Goldman v. Breitbart News, LLC: The Embedding Balance Has Tipped, per U.S. District Court

February 20, 2018


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By: Scott J. Sholder and Nancy Wolff

On February 16, Judge Forrest of the U.S. District Court for the Southern District of New York in Goldman v. Breitbart News, LLC – one of a pair of cases pending in Manhattan federal court concerning the practice of “embedding” copyrighted content – issued a ruling in favor of the plaintiff, photographer Justin Goldman, holding that embedding (or framing) content from another website does not immunize content users from copyright infringement claims. The court declined to adopt the Ninth Circuit’s “server test” as set forth in Amazon v. Perfect 10, holding that the location of the allegedly infringed work does not determine whether a defendant has “publicly displayed’ that work in violation of the copyright owner’s exclusive rights. Put another way, “the fact that the image was hosted on a server owned and operated by an unrelated third party . . . does not shield” defendants from a finding that a plaintiff’s display right had been violated.

As background, this case is one of a pair of cases pending in the U.S. District Court for the Southern District of New York, that Justin Goldman has brought against various online media outlets to determine whether embedding images on a website through in-line linking without authorization constitutes copyright infringement. A website embeds an image using an in-line link when it uses HTML code to direct a user’s browser to an image file hosted on and transmitted from a server controlled by a third-party (usually another website) yet it appears as if the image resides on the website the user is actually viewing. The allegedly infringing website effectively opens a “window” allowing the user to see an image hosted by a third party, yet never actually copies, stores, or serves up the image itself.

Because of the 9th Circuit ruling in favor of the server test in Amazon v Perfect 10 (which DMLA filed an amicus brief opposing the server test) many digital media companies will use this technology. Many content owners and their representatives, believe this type of embedding harms the image licensing market by permitting the display of content without proper licensing.

The defendants in both the Breitbart cases lost initial motions to dismiss and moved in each instance for partial summary judgment on the question of the legality of embedding under the Copyright Act (a motion complete with amicus briefs). Goldman’s companion case, Goldman v. Advance Publications, Inc., et al., is pending in the same court but before a Judge Carter , and is at an earlier procedural stage.

At issue in the Breitbart summary judgment motion is whether the defendants’ embedding of a photograph posted on Twitter constitutes unauthorized “public display” of that photograph in violation of 17 U.S.C. § 106(5). The defendants, including Time, Inc., Yahoo, Inc., and Vox Media, own media outlets that reported about New England Patriots quarterback Tom Brady’s meeting with members of the Boston Celtics in the Hamptons – a newsworthy occurrence in the context of NBA player trades. Goldman captured a photograph of the athletes, which several Twitter users posted on the social media platform. The defendants then embedded tweets containing Goldman’s photograph using in-line linking. Goldman sued for copyright infringement, asserting that this display in connection with thestory violated his rights under copyright.

The Defendants, in moving for summary judgment opposing Goldman’s direct copyright infringement claims, rely heavily on Perfect 10 v. Amazon in which Google’s in-line linking of the plaintiff’s copyrighted images of nude models was not copyright infringement because the images were stored on the servers of third-party sites. Goldman counters that Perfect 10 was wrongly decided because the user still displays the photo; that there are significant technological differences between what Google did in Perfect 10 and embedding content from social media platforms; and that Perfect 10 does not apply because it is not precedential in the Second Circuit.

The court agreed and chiefly relied on the language of the Copyright Act, including § 101’s definition of “display,” which includes showing a copy of a work by any “device or process,” and transmitting or communicating a display by means of any “device or process.” The court explained that the Copyright Act does not require a user to possess, or to store at their own physical location, a copy of the work to display it within the meaning of the statute. The court further looked to legislative history and the 2014 decision in Aereo to note the application of the Copyright Act to new technologies.

Consequently, the district court found that the defendant websites engaged in processes that resulted in transmission and “display” of the photograph at issue even though the photograph was stored on Twitter’s servers, noting the seamless presentation of the photograph on their websites from the perspective of a website visitor. Moreover, the court expressed skepticism that Perfect 10 correctly interpreted the Copyright Act’s display right, but that, even so, there were key factual and technological differences that distinguished it from the Breitbart case. Specifically, in Perfect 10, the defendant, Google, operated a search engine that indexed web content for easy reference and facilitation of access, and users made active choices to click on images before they were displayed, whereas in Breitbart, users simply viewed a webpage that displayed an image regardless of whether the user specifically looked for it or clicked on it. Moreover, the court found that very few cases followed the “server test,” and so was unconvinced that there was an “unbroken” line of cases supporting the position set forth in Perfect 10.

Goldman’s companion case against Advanced Publications, Inc., is still pending, with Judge Carter staying discovery and requesting immediate notification of a decision in the Breitbart case as of January 19, 2018. It remains to be seen whether Judge Carter will be influenced by Judge Forrest’s decision, and whether any appeals will be forthcoming.

Judge Forrest’s decision is seen as a victory for content owners, creators, and licensors who believe that the technological machinations behind how content is posted should not serve as a workaround to proper licensing. Presumably the case closes a perceived loophole against IP licensing, and its scope would apply to the display right of any content. While the blogs (and particularly the tech writers) were a buzz about how this case ruins sharing online, the Breitbart court did not believe that the resultant impact of its decision on the Internet at large would have as “dire consequences” as predicted by the defendants and their amici, and noted that in this case, strong defenses to liability separate from the “server test” still exist, including proper ownership, licensing/authorization, fair use, the DMCA safe harbor, and innocent infringement. Nonetheless, these defenses only come into play once a claim or action is asserted, so proper instruction on licensing is still important.

DMLA supported Getty Images and other visual artists associations in filing an amicus brief supporting Goldman in opposition to the server test. A copy of the amicus brief is here and the decision is here.