IP Law Daily, COPYRIGHT—N.D. Cal.: Ninth Circuit ‘server test’ comes to the rescue of Facebook, (Oct 26, 2022)

By Matthew Hersh, J.D.

The disputed rule, not followed in some other courts, thwarts a photographer’s lawsuit against the social media giant over third-party embedding.

A photographer and Facebook user could not sue the social media giant over claims that it induced third parties to “embed” photos from his posts onto their own websites because he did not claim that the photos were actually hosted on those third-party servers, the federal district court for San Francisco has held. The court, in dismissing with leave to replead the photographer’s would-be class action lawsuit, underscored that under circuit law, a website owner does not infringe a photographer’s right to display his work merely by rendering the photo by means of a link to the photographer’s own page (Logan v. Meta Platforms, Inc., October 25, 2022, Breyer, C.).

The lawsuit arose when Don Logan, a photographer, began posting photos to his Facebook page. At some point after 2013, the photographer alleges, third parties began using a new tool offered by Facebook to embed a number of his photos into their own websites. The photographer also contends that Facebook embedded on its own servers several photos he had posted to the sharing platform Wikimedia Commons, stripping away metadata on his photos in the process.

The photographer sued Facebook in early 2022 in the Southern District of New York, but the parties shortly thereafter stipulated to transfer the case to the Northern District of California. The photographer’s amended complaint, filed as a putative class action after the transfer, alleges false advertising under the Lanham Act, direct and secondary copyright infringement, and violation of the Digital Millennium Copyright Act, or DMCA.

Facebook moved to dismiss the complaint, leading to this decision.

Secondary liability. The court, relying on the Ninth Circuit’s “server test,” dismissed all claims related to secondary copyright infringement—albeit with leave to replead. In order for Facebook to be secondarily liable for infringement by third parties who used its embedding tool, those third parties would have had to be responsible for infringement themselves. But the photographer did not plead such liability. The photographer pleaded only that in “embedding” the photos and make them visible to their users, the third parties used coding to link to the photographer’s web page. Under the law in other circuits—including in several districts within the Second Circuit, where the case was originally filed—that would have been enough. But in the Ninth Circuit, under the server test, one does not unlawfully “display” another’s photo unless that photo is actually hosted on the putative infringer’s server. Since the photographer alleged the third-party sites only rendered the photos via links to his own Facebook page, there could be no underlying liability for those third parties—and thus no secondary liability for Facebook.

Direct liability. The court also dismissed the photographer’s direct liability claim against Facebook. To be sure, the court noted, the photographer had in this case specifically alleged that some of the embedded photos in question were hosted on Facebook servers. But the photographer had another problem, the court noted—he had not adequately pleaded that the photos were registered. All the lawsuit alleged was that the photographer had registered certain of the embedded photos, but not all of them. Thus, the lawsuit would have to be dismissed, albeit with leave to replead.

False advertising. The court also easily dismissed this claim. The photographer claimed that in posting his photos, Facebook misrepresented “the creation and ownership” of his photos. But this was the same essential claim as his copyright claim, the court noted. Thus, the court reasoned, “the statute forecloses exactly the kind of claim the FAC pleads: a copyright claim repackaged under a trademark statute.”

DMCA claim. Finally, the court also dismissed the photographer’s DMCA claim. The photos in question were not marked with this own individual copyright tag or watermark, the court noted, but rather the photographer had simply put his copyright notice at the bottom of his website in a shaded box. That was not enough, the court observed, to count as the kind of copyright management information the DMCA protects. And as to the content that was contained directly below each photo—the photographer’s name and a relevant link, among others—the complaint fell short of pleading the DMCA’s so-called “double-scienter” requirement, which would have required not on an allegation that Facebook knowingly removed his information but also a plausible factual allegation that Facebook did so in order to facilitate infringement by its users. Thus, the claim would be dismissed, although, again, with leave to replead.

The case is No. 3:22-cv-01847-CRB.

Attorneys: Lee Squitieri (Squitieri & Fearon LLP) for Don Ramey Logan. Allyson Roz Bennett (Durie Tangri LLP) for Meta Platforms, Inc. f/k/a Facebook Inc.

Companies: Meta Platforms, Inc. f/k/a Facebook Inc.

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