United States: Embedding And The "Server Test" Survive In The Ninth Circuit…For Now

The Ninth Circuit has ruled that its "server test" allows for copyrighted content to be embedded on another's website without violating U.S. copyright law, the copyright owner's public display right in particular. 17 U.S.C. § 106(5). Why? Because embedding does not involve storing the copyrighted content on the website owner's computer or server, it merely provides instructions to a web browser to show content stored on the host website. The decision could be short-lived, however, as the three-judge panel noted several times that its ruling was required by existing Ninth Circuit precedent that could not be overruled outside of an en banc proceeding. The two photographers who brought the case, Alexis Hunley and Matthew Scott Brauer, have already accepted the panel's invitation and have been granted until August 28th to file a petition for en banc review.

This case began when BuzzFeed and Time embedded and displayed Hunley and Brauer's public Instagram photos in online articles without their consent. Hunley and Brauer brought a copyright infringement class action lawsuit against Instagram on behalf of themselves and other copyright owners whose works were displayed (without consent) on third-party websites via Instagram's embedding tool. Although Hunley and Brauer conceded that Instagram was not directly liable for copyright infringement, they claimed that Instagram was secondarily liable because Instagram allowed BuzzFeed and Time to embed their photos.

Hunley and Brauer asserted three causes of action: inducement of copyright infringement, contributory copyright infringement, and vicarious copyright infringement. Instagram moved to dismiss, arguing that the server test precluded relief because BuzzFeed and Time did not store the images on their own servers and thus did not display copies of the copyrighted works within the meaning of the Copyright Act. And without any direct infringement by BuzzFeed and Time, Instagram argued it could not be held secondarily liable. The district court agreed and dismissed the complaint without leave to amend. Hunley and Brauer appealed.

The Ninth Circuit affirmed the dismissal, agreeing that the server test applied and barred Hunley and Brauer's claims. The Court began by explaining the technical process of posting images on Instagram and embedding them elsewhere. In short, Instagram users with public profiles grant Instagram a royalty-free sublicense to display any photos they post publicly, and Instagram allows third-party websites like BuzzFeed and Time to embed those photos on their websites. Importantly, someone who embeds a photo from another website does not store a copy of the image on its own server.

The Court then summarized the legal framework of the Copyright Act, including the Court's interpretation and application of it in the decision that established the server test-Perfect 10 v. Amazon, 508 F.3d 1146 (9th Cir. 2007). In that case, the Ninth Circuit held that Google-who was accused of copyright infringement based on the embedding of images from Perfect 10's magazines in Google search results-was not liable under the newly created "server test" because Google did not "store" a copy of Perfect 10's photos.

Turning to Hunley and Brauer's case, the Ninth Circuit rejected the photographers' arguments that the server test did not apply. First, the Ninth Circuit rejected the argument that the server test should apply only to search engines like Google. It found that Perfect 10 did not restrict the application of the server test to search engines, as the decision did not rely on the unique context of a search engine but rather the "plain language" of the Copyright Act and Ninth Circuit precedent regarding fixation. The Ninth Circuit also noted that it had previously applied the server test beyond search engines, including to images embedded in blogs and online bulletin boards. The Ninth Circuit did recognize that several district courts outside of the Ninth Circuit have rejected or limited the server test and that no other Circuit had explicitly adopted the test.

The Ninth Circuit next rejected the argument that the server test should not apply to Hunley and Brauer's claims because it was inconsistent with the Copyright Act and intervening Supreme Court authority. As to the alleged conflict with the Copyright Act, the Ninth Circuit held that, even if it believed Perfect 10's server test created some inconsistencies with other provisions of the Act, it could not overrule the precedential Perfect 10 opinion outside of an en banc proceeding unless there had been a change in the statute or an intervening Supreme Court decision. The Ninth Circuit found neither here.

While Hunley and Brauer argued the Supreme Court's decision in American Broadcasting Co. v. Aereo, 573 U.S. 431 (2014) conflicted with Perfect 10, the Ninth Circuit disagreed. In Aereo, the Supreme Court held that an equipment provider allowing streaming of cable television over the Internet infringed broadcasters' rights of public performance. Hunley and Brauer argued that Aereo controlled because the public display rights (at issue in this case) and performance rights (at issue in Aereo) were "easily [] interchanged" and exclusive. But the Ninth Circuit saw it differently, finding that the right to public display requires an underlying copy, whereas the performance right does not. As Aereo did not consider the predicate question whether embedding constitutes display of a copy-the central question in this case and in Perfect 10-the Court held that Perfect 10 still foreclosed Hunley and Brauer's claims.

The Ninth Circuit then applied the server test to Hunley and Brauer's claims, noting that Instagram was shielded from direct liability because Hunley and Brauer granted Instagram a nonexclusive sublicense to display the photos they posted to their public Instagram profiles. The Court further held that BuzzFeed and Time and were not directly liable for embedding Hunley and Brauer's photos because their embedding instructions displayed the photos from Instagram's servers, not from their own. And without any predicate direct infringement by BuzzFeed and Time, Instagram could not be secondarily liable. Though the Ninth Circuit panel affirmed the dismissal, a petition for en banc review may be coming soon.

The case is Hunley v. Instagram, LLC, 73 F.4th 1060 (9th Cir. 2023).

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