Tag: public-display

The exclusive right of a copyright owner to publicly display the work

The “Demise” of the Server Test

As with Mark Twain, reports of the death of the server test are greatly exaggerated. In this article, Minnesota attorney Thomas James (“The Cokato Copyright Attorney”) explains what happened – and what did not happen – in Emmerich Newspapers, Inc. v. Particle Media, Inc.

The Copyright Act gives a copyright owner the exclusive right to publicly display the work.

In Perfect 10 v. Amazon, the Ninth Circuit Court of Appeals held that a website is liable for unauthorized public display of a coprighted work only if the image is stored on the website’s server. The court reasoned that “display” means showing a copy of the work. To show a copy, it is necessary to possess one. But it is not necessary for a website owner to possess a copy of a work to write code that instructs a user’s browser to display the content of a file that is hosted somewhere else. Therefore, encoding a website to instruct a user’s browser to display as an embedded image a copy of a work that is hosted on a different server does not infringe the copyright owner’s public display right.

That case involved the display of images in search engine results. Astute readers with remarkably good memories will recall that I have previously written about a case that extended the “server test” announced in Perfect 10 to social media. Specifically, a district court held that directing a user’s browser to an image that is hosted on Instagram’s server does not constitute “display” of the image. Since no direct infringement by means of “public display” occurred, Instagram could not be held secondarily liable for contributing to the unauthorized public display of the image. The Ninth Circuit has since affirmed the decision. See Hunley v. Instagram. I described this as one of the “Top Copyright Cases of 2022.”

As I indicated in that article, a Ninth Circuit affirmance could result in a circuit split. It has.

In McGucken v. Newsweek, LLC, a court in the Second Circuit held that Newsweek publicly displayed another person’s copryighted photograph when it embedded the photograph from the copyright owner’s Instagram page. The photograph was hosted on Instagram’s server, not Newsweek’s. And in Nicklen v. Sinclair Broadcast Group, a New York court explicitly rejected the server test, declaring that it is “contrary to the text and legislative history of the Copyright Act.” Of course, these were district court decisions, not decisions of Circuit Courts of Appeals, so they would not suffice to create a “circuit split.” A recent case out of the Fifth Circuit, however, might. That case is Emmerich Newspapers v. Particle Media.

Emmerich Newspapers v. Particle Media

Particle Media runs NewsBreak, a news aggregator that embeds stories from various news media into a single feed. When a user clicked on an Emmerich story, it opened in a frame that loaded the Emmerich page from Emmerich’s server on the user’s browser. Emmerich filed a copyright infringement lawsuit claiming that Particle Media violated its exclusive aright to publicly display the work.

The district court applied the server test, holding that the framed view of the story did not infringe Emmerich’s exlcusive right to publicly display the work. The Fifth Circuit Court of Appeals rejected the server test.

The Transmit Requirement

For the Fifth Circuit, the inquiry should not be into who possesses a copy of the work, but who transmits it. In many cases, including this one, the outcome will be the same. Emmerich’s story was neither stored on Particle Media’s server nor transmitted by it. Therefore, under either test, it was not liable.

URLs as Copyright Management Information

A second issue raised in Emmerich Newspapers is whether a website URL is a kind of “copyright management information” (CMI) under the Digital Millennium Copyright Act (DMCA). If it is, then removing it would violate the DMCA.

So is it or isn’t it? Well, possibly yes and possibly no. It depends on whether a person looking at the URL would understand it as identifying the work or its owner, on one hand, or as idenfiying only a website address, on the other.

The Fifth Circuit Court of Appeals did not resolve the issue in this case. Instead, it remanded it to the district court to decide. Nevertheless, the decision establishes a precedent that a URL, in principle, can be copyright manamgement information for purposes of the DMCA.

Is There Really a Circuit Split?

The Fifth Circuit clearly rejected the Ninth Circuit’s server test. On the other hand, though, both circuits agree that embedding generally does not infringe the copyright owner’s public display right. They disagree about the rationale, but the result is the same. That might not be enough for the Supreme Court to perceive a need to resolve a circuit split.

