S.D.N.Y. Again Rejects "Server Test" For Display Of Embedded Content

• Published date: 11 August 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Copyright, Social Media
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mary Kate Brennan and Margaret A. Esquenet

Canadian conservationist Paul Nicklen posted a video he took of an emaciated polar bear in the Canadian Arctic on his Instagram account on December 5, 2017. In the text accompanying the "haunt[ing]" and "heartbreaking" video, Nicklen asked his followers to consider the effects of climate change. Sinclair Broadcast Group, Inc., like many other news outlets, covered Nicklen's viral content. In an online article, Sinclair "embedded" Nicklen's video through HTML code provided by Instagram.

Nicklen, as author and registered copyright owner of the image, sued Sinclair for copyright infringement in the United States District Court for the Southern District of New York. Sinclair moved to dismiss the action, "arguing that embedding a video does not 'display' the video within the meaning of the Copyright Act" and seeking protection under the Ninth Circuit's so-called Server Test. Judge Jed S. Rakoff denied Sinclair's motion, holding that "[t]he server rule is contrary to the text and legislative history of the Copyright Act."

The Ninth Circuit adopted the server test in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), 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. In that case, Perfect 10, 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 Perfect 10'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.

In his July 30, 2021 decision, Judge Rakoff refused to adopt the server test for two primary reasons. First, he held that "[t]he Act defines to display as 'to show a copy of' a work, 17 U.S.C. ' 101, not 'to make and then show a copy of the copyrighted work.'" Second, he distinguished Perfect 10, holding that "this case does not involve a search engine, and Nicklen alleges that no user intervention was required to display...