By Kyle Jahner
Embedding Instagram, Twitter and TikTok posts increasingly is risking copyright liability as judges continue to take shots at what was once an unquestioned shield.
The server test the Ninth Circuit created in 2007 holds that liability for direct copyright infringement on the internet requires the image to have been stored on the defendant’s server.
Embeds under the test are in the clear, because website coding causes content from elsewhere on the internet to appear on a page, with the content beyond the website’s control.
Several New York federal judges have rejected the test in denying motions to dismiss copyright cases.
The most recent of these opinions rebuffed Sinclair Broadcast Group in the U.S. District Court for the Southern District of New York on July 30. “The server rule is contrary to the text and legislative history of the Copyright Act,” the court said.
The cases raise the potential for a split between the Second and Ninth Circuits, the two leading copyright appeals courts. Rejection of the server test could create a rash of new litigation, and prompt newsrooms and media companies to re-examine their embed policies—if they haven’t already.
Another judge who denied a server test dismissal will soon rule on summary judgment in a case involving Newsweek. Embedding is taking fire from another direction as well after a May class action lawsuit against Instagram in the U.S. District Court for the Northern District of California alleged its embed tools induce infringement.
If the Newsweek case were appealed and the Second Circuit rejected the test, it would create a circuit split on a question central to governing copyright on the internet. That would tee the issue up for potential U.S. Supreme Court review.
Copyright attorney Joshua Jarvis of Foley Hoag LLP expects courts around the country to follow the lead of the U.S. District Court for the Southern District of New York judges currently rejecting the rule.
“The server test is an easy bright-line approach. It preserves the status quo with regard to embedding. But it essentially ignores display and public performance rights that are part and parcel with copyright,” Jarvis said. “Everyone needs to be more prudent.”
But the display right in copyright law inherently involves copying and possessing the protected material, intellectual property attorney Andrew P. Bridges of Fenwick & West LLP said. Social media platforms have application programming interfaces (APIs) designed for sharing content that users gave them a right to display, Bridges said.
“If you didn’t want people to embed, you wouldn’t upload your work to a platform that provides APIs specifically designed for embedding,” Bridges said. He said upending the server test “threatens to increase friction on the internet massively” and liability for linking to authorized displays “threatens chaos.”
Attorneys said potential widespread rejection of the server test could lead to an uptick in litigation, but that doesn’t mean online media companies should never embed. Some content may be too short or uncreative to be copyright-protectable. Other embeds may be fair use based on an analysis of the nature of the work, its use, and the effect of that use on the work’s market.
Media companies should already be careful, but publishers also have incentives to find a way to embed what they can, copyright attorney Dana Pellegrino of Duane Morris LLP said.
“As always, we try to take the strict lawyer approach—which is usually a killjoy approach for publishers—which is that you should try to obtain a license for media,” she said. “The issue with that is it really stifles media publishers’ ability to engage in conversations with their audience. There’s a huge benefit of having media embedded in an article.”
Creators also face a balancing act. Copyright attorney James Sammataro of Pryor Cashman LLP suggested social media offers a free platform for exposure, with the tradeoff that their content gets broad exposure. But other attorneys highlight that it also cuts off licensing opportunities.
And while Bridges said creators should accept that sharing is inevitable when they publicly post to share-friendly platforms like Instagram, Pellegrino noted a resulting dilemma.
“To limit content by making it private would really be cutting them off from their market,” she said. “Naturally the reaction is ‘well make it private.’ But that doesn’t account for the reality of how social media is used as a business tool.”
Sammataro said companies would benefit from legal clarity. That would likely take years, however.
In the meantime, he pointed to technical solutions by the platforms themselves. YouTube allows users to disable embeds for their videos, and other platforms like Instagram and TikTok could implement similar tools.
Sammataro also suggested novel technical measures like an instant license that pops up upon an embed attempt, which could seamlessly let news organizations get permission and creators get paid.
“I do think that may be the path forward: not through the law but a practical way forward where everyone gets something, and we’re all a little bit dissatisfied,” Sammataro said.
The Ninth Circuit created the server test in Perfect 10 Inc. v. Google Inc., a case involving thumbnails that appeared in Google Image Search. The Seventh Circuit adopted it but most other circuits haven’t ruled either way. District courts generally didn’t challenge it until a Texas court did in 2017.
New York judges joined in cases involving embeds of a Tweet containing a picture of Tom Brady, and Mashable embedding an Instagram photo of a mother and child in Guatemala, both of which settled.
The November lawsuit against Sinclair involves Instagram embeds of a photo and viral video of a starving polar bear; the videographers cited the Mashable and Newsweek rulings.
The server test’s validity hinges on the interpretations of key words in the Copyright Act like “display” and “copy,” Pellegrino said. The display right is arguably “very very broad,” and courts are increasingly interpreting it that way, she said.
Bridges said the judge in the recent Sinclair case erred by using performance rights and display rights interchangeably, despite the latter not applying.
“You do have to have a copy to display. To display a work is to show a copy of it,” Bridges said. “A copy is always a material object. Performance doesn’t involve material objects. Display does.”
But Jarvis said it’s the server test that misapplies the Copyright Act by focusing on copying, just one of several separately listed rights. Display, defined by law as to “show a copy of” the work, can happen independently of whether someone created a copy, he said.
“I think the biggest flaw is that the server test focuses on a single stick in the bundle of rights that comprise copyrights,” Jarvis said. “It’s applying a meat-space, real-world standard of analysis to a virtual environment.”
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