IP Law Daily, COPYRIGHT NEWS: A challenge to the ‘server test’ reaches the Supreme Court, (Apr 3, 2025)

By Matthew Hersh, J.D.

The Court is asked to weigh in on a unique Ninth Circuit doctrine.

The Supreme Court should decide whether a website operator violates the exclusive right to display a copyrighted work when it embeds a link to the image hosted elsewhere rather than hosting the image directly on its own site, a new petition for certiorari asserts. The petition, which takes on the Ninth Circuit’s so-called “server test,” argues that the test has been rejected in other courts around the country and that the issue is “exceedingly important” to many actors in the copyright industries (McGucken v. Valnet, Inc., No. 24-1040 (U.S. filed Mar. 28, 2025)).

The lawsuit was brought by Elliot McGucken, a professional photographer and frequent copyright litigant. (IP Law Daily has covered litigation involving his works here, here, here, and here.) In this action, the photographer’s complaint took aim at Valnet, Inc., the operator of the website www.thetravel.com, for allegedly displaying his protected photos on the website. But it was undisputed that, in fact, the website did not host the photos on its own servers, but merely embedded code on its website that allowed site visitors to view the photos through a link to the photographer’s own website.

The district court, on these facts, dismissed the complaint, and the Ninth Circuit, in a short unpublished decision, affirmed. That led to this petition for certiorari.

Server test. The petition focuses on a highly controversial artifact of Ninth Circuit law known as the “server test.” Under that test, established in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), if a party displays a copyrighted image that it has stored on its own systems, then it has infringed—but if it displays an image by merely linking or framing content from other websites, then it has not. It was high time, the petition asserts, for the Supreme Court to decide whether the Ninth Circuit had it right.

The petition gives several reasons why it should be granted. First, the petition notes, it “presents a clear legal question that has divided the federal courts.” No other circuit in the country has addressed the issue. However, district courts in the Second, Fifth and Tenth Circuits—among them, the prominent federal court in Manhattan—have squarely rejected it.

Second, the petition argues, the server test “runs afoul of the statutory text of the Copyright Act.” That Act, the petition argues, confers both an exclusive right to “reproduce” a work and a separate exclusive right “to display the copyrighted work publicly.” The server test, the petition argues, “renders the substantive display right—a right expressly adopted by Congress as a right additional to and beyond the separate right of reproduction—mere surplusage.”

Third, the petition notes, the server test conflicts with the Supreme Court’s holding in Am. Broad. Cos., Inc. v. Aereo, Inc., 573 U.S. 431 (2014), a case involving an unauthorized cable system that sought to evade the exclusive right to publicly perform by means of a contraption that paired individual viewers with individual television antennas—thus making each performance technically “private.” In rejecting that gambit, the petition argues, “this Court reaffirmed that the proper focus of copyright law is on what the observer of a copyrighted work sees or hears, not on the background technological process that produces what is seen or heard.” The same rule should apply here, the petition asserts.

Finally, the petition argues, the issue is “exceedingly important” because of its implications throughout the technology industries. Some 17 different individuals and entities, the petition notes, submitted amicus briefs arguing for or against rehearing en banc of the panel’s decision. “An issue that is so hotly debated that affects so many people and entities—and on which there is disagreement in the courts below—should be decided by this Court,” the petition argues.

The question presented is: “Whether the exclusive right to publicly display a copyrighted work, 17 U.S.C. § 106(5), is infringed when a website operator publicly shows a copyrighted work without authorization, regardless of the technological process used to show the work.”

The Case is No. 24-1040.

Attorneys: Joe Wesley Earnhardt (Swaine & Moore LLP) for Elliot McGucken.

Companies: Valnet, Inc.

MainStory: TopStory Copyright TechnologyInternet GCNNews AlaskaNews ArizonaNews CaliforniaNews HawaiiNews IdahoNews MontanaNews NevadaNews OregonNews WashingtonNews