Most companies understand they should obtain a license before using a photograph in an advertising campaign or on printed materials. And yet companies may not think twice about embedding images from a tweet or social media post into the company’s own social media feed or website. But embedder beware. A federal judge in the U.S. District Court for the Southern District of New York recently rejected and limited the application of the so-called “Server Test”.
In jurisdictions that have adopted the Server Test, a website publisher can only be liable for direct infringement when a copyrighted image is hosted on its own server as opposed to being embedded or linked from a third-party server. On February 15, 2018, the court in Goldman v. Breitbart News Network, LLC, et al., U.S. District Court for the Southern District of New York, No. 17-cv-3144, found that embedding a tweet of a copyrighted image can be considered copyright infringement, regardless of where the image is hosted.
The Copyright Act grants copyright owners several exclusive rights to control the distribution and use of copyrighted works, including the right to make copies of the work, the right to distribute those copies to the public, and the right to publicly display the copyrighted work. In the Goldman case, the Court held that embedding a tweet of a copyrighted image can violate the copyright owner’s exclusive display right.
Goldman v. Breitbart News Network, LLC, et al.
This case started with a single candid photograph of famed NFL player Tom Brady, in the Hamptons, taken by the plaintiff. After posting the photo onto his Snapchat feed, plaintiff’s photo went “viral” and made its way onto other social media platforms, including Twitter, where it was uploaded by several users. The defendants are online news outlets and blogs that embedded a link of such tweets in articles they published over the next two days concerning Tom Brady’s role in the Boston Celtic’s recruitment of basketball player Kevin Durant. Plaintiff sued the defendants for displaying the photograph without his permission.
The parties agreed to bifurcate the litigation into two stages, the first to determine whether defendants’ actions violated plaintiff’s exclusive display right, and the second to determine the remaining issues including the viability of certain defenses. This decision deals with the first stage of the litigation. In granting plaintiff’s motion for partial summary judgment, the court ruled that defendants’ actions—embedding a tweet containing plaintiff’s copyrighted photograph into the articles displayed on their website—could indeed constitute copyright infringement because such actions violated the plaintiff’s exclusive right of display under the Copyright Act.
The Mechanics of Embedding
Notably, none of the defendant websites actually downloaded plaintiff’s photograph from Twitter or hosted the photograph on their own web servers. Instead, they used the technical process known as “embedding” to make the photographs visible with the text of their articles. “Embedding” an image on a website involves intentionally adding to a website specific HTML code that directs the web browser to retrieve the specified image from a third party server. Although it links back to a third-party website, an embedded image will seamlessly appear full-sized on the web page. Most social media sites provide the code to let a user easily embed the image on another site. In contrast, when a user “retweets” a post containing an image, he or she is merely providing a hyperlink to that post and is not displaying a full-sized version of the image on his or her own feed.
The defendants in Goldman urged the court to apply the Ninth Circuit’s Server Test. The court, however, rejected the application of the Server Test, noting that the Server Test has not been widely adopted outside of the Ninth Circuit and that no court in its district had adopted it in connection with the display right at issue in the case at hand. The court further observed that only the Seventh Circuit has weighed in on the issue, and only with regard to contributory infringement. The court also credited the argument of plaintiff and several amici that adoption of the Server Test would eliminate the incentives for payment of license fees and would deprive content creators of necessary resources.
Only time will tell whether other courts will follow Goldman’s holding that the act of embedding a copyrighted image on a website can be actionable. For now, the circuit split has been exacerbated, and it would be wise for a company to think twice before it decides to click the embed button.