Ninth Circuit Sides with Instagram in Case Involving Copyright of Photographers’ WorksJuly 20, 2023

In a 2-1 decision, the Ninth Circuit Court of Appeals affirmed the “server rule” which holds that websites embedding a copyrighted work do not violate the exclusive right to display that content under copyright law (17 U.S.C. § 106(5)) because they do not store or “fix” the copyrighted work in any “tangible medium of expression.” Embedding is a process that allows a third-party website (the embedding website) to incorporate content directly from the website where it originally appeared (the host website), wherein the Hypertext Markup Language (“HTML”) command used in embedding retrieves the embedded content directly from the host website. Thus, embedding does not display “copies” of the copyrighted work.

The rationale behind the server rule, established first in Perfect 10