India: Is Embedding Tweets, A Copyright Infringement: Case Study Justin Goldman vs Breitbart News Network & Ors., Heavy Inc

Facts of the case

On July 2, 2016, the plaintiff Justin Goldman clicked a photograph of Tom Brady, a football quarterback for the New England Patriots, with Boston Celtics Manager Danny Ainge and others in East Hampton and posted it on his snapchat story speculating that Brady was helping recruit basketball star Kevin Durant for the Celtics. The photo went viral and was shared on Twitter and other social media platforms by various twitter users including famous television anchor Cassidy Hubbarth, among others, finally finding its way to the defendants' website through the act of 'embedding (displaying images of)' the Tweet into articles which the their (defendants') news outlets and blogs published. Each of defendants' websites prominently featured the said photo by "embedding (displaying images of)" the Tweet into articles they wrote over the course of the next 2 days speculating whether the Boston Celtics would successfully recruit basketball player Kevin Durant, and if Tom Brady would help to seal the deal.

Thus, the case involves the question of how the images shown on one website but stored on another website's server leads to infringement of the owner's exclusive copyright to such image.

As a result of the embedding function, none of the websites downloaded, copied or stored the photograph on their own servers; instead, the function directed the internet users who accessed the defendants' sites to retrieve images of the embedded tweets from Twitter and place the images alongside the text of the articles.

Plaintiff sued the news outlets for copyright infringement, and the defendants moved for partial summary judgment on the issue - whether their display of the embedded tweets on their websites violated plaintiff's exclusive right to publicly display his photograph under Section 106(5) of the US Copyright Act, 1976.

Issues discussed

1. Whether the act of embedding by the defendants was an infringement on the plaintiff's right to display.

2. Whether the images shown on one website but stored on another website's server leads to infringement of the owner's exclusive copyright to such image.

Arguments by respective the parties

The defendants relied on the Ninth Circuit's "Server Test," articulated in the 2007 decision in Perfect 10, Inc. v. Amazon² and argued that the same shielded them from liability because they did not host the photograph on their server; in fact, it was hosted on Twitter's servers. In Perfect 10, the Ninth Circuit held that whether a website publisher is directly liable for infringement rests entirely upon whether the image is hosted on the publisher's own server. In doing so, the circuit court held that Google was liable for infringement in connection with the display of thumbnail images as part of its Google Image Search, because it hosted those images on its server, but was not liable for the full-size images accessed by clicking on the thumbnails, which were hosted on third-party servers.

The Plaintiff countered that Perfect 10's Server Test is inconsistent with the purposes of the Copyright Act and does not, in any event apply to cases like his. He also argued that the test's application could have a "devastating" impact on photography and visual artwork licensing industries by eliminating incentives for websites to pay licensing fees.

Judgment

The Court granted partial summary judgment to the plaintiff. The ratio laid down in the case is that physical possession of an image is not a necessary element to its display for purposes of the Act and embedding such images through host server websites without a license is infringement under the Copyright Act, 1976. The Court went on to discuss the judgment in Perfect 10, Inc., v.Amazon.com to deny the applicability of server's test to the present case.

According to the server's test, the Perfect 10 judgment held that full size images stored on third party servers displayed on Google search and accessible through in-linking, like embedding were not copyright infringements. The Court, however, considered the line of judgments quite scattered as the lower Court in Flava Works Inc., v Gunter¹ held that website servers need not actually store a copy of the work in order to 'display' it. While most other judgments did not apply server test to arrive at a decision, it was in the case of The Leader's Institute, LLC v Jackson² where the Court rejected the Perfect 10 judgment, by rejecting the criteria of actual possession of a copy as a necessary condition to violating a copyright owner's exclusive right to display.

Factual distinctions from Perfect 10 judgment, relied upon by the plaintiff, cover the fact that the user took no action to 'display the image' and hence the assistance provided by the search engines such as Google whereby the user navigates from webpage to webpage is not the same as opening up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not. Moreover, search engines merely indexed the web facilitating the users to readily find information wherein the users are engaged in direct connection with third party websites which are then themselves responsible for transferring the content.

