Last year, I wrote about a ruling in the Southern District of New York, Sinclair v. Ziff Davis, 18-CV-790 (KMW), that refused to dismiss claims against a media company for embedding an Instagram post into one of its articles online. This ruling and others in federal trial courts in the Second Circuit conflict with the Ninth Circuit’s ruling in Perfect 10, Inc. v. Amazon.com, Inc., which held that embedding images could not violate a copyright holder’s exclusive display right. A recent California District Court ruling affirmed that Perfect 10’s ruling applied to the embedding of images from social media onto third party websites. This post will explain the conflict that now exists in these Circuits.

What is Embedding?

Embedding or in-line linking occurs when a third-party website uses HTML instructions to direct a user’s browser to render a visual element from a publisher’s website – the website that actually stores that content – onto the third party site. For those who are familiar with embedded images, you know that when you click on that image – just as when you click on any other text-based or URL link – you are taken to the publisher’s website where the image is stored. Some social media platforms provide an embedding feature on public user posts so that a post can be embedded on another website using that particular platform’s tools or API, and the embedded image retains the attributes of the post itself (e.g., the user name and image, user caption, number of likes, and branding of the social media platform).

District Court in the Ninth Circuit Affirms Perfect 10 Applies to Social Media Embedding

Earlier this year, professional photographers in Hunley et al v. Instagram, filed a complaint in the Northern District of California seeking class-wide relief against Instagram for inducing copyright infringement and for contributory copyright infringement and vicarious copyright infringement. Plaintiffs alleged that: 1) the defendant’s embedding tool enables third party websites to violate Plaintiffs’ exclusive display right under the Copyright Act; and 2) defendant facilitated, solicited and induced these violations by misleading third parties in believing that they did not need to obtain a license or permission to embed until public statements made in 2020 clarifying that that third parties were responsible for obtaining all necessary rights before sharing another user’s content using the embed tool.

On September 17, 2021, Judge Breyer granted Defendants’ motion to dismiss the Hunley case in a 5-page order that relied squarely on Perfect 10. The Court ruled that the embedding images did not violate the exclusive display rights of the copyright holder because, under the server test, an image is a work that is “fixed” in a tangible medium of expression – i.e., stored in a computer’s server, hard disk or other storage device and so without storage, a website does not “communicate a copy” of the image or video. Judge Breyer saw no basis to limit the rationale of Perfect 10 to its facts (i.e., embedded images in Google’s search engine’s image results), finding that the ruling relied on the plain language of the statute. The Court also determined that the Supreme Court’s Aereo decision did not contradict the Perfecto 10 ruling, as Aereo interpreted different statutory language regarding the exclusive right to perform a copyrighted work. As there was no direct copyright infringement, the Court concluded, there could be no secondary liability by Instagram.

The Second Circuit’s District Courts Have Not Applied Perfect 10 to Social Media Embedding

In contrast, Sinclair and another case last year, McGucken v. Newsweek LLC, in the Southern District of New York, have allowed cases to proceed to consider copyright infringement against Defendants who have embedded social media posts, without addressing the Perfect 10 argument. Two other cases in the Southern District, first Goldman v. Breitbart News Network, LLC, in 2018, and more recently, in 2021, Nicklen v. Sinclair Broadcasting Group, specifically consider and reject the Perfect 10 rationale in this context. While Goldman involved embedded Tweets of plaintiff’s copyrighted image, which plaintiff never posted to Twitter, Mr. Nicklen’s claims of infringement involved a video he posted on social media of a starving polar bear, which went viral, and was then embedded by dozens of media entities. In denying the Sinclair Defendants’ motion to dismiss seeking application of Perfect 10, Judge Rakoff ruled that the server test is “contrary to the text and legislative history of the Copyright Act,” which “defines ‘to display’ as ‘to show a copy of’ a work, not ‘to make and then show a copy of the copyrighted work.’” He determined that the Perfect 10 ruling should be cabined to two critical facts: 1) defendant operated a search engine and 2) the user had to click a link (actually thumbnail images) to display the copyrighted work.

Takeaway

Courts in these two Circuits and beyond will continue to produce widely different results on this question until a definitive determination is made (Supreme Court cert grant?) as to which of these irreconcilable positions should govern social media embedding. Until then, the safest course for website owners who wish to embed social media content: Obtain permission from the content creator.