Imagine you operate a website. Another website posts an image or video that you want to discuss on your site. In most circumstances, you cannot simply copy and repost that content without obtaining a license, because someone else owns the exclusive right to display it under the Copyright Act. But your story will not make sense if your readers cannot see the image or video. For more than a decade, following Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), the solution has been to "frame" or "embed" the content. Framing and embedding are methods by which a website operator can show parts of another website without creating a distinct copy of the desired material on the operator's own servers and without distributing or displaying copies of the material.

Perfect 10 held that if a website displays an image directly from another site's server, but never stores a copy on its own server, it does not violate the owner's right to copy or display that content. The Ninth Circuit reasoned that the party making, distributing, and displaying copies in those circumstances was not the website that the user was visiting, but rather the site or server on which the images were stored and from which they were drawn upon request. So, according to the Ninth Circuit, the way to determine which site is responsible for any unauthorized copying, distribution, or display is to apply the "server test" and identify which sites' server the images come from.

Recently, two federal district courts in New York have questioned the server test, and concluded that, even though certain news organizations framed or embedded content from other sites' servers rather than presenting that content from their own servers, those news organizations displayed that content for purposes of the Copyright Act. And where that display was unauthorized and not fair use, the news organizations were engaged in copyright infringement. These decisions have created a substantial degree of uncertainty for website operators who engage in framing or embedding.

The Copyright Act and Perfect 10

The Copyright Act gives a copyright holder certain exclusive rights over the owner's work, including the right to "display the copyrighted work publicly." To "display" is "to show a copy of" the work.

In Perfect 10, the plaintiff alleged that Google's Image Search violated his copyrights by allowing users to view images stored on third party-servers that appeared in Google's search results via Google's framing of those images. Applying the server test, the district court held that "Google's use of frames and in-line links d[id] not constitute a ‘display' of the full-size images stored on and served by infringing third-party websites." Rather, the district court stressed: "Although Google frames and in-line links to third-party infringing websites, it is those websites, not Google, that transfer the full-size images to users' computers." The Ninth Circuit affirmed, holding that Google did not "display a copy of full-size infringing photographic images for purposes of the Copyright Act … [b]ecause Google's computers do not store the photographic images."

Following Perfect 10, other courts generally agreed that if a website does not create a copy on its own server, it could frame or embed that content without infringing. See, e.g., Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 2014 U.S. Dist. LEXIS 92809, at *17-18 (N.D. Ill. July 8, 2014) (granting motion for summary judgment and dismissing copyright claims against Fox Sports for displaying a photo on its website without the photographer's authorization, because there was no evidence that the photo "was ever contained" on Fox's site's servers); MyPlayCity, Inc. v. Conduit Ltd., 2012 U.S. Dist. LEXIS 47313, at *40 (S.D.N.Y. Mar. 30, 2012) (the defendant did not violate the plaintiff's copyright in computer games "because it was [plaintiff's] servers that 'actually disseminated' the copies" of the games).

Goldman v. Breitbart News Network

In recent years, two rulings in the Southern District of New York have called the server test into question. In Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585 (S.D.N.Y. 2018), Goldman took a photograph of NFL quarterback Tom Brady. Although he owned the copyright, third parties posted the image on Twitter. Then, numerous media outlets (including Breitbart) embedded the tweets in news articles. Goldman sued. The media companies argued that they had not infringed Goldman's rights in the photo because they had merely embedded the tweets containing the image without actually hosting the image on their servers.

Judge Katherine B. Forrest declined to apply to server test. The court reasoned that the fact that the images were embedded on the defendants' sites, as opposed to copied onto the news organizations' servers, was an "invisible, technical process[ ] imperceptible to the viewer." Thus, "when defendants caused the embedded Tweets [and the image they contained] to appear on their websites, their actions violated plaintiff's exclusive display right [in the image]; the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result." The court also distinguished Perfect 10 because that case involved a search engine and Google Image Search users "made an active choice to click on an image before it was displayed."

Although the court acknowledged that other questions remained concerning defendants' liability, the parties settled, precluding appellate review of the decision. Judge Forrest retired from the bench that same year.

Nicklen v. Sinclair Broadcasting Group

The same issue arose recently in Nicklen v. Sinclair Broadcast Group, Inc., 2021 U.S. Dist. LEXIS 142768 (S.D.N.Y. July 30, 2021), where plaintiff posted a video of a starving polar bear on his Facebook and Instagram pages. The defendant news organizations embedded the plaintiff's video in online articles. The plaintiff sued the news organizations for copyright infringement, and they moved to dismiss, arguing that they were not liable because they had not hosted his content on their servers.

Judge Jed S. Rakoff (who has been influential in copyright jurisprudence over the last 20-plus years) denied the defendants' motion, holding that embedding videos constitutes display for purposes of the Copyright Act: "[A] defendant violates an author's exclusive right to display an audiovisual work publicly when the defendant without authorization causes a copy of the work, or individual images of the work, to be seen—whether directly or by means of any device or process known in 1976 [when the Act came into law] or developed thereafter." Specifically rejecting Perfect 10, the court reasoned that the Copyright Act "defines to display as 'to show a copy of' a work, 17 U.S.C. § 101, not 'to make and then show a copy of the copyrighted work.'"

Despite its reasoning, Nicklen did not reject the server test entirely. As did Goldman, Nicklen held that the server test could still apply where "(1) the defendant operated a search engine and (2) the copyrighted images were displayed only if a user clicked on a link." The court also left open the possibility that the defendants had a "fair use" defense, but did not resolve that issue on the motion to dismiss.

Guidance

So, can website operators continue to frame and embed third-party content?

If the site is a search engine, even Goldman and Nicklen indicate that the server test should apply. For other websites, the law is unsettled, particularly in New York. Website operators bear some risk that courts might follow Goldman and Nicklen. Operators can generally avoid that risk by using only licensed content, linking rather than embedding, or engaging in other methods that are considered fair use. Operators should also examine the terms of service of the host of the copyrighted content to see if the host expressly grants a license or sublicense to embed, including through an API.