Analysis of the judgment

The judgment was debunked and criticized on several grounds. Major arguments were raised by public interest groups such as Electronic Frontier Foundation and Public Knowledge, who even filed an amicus brief before the Court urging the application of the Server Test so as to allow the in-linking where the servers of the website do not physically possess the images (or the copyright content) but merely provide a link to the host website. The Copyright Act, 1976, refers to the infringement of 'right to display' where the party 'shows a copy of it' wherein the copy includes a 'material object which is fixed and from which the work can be perceived, reproduced, or otherwise communicated, either directly or through a machine. Thus, it was rightly held in the Perfect 10 Inc., v Amazon, Inc.³, where the Court opined the Server's Test to mean that as long as Google is not storing a copy of the image and merely directing the user's browser to the host website of the publisher which stores the image it is not infringement of copyright. Though Judge Forrest claims that the case laws with respect to the applicability of the said doctrine is scattered, yet a number of judgments such as in the cases of Flava Works, Inc v. Marques Rondale Gunter⁴,etc., the judgement in Perfect 10 has been accepted by the Courts. Further, the reliance on the Aereo judgment⁵ can be questioned on the ground that the Court referred to scenarios where physical transmission of signal of work is done in the presence of a copy of work, to mean performance of the right. This is the ⁵ American Broadcasting Cos., Inc. v Aereo Inc 874 F. Supp. 2d 373, 377–79 (S.D.N.Y. 2012) exact role played by the server and hence it favors the defendants in the case rather than the plaintiff. Moreover, the technical distinction of the user ultimately 'choosing' the program consequent to which the transmission took place was held to be immaterial in the Aero Decision, whereas the Goldman case was based on the technical distinction as to the storage of the images in the defendant's servers being the vital question to determine infringement.

The judgment has been criticized considering the limitation it creates on the sharing of content on the Web and the far-reaching consequences on commercial interests, viewership rates and the medium of expression, which the internet boasts of.1 The server's test places a limit on the liability in case of copyright infringement which encourages and allow users to create interesting web content in the form of comments on recent news, videos, expressing opinions etc. , all of which will be curbed if the freewheeling use of embedded content is disallowed. In fact, social media websites such as Facebook, Twitter, YouTube who especially provide for 'embed link' options, will face difficulty with respect to the commercial returns in the form of advertising revenues generated from the traffic created through the 'embedding of links'

While India is yet to deal with any such case where a copyright infringement of embedded web content is questioned, international decisions outside the American jurisprudence highlight that embedding is not an act of copyright infringement. In the case of BestWater International GmbH v Michael Mebes and Stefan Potsch, wherein the Court had to decide whether uploading/embedding the promotional videos by sales representatives of BestWater, on their own websites from YouTube was infringement of copyright or not. The Court referred to the Directive under the European Union and interpreting the same arrived at a conclusion that when the embedding is done in a website, of a protected work which is publicly accessible on another website through a link using the framing technology, it would not mean communication as per the European Union Directive. Thus, mere usage of a different technical means from the original means of communication does not create liability.

Thus, the embedding of twitter links, as performed by the defendants in the Goldman Case must not amount to infringement of copyright as it is mere communication and transmission of links and does not consist of any transfer of the web content itself for which the users are and will be redirected to the host website. The appeal in the Second District with respect to the judgment is awaited to put an end to the difficulty of thousands of general internet users by upholding of the Server's Test.

Footnotes

Intern, 4th year, National University of Study and Research in Law,Ranchi

2 508 F.3d 1146 (9th Cir. 2007)

1 2011 WL 3876910 at * 4(N.D. III. Sept. 1, 2011)

2 2017 WL 5629514 (N.D.Tex. Nov. 22, 2017)

3 508 F.3d 1146, 1160 (9th Cir. 2007) 17 U.S.C 101

4 689 F.3d 754 (2012)

5 Packingham v North Carolina, 137 S. Ct. 1730, 1735 (2017)

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