By:  Weintraub Tobin Summer Associate Josh Concepcion

The Ninth Circuit recently revisited the issue of “embedding” content by a website and its implication for copyright infringement claims. On July 17, 2023, the Ninth Circuit issued its opinion in Hunley v. Instagram, LLC, and affirmed the trial court’s ruling that Instagram, a social media platform, could not face liability for secondary infringement under the “Server Test” because plaintiffs could not prove infringement of their copyrighted photographs since the third-party news platforms had “embedded,” but did not store, the copyrighted photos on their own websites. The Court ultimately reasoned that because the plaintiff posted their photos on Instagram and essentially stored a copy of those images on Instagram’s servers, Instagram did not violate or infringe on the plaintiff’s rights since Instagram had a sublicense to display photos posted onto their platform and the third-party news sites had “embedded” the content in their articles.

The Ninth Circuit reaffirmed the test they articulated in Perfect 10, Inc. v., Inc., now known as the so-called “Server Test.” Under this test, a digital image is considered to be “fixed” in a tangible medium of expression for purposes of the Copyright Act (the “Act”) when it is stored on a computer’s server. This ultimately means that when a copy of an image is not stored on a computer’s servers but merely “embedded” onto a website, search engine, etc., the website displaying that copyrighted image cannot be held liable for infringement.

The concept of “embedding” content is not a new phenomenon. Ever since the massive explosion of content creation that gave rise to social media, content creators worldwide have utilized embedding to showcase and link users to content that otherwise would not have been as readily accessible.

In most cases, embedded content usually directs the user to the original host’s website, where the content was originally published. The Ninth Circuit noted that, importantly, the embedding website does not store copies of the underlying image, but rather, the embedding website directs the user’s browser to retrieve the content from another website’s server to juxtapose it on the embedding website.

The plaintiffs in this case, Alexis Hunley and Matthew Scott Brauer (collectively “Hunley”) are both photographers who own the copyrights to their photos. They post their photos on their personal Instagram accounts that are open to the public.

Hunley initially brought a class action suit against Instagram alleging that Instagram’s embedding tool violated her exclusive display rights under the Copyright Act by allowing outside companies, such as BuzzFeed and Time in this case, to openly use and display their copyrighted photos on their own third-party websites via embedding. Her complaint included causes of action, including: (1) inducement of copyright infringement; (2) contributory copyright infringement; and (3) vicarious copyright infringement.

After the filed complaint, Instagram filed a motion to dismiss, which the district court granted. The district court held that the Ninth Circuit’s holding in Perfect 10 denied relief to Hunley, noting that to violate the public display right, infringers must display “copies” of the copyrighted work by storing the work on its server(s). As articulated in Perfect 10, embedding websites that do not “store,” the content do not entirely “communicate a copy” of the content. Further, the district court explained that because Buzzfeed and Time did not store the images on their servers, they did not fix the copyrighted work in any tangible medium of expression as required by the Copyright Act, thus precluding any violation of the original owner’s exclusive display rights.

In the original complaint, Hunley conceded that the secondary liability that plaintiffs were trying to impute onto Instagram relied on the assumption that Buzzfeed and Time were directly infringing on Hunley’s content. Because of the district court’s holding, Instagram could not be held liable for infringement.

On appeal, the Ninth Circuit looked to the Copyright Act as well as their holding in Perfect 10 and its application to the current case. In detailing the framework of the Copyright Act, the court focused on the right of public display. The Act grants authors and creators the exclusive right to display their work publicly. As the Act details, infringing this right involves showing a copy of the content, either directly or by means of a film, slide, etc.

However, when the Act was amended in 1976, the amendments added that infringement could also take on the form of transmission. By statute, this reads to mean displaying a work publicly now includes methods to transmit or otherwise communicate a performance or display of the work to a place or to the public by means of any device or process, whether the members of the public are capable of receiving the performance or display receive it in the same place or in separate places, and at the same time or at different times. This definition amended in the Act is now known as the “Transmit Clause.”

