complex service that allowed them to watch television programs over the Internet at about the same time as the programs were broadcast over the air. The court found the decision in Aereo to be “instructive” in that the Supreme Court “eschewed the notion that Aereo should be absolved of liability based upon purely technical distinctions.” The court concluded that the decision in Aereo supported Goldman’s argument that liability “should not hinge on invisible, technical processes imperceptible to the viewer.”

Conclusion

The court’s decision in Goldman appears to be the first in the Second Circuit to analyze in great detail whether an embedded photo on a third-party server violated the copyright owner’s exclusive right to display. Although certainly a win for Goldman and other similarly situated copyright owners, the case is far from over. As the court itself recognized, there are numerous questions that need to be resolved before a final victor is crowned, including whether Goldman had effectively released his image into the public domain when he posted it to his Snapchat account as well as issues of fair use and a possible defense under the Digital Millennium Copyright Act. However the case ultimately is resolved, the court’s decision in Goldman has, for now, reset the copyright infringement bar and made it clear that an online use of a photo embedded on another website can violate the Act.

Shari Claire Lewis, a partner in Rivkin Radler, can be reached at shari.lewis@rivkin.com.