IP Law Daily, COPYRIGHT—D. Utah: Court serves up another narrow view of the display right, (May 4, 2023)

By Matthew Hersh, J.D.

The Ninth Circuit’s “server test” gets another boost from a court in a different circuit.

An imaging licensing company and exclusive licensee of works by a professional photographer had standing to pursue copyright infringement claims against a comic book movie fan website that displayed 18 photographs without authorization, the federal court for Salt Lake City has held, in denying the website operator’s motion to dismiss. The court, however, narrowed the affirmative defenses available to the website operator based on its claim that the subject images were displayed “by embedding the image and linking back to a third-party server that was not owned or controlled” by the website operator. The website operator would be permitted to assert that it did not violate the photo agency’s exclusive display right to display in the photographs where it merely embedded a link to those photographs on a third-party site instead of hosting them on its own server. But the website operator’s disclaimer of ownership and control of the systems hosting the subject images precluded it from asserting a DMCA safe harbor defense (Great Bowery v. Best Little Sites, May 2, 2023, Barlow, D.).

The lawsuit involves 18 photos taken by Annie Leibovitz, a critically acclaimed photographer. Trunk Archive is an image licensing company that owns the exclusive right to license Leibovitz’s photos. The licensing company’s website, perhaps not surprisingly, devotes some 25 different webpages to its collection of Leibovitz (promising also that its archive is “considerably more extensive” than what is available in the public view).

The licensing company became aware that the eighteen Leibovitz photos were being displayed on the website comicbookmovie.com,which bills itself as “a website reporting breaking news and providing unique content about current Hollywood projects that bring comics characters and storylines to the big screen.” The licensing company, apparently not amused by the comic venture, brought a lawsuit for copyright infringement.

The parties moved for judgment on the pleadings on several different issues, leading to this opinion.

Server test. The court, beginning with perhaps the most difficult question of law, refused to dismiss the website’s “server test” defense. According to the website’s pleadings, the photographs in question were not actually copied to the website’s servers and displayed from there. Rather, the photos were “embedded” on the website—meaning that when comic afficionados visited the site, they were actually viewing the photos via a link back to a third-party website where the photographs were hosted. (Think of a built-in telescope that enabled the website visitor to view the photographs from afar.) Did this constitute an unlicensed “display” of the photographs under the Copyright Act? The website owners argued that it did not. The court agreed.

The reason why this did not constitute an unlicensed display, the court emphasized, was simple: the weight of the authority did not support it. There was no Tenth Circuit authority on point, the court noted. And there were a few district court decisions in other circuits—primarily the Southern District of New York—the tended the other way. But the appellate court authority, the court noted, all supported the website’s argument. The most important was the “server” test as set forth in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007). In that case, the court of appeals addressed whether Google’s unauthorized display of thumbnail and full-sized images violated the copyright holder’s exclusive right to display its works. The court found that it did not. “Simply put,” the district court summarized, “if a party displayed a copyrighted image that it had stored on its own systems, then it had infringed; if it displayed an image by merely linking or framing content from other websites, then it had not infringed.” A Seventh Circuit authority opinion, as well as decisions from other district courts in the Tenth Circuit, were in accord. The Ninth Circuit opinion, therefore, was “settled authority.”

Nor had the image licensing company tendered sufficient policy arguments to overcome the weight of authority, the court found. The licensing company argued that the website was exploiting a “hyper-technical loophole.” Moreover, the licensing company argued, a website could always simply provide users with a link to the work rather than actually showing the image to them directly—which allows companies like the comic the comic venture to “simply ‘piggyback’ off of a licensed use by embedding on to their own website while avoiding having to seek a license.” But these policy arguments were not enough, the court found. All embedding does is to redirect a user to the source of the content—in this case, an image hosted by a third-party server. “The copyright holder could still seek relief from that server,” the court noted.

Moreover, the court noted, “in no way has the holder surrendered control over how, when, and by whom their work is subsequently shown” Indeed, to guard against infringement, the court noted, “the holder could take down the image or employ restrictions such as paywalls.” Thus, the server test defense would remain in the case.

DMCA safe harbor. But while the website operators could keep the server test in the case, they could not rely on the DMCA safe harbor as a defense. Here the logic of the safe harbor argument worked against the comic website. The site owners argued that their conduct was protected against the safe harbor applicable where “infringing material was stored at the direction of the user.” But the website operators had already conceded that the material was not stored on their servers at all. Nor could the website argue that the safe harbor applies to companies that provide collateral functions related to storage, such as providing access, transmission, routing, or connections. To be sure, the court noted, “‘storage’ for purposes of the safe harbor provision extends beyond the storage itself.” But the safe harbor still required “an underlying act of user-directed storage,” the court noted—and that was not present here. The DMCA defense would therefore fail.

Standing. The website operator could also not prevail on its standing argument, the court held. The issue involved a tricky question of law that IP Law Daily has covered recently in other contexts. The photo agency in this case owned an exclusive license to the Leibovitz photographs—but that exclusive right was, the website operators contended, only a right to license others to display the work, not a right to display the work themselves. But on-point authority from other circuits said that was enough to constitute an exclusive right under the Copyright Act, the court reasoned. Thus, the photo agency has pleaded sufficient facts to assert standing.

The Case is No. 2:21-cv-00567-DBB-JCB.

Attorneys: Mathew K. Higbee (Law Firm of Higbee & Associates) for Great Bowery d/b/a Trunk Archive. Robert E. Aycock (Kimball Anderson) for Best Little Sites d/b/a www.comicbookmovie.com, Nathan Best and Mark Cassidy.

Companies: Great Bowery d/b/a Trunk Archive; Best Little Sites d/b/a www.comicbookmovie.com

Cases: Copyright TechnologyInternet GCNNews