Ultimately the Ninth Circuit concluded that to infringe on an exclusive right of public display, a transmission of a display is required. It reasoned that a copy must be displayed, which means either an original or duplicate copy of the content must be “fixed” on the infringer’s server.

In Perfect 10, the Ninth Circuit looked to the fixation requirement and held that an image is fixed in a tangible medium of expression when it is stored in a computer’s server. While Hunley argued that the Server Test as applied to social media platforms, as in this case, is inconsistent with the Copyright Act because it either conflates the rights held by the copyright holder or because the test cannot be reconciled with provisions of the Act that prohibits transmissions, regardless if the party possesses or controls a copy of the work.

The court did not consider these arguments because of its prior holding in Perfect 10 and concluded that they could not overrule Perfect 10 outside of an en banc proceeding unless there was a statutory change or a decision from the Supreme Court. Additionally, the court explained Perfect 10’s standing statement of the rule for infringing the public display right via embedding.

Hunley further argued that Perfect 10 was essentially overturned due to the Supreme Court’s decision in ABC, Inc. v. Aereo, Inc., a case where plaintiffs alleged that the defendant violated their rights under the Act by selling services that allowed users to watch television programs over the internet at the time the programs were available on live television. The Supreme Court ultimately held the defendant liable for “performing” plaintiffs’ works publicly within the ambit of the Transmit Clause.

Hunley articulated that the performance right demonstrated in Aereo was equal in weight to the display right in the current case; therefore, they can be interchanged, giving way to liability for Instagram due to Aereo. Secondly, Hunley argued the practical and functional perspective of the public view should be what constitutes a particular vehicle of delivery, is content-infringing or not. However, the Ninth Circuit found these to be weak arguments. The court emphasized the differences between these two rights and further affirmed Perfect 10’s analysis on public display in the electronic context, reasoning that even in the wake of Aereo, Perfect 10 forecloses any of Hunley’s claims. Notably, the defendant in Aereo stored some of the content it was transmitting to users on its own servers, unlike the case here.

The court addressed Hunley’s argument concerning the user’s perception of copyrighted work. Hunley argued that to a user or viewer of content, a perception of their image appears the same whether or not it was embedded or taken directly from an infringer’s server. They put forth the argument, first conveyed in Aereo, that users are benign to the technical elements that happen “behind the curtain,” and since it is irrelevant to the public, “so too should it be irrelevant in the eyes of the law.” The court of appeal addressed this by noting that the Court’s decision in Aereo was not entirely predicated on user perception, nor did they rule user perception to be a separate and independent rule of judgment.

The Ninth Circuit additionally noted public policy concerns that were favorable to Hunley. Hunley argued the Server Test allowed infringers to evade the Act by embedding, leaving the door open to a plethora of rights violations. While arguments for Hunley emphasized the Server Test’s erosion of the licensing market for photographers, arguments for Instagram stressed the importance of embedding for innovation and accessibility.

In all, when the Ninth Circuit finally applied the Server Test to the case in hand, they highlighted the fact that since Hunley posted her photographs onto her public Instagram profile, Hunley in turn, stored copies of those images on Instagram’s servers. Because Instagram owned a nonexclusive sublicense to display photos from users with public profiles, they did not directly infringe on Hunley’s exclusive display right by displaying her images through an embed tool.

Again, the allegations of secondary liability against Instagram are all predicated on direct infringement by third-parties, here BuzzFeed and Time. Perfect 10 demonstrates that embedding via HTML code does not equate to displaying copies of a work. Because BuzzFeed and Time did not store the copyrighted photographs on their own servers but merely embedded the photographs from Instagram’s servers, they were not liable for direct infringement. With no direct liability, secondary liability is precluded against Instagram.

This decision demonstrates the significant implications this case and subsequent cases may have as they establish legal precedents that shape how creators protect their work and how users interact within the digital space. At the same time, it showcases the modularity of the internet forum and proves the rapid evolution of social media that can lead to new challenges for the current laws and the court system, requiring our legal institutions to adapt swiftly to address emerging legal issues in the information age.