Rethinking Image Rights

• Published date: 02 October 2021
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Margaret Esquenet and Mary Kate Brennan

Since 2007, when the Ninth Circuit adopted the 'server test' in Perfect 10, Inc v Amazon.com, Inc,¹ companies and individuals sued for copyright infringement have relied on its holding that whether a website publisher is directly liable for copyright infringement turns on whether the image is hosted on the publisher's own server or is embedded or linked from a third-party server.

Earlier this year, two photographers filed a copyright infringement suit against Instagram challenging the server test.²Instagram's motion to dismiss the suit - and potentially, protect its and other media companies' business models - hinges on the viability of the server test as a defence to such claims.

In Perfect 10, the plaintiff, a subscription website for images of nude models, alleged that Google and Amazon infringed its copyrights because (1) Google's search engine results included reduced-sized, lower resolution "thumbnail" versions of its original images, and (2) Google's business agreement with Amazon permitted Google's search engine to send search results, including the plaintiff's original images, to Amazon's customers.

The Ninth Circuit found that (1) the thumbnails were infringing based on the fact that they were stored on Google's server, and (2) the full-size original images, which were stored on third-party servers and accessed by in-line linking (which works like embedding) were not infringements.

Fourteen years later, the server test is the subject of renewed scrutiny. Moreover, the Hunley litigation could lead the Ninth Circuit itself to revisit the Perfect 10 decision in light of developments in how images are used and disseminated online.

In Hunley, the photographers' complaint attacks the server test, alleging that "Instagram misled the public to believe that anyone was free to get on Instagram and embed copyrighted works from any Instagram account, like eating for free at a buffet table of photos, by virtue of simply using the Instagram embedding tool."³

Stated differently, the plaintiffs promulgate that Instagram and its parent company, Facebook, profit from the embedding process which constitutes secondary and contributory copyright infringement.

In response, Instagram's motion to dismiss argues that the plaintiffs' secondary liability claims are barred "...Under the server test, then, the third-party websites cannot be direct infringers. (And Instagram, of course, cannot be a direct infringer because, as Plaintiffs concede, Instagram has a license to...