Conclusion

When assessing the public display right in the embedding context, some courts will apply the server test. Others will apply the transmit requirement. In most cases, merely encoding a website to instruct a third-party server to display content in a user’s browser will not result in liability for infringement of the copright owner’s public display right under either test.

Websites that deploy embedding, however, have reason to be careful about stripping the URL from embedded content. If the URL is perceived as identifying a work or its author, stripping it from the embedded display could violate the DMCA.

The CCB’s First 2 Determinations

The Copyright Claims Board (CCB) has issued its first two determinations. Here is what they were about and what the CCB did with them.

As previously reported in a Copyright Claims Board Update, the United States Copyright Claims Board (CCB), an administrative tribunal that has been established for the purposes of resolving small copyright claims, began accepting case filings on June 16, 2022. Eight months later, it has issued its first two determinations. Here is a summary of them.

front view of the Library of Congress building

Flores v. Mitrakos, 22-CCB-0035

This was a DMCA case.

Michael Flores filed the claim against Michael Mitrakos. He alleged that Mitrakos filed a knowingly false takedown notice. The parties negotiated a settlement. On February 3, 2023 they submitted a joint request for a final determination dismissing the proceeding. It included a request to include findings that the respondent submitted false information in a takedown notice, resulting in the wrongful removal of the claimant’s material. The parties also agreed the respondent would inform Google that he was rescinding the takedown notice. The CCB incorporated the parties’ agreement into its final determination.

No damages were sought and the CCB did not award any.

Issued on February 15, 2023, this was the CCB’s first Final Determination. Flores v. Mitrakos. 

Oppenheimer v. Prutton, 22-CCB-0045

While Flores v. Mitrakos was the first Final Determination the CCB issued, Oppenheimer v. Prutton was its first Final Determination on the merits. It is also the first copyright infringement case the Board has resolved.

The case involved alleged infringement of a copyright in a photograph. The facts, as reported in the CCB’s Final Determination, are as follows:

David G. Oppenheimer owns the copyright in a photograph he took of a federal building in Oakland, California. He registered the copyright in the photograph on July 29, 2017. On June 4, 2018, he discovered it was being displayed on the business website of attorney Douglas A. Prutton. Prutton admitted reproducing and displaying it without permission. He stated that his adult daughter found it on the Internet and put it on his website, in an effort to help improve his website, and that he removed it in 2019 upon receiving a letter from Oppenheimer objecting to the use. Oppenheimer sought an award of statutory damages for the unauthorized use of the photograph.

Prutton asserted two defenses: fair use and unclean hands.

The asserted defenses

Fair use

A person asserting fair use as a defense must address and discuss four factors: (1) purpose and character of the use; (2) nature of the work; (3) amount and substantiality of the portion copied; and (4) effect on the market for the work. Prutton only addressed the fourth factor. The failure to address the first three factors, the CCB ruled, was fatal to this defense.

Unclean hands

Prutton alleged that Oppenheimer was a copyright troll, earning revenue mostly from copyright litigation rather than from sales or licensing of his works. The CCB ruled that this is not a sufficient basis for a finding of unclean hands.

Damages

The CCB refused to reduce damages to $200 on the basis of “innocent infringement.” The CCB ruled that Prutton should have known the photograph was protected by copyright, emphasizing the fact that he was an attorney.

Oppenheimer requested statutory damages of $30,000. The CCB is limited by statute to awarding no more than $15,000 per work. The Board therefore construed it instead as a request for the maximum amount the Board can award. The CCB declined to award maximum damages.

While the amount of statutory damages does not have to be tied to the amount of actual damage, an award of statutory damages “must bear a plausible relationship to . . . actual damages.” Stockfood Am., Inc. v. Sequoia Wholesale Florist, Inc., 2021 WL 4597080, at *6 (N.D. Cal. June 22, 2021). Oppenheimer did not submit evidence of actual loss.

In the absence of any evidence of actual damage or harm, statutory damages will normally be set at $750 per work infringed. One member of the Board voted to do just that in this case. The other two members, however, believed a small increase from the minimum was justified for various reasons, such as that it was a commercial use and it had lasted for more than a year. The Board ultimately awarded Oppenheimer $1,000 statutory damages.

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Need help with a CCB claim or defense? Contact Thomas B. James, Minnesota attorney.

The Top Copyright Cases of 2022

Cokato Minnesota attorney Tom James (“The Cokato Copyright Attorney”) presents his annual list of the top copyright cases of the year.

My selections for the top copyright cases of the year. (For my bio. visit my About Thomas B. James page.)

“Dark Horse”

Marcus Gray had sued Katy Perry for copyright infringement, claiming that her “Dark Horse” song unlawfully copied portions of his song, “Joyful Noise.” The district court held that the disputed series of eight notes appearing in Gray’s song were not “particularly unique or rare,” and therefore were not protected against infringement. The Ninth Circuit Court of Appeals agreed, ruling that the series of eight notes was not sufficiently original and creative to receive copyright protection. Gray v. Hudson.

“Shape of You”

Across the pond, another music copyright infringement lawsuit was tossed. This one involved Ed Sheeran’s “Shape of You” and Sam Chokri’s “Oh Why.” In this case, the judge refused to infer from the similarities in the two songs that copyright infringement had occurred. The judge ruled that the portion of the song as to which copying had been claimed was “so short, simple, commonplace and obvious in the context of the rest of the song that it is not credible that Mr. Sheeran sought out inspiration from other songs to come up with it.” Sheeran v. Chokri.

Instagram images

Another case out of California, this one involves a lawsuit filed by photographers against Instagram, alleging secondary copyright infringement. The photographers claim that Instagram’s embedding tool facilitates copyright infringement by users of the website. The district court judge dismissed the lawsuit, saying he was bound by the so-called “server test” the Ninth Circuit Court of Appeals announced in Perfect 10 v. Amazon. The server test says, in effect, that a website does not unlawfully “display” a copyrighted image if the image is stored on the original site’s server and is merely embedded in a search result that appears on a user’s screen. The photographers have an appeal pending before the Ninth Circuit Court of Appeals, asking the Court to reconsider its decision in Perfect 10. Courts in other jurisdictions have rejected Perfect 10 v. Amazon. The Court now has the option to either overrule Perfect 10 and allow the photographers’ lawsuit to proceed, or to re-affirm it, thereby creating a circuit split that could eventually lead to U.S. Supreme Court review. Hunley v. Instagram.

Update: The Ninth Circuit Court of Appeals affirmed the decision. For updated information about the server test, read “The Demise” of the Server Test.

Maud Stevens Wagner, Fe,male tattoo artist, 1907 public domain

Tattoos

Is reproducing a copyrighted image in a tattoo fair use? That is a question at issue in a case pending in New York. Photographer Jeffrey Sedlik took a photograph of musician Miles Davis. Later, a tattoo artist allegedly traced a printout of it to create a stencil to transfer to human skin as a tattoo. Sedlik filed a copyright infringement lawsuit in the United States District Court for the Southern District of New York. Both parties moved for summary judgment. The judge analyzed the claims using the four “fair use” factors. Although the ultimate ruling was that fact issues remained to be decided by a jury, the court issued some important rulings in the course of making that ruling. In particular, the court ruled that affixing an image to skin is not necessarily a protected “transformative use” of an image. According to the court, it is for a jury to decide whether the image at issue in a particular case has been changed significantly enough to be considered “transformative.” It will be interesting to see how this case ultimately plays out, especially if it is still pending when the United States Supreme Court announces its decision in the Warhol case (See below). Sedlik v. Von Drachenberg.

Digital libraries

The Internet Archive lawsuit, about which I wrote in a previous blog post, is still at the summary judgment stage. Its potential future implications are far-reaching. It is a copyright infringement lawsuit that book publishers filed in the federal district court for the Southern District of New York. The gravamen of the complaint is that Internet Archive allegedly has scanned over a million books and has made them freely available to the public via an Internet website without securing a license or permission from the copyright rights-holders. The case will test the “controlled digital lending” theory of fair use that was propounded in a white paper published by David R. Hansen and Kyle K. Courtney. They argued that distributing digitized copies of books by libraries should be regarded as the functional equivalent of lending physical copies of books to library patrons. Parties and amici have filed briefs in support of motions for summary judgment. An order on the motions is expected soon. The case is Hachette Book Group et al. v. Internet Archive.

Copyright registration

In Fourth Estate Public Benefits Corp. v. Wall-Street.com LLC, 139 S. Ct. 881, 889 (2019), the United States Supreme Court interpreted 17 U.S.C. § 411(a) to mean that a copyright owner cannot file an infringement claim in federal court without first securing either a registration certificate or an official notice of denial of registration from the Copyright Office. In an Illinois Law Review article, I argued that this imposes an unduly onerous burden on copyright owners and that Congress should amend the Copyright Act to abolish the requirement. Unfortunately, Congress has not done that. As I said in my case note on Unicolors v. H&M Hennes & Mauritz,  Congressional inaction to correct a harsh law with potentially unjust consequences often leads to exercises of the judicial power of statutory interpretation to ameliorate those consequences. Unicolors v. H&M Hennes & Mauritz.

Unicolors, owner of the copyrights in various fabric designs, sued H&M Hennes & Mauritz (H&M), alleging copyright infringement. The jury rendered a verdict in favor of Unicolor, but H&M moved for judgment as a matter of law. H&M argued that Unicolors had failed to satisfy the requirement of obtaining a registration certificate prior to commencing suit. Although Unicolors had obtained a registration, H&M argued that the registration was not a valid one. Specifically, H&M argued that Unicolors had improperly applied to register multiple works with a single application. According to 37 CFR § 202.3(b)(4), a single application cannot be used to register multiple works unless all of the works in the application were included in the same unit of publication. The 31 fabric designs, H&M contended, had not all been first published at the same time in a single unit; some had been made available separately, exclusively to certain customers. Therefore, they could not properly be registered together as a unit of publication.

The district court denied the motion, holding that a registration may be valid even if it contains inaccurate information, provided the registrant did not know the information was inaccurate. The Ninth Circuit Court of Appeals reversed. The Court held that characterizing the group of works as a “unit of publication” in the registration application was a mistake of law, not a mistake of fact. The Court applied the traditional rule of thumb that ignorance of the law is not an excuse, in essence ruling that although a mistake of fact in a registration application might not invalidate the registration for purposes of the pre-litigation registration requirement, a mistake of law in an application will.

The United States Supreme Court granted certiorari. It reversed the Ninth Circuit Court’s reversal, thereby allowing the infringement verdict to stand notwithstanding the improper registration of the works together as a unit of publication rather than individually.

It is hazardous to read too much into the ruling in this case. Copyright claimants certainly should not interpret it to mean that they no longer need to bother with registering a copyright before trying to enforce it in court, or that they do not need to concern themselves with doing it properly. The pre-litigation registration requirement still stands (in the United States), and the Court has not held that it condones willful blindness of legal requirements. Copyright claimants ignore them at their peril.

Andy Warhol the artist whose work is at the center of Warhol Foundation v Goldsmith

Andy Warhol, Prince Transformer

I wrote about the Warhol case in a previous blog post. Basically, it is a copyright infringement case alleging that Lynn Goldsmith took a photograph of Prince in her studio and that Andy Warhol later based a series of silkscreen prints and pencil illustrations on it without a license or permission. The Andy Warhol Foundation sought a declaratory judgment that Warhol’s use of the photograph was “fair use.” Goldsmith counterclaimed for copyright infringement. The district court ruled in favor of Warhol and dismissed the photographer’s infringement claim. The Court of Appeals reversed, holding that the district court misapplied the four “fair use” factors and that the derivative works Warhol created do not qualify as fair use. The U.S. Supreme Court granted certiorari and heard oral arguments in October, 2022. A decision is expected next year.

Because this case gives the United States Supreme Court an opportunity to bring some clarity to the extremely murky “transformative use” area of copyright law, it is not only one of this year’s most important copyright cases, but it very likely will wind up being one of the most important copyright cases of all time. Andy Warhol Foundation for the Visual Arts v. Goldsmith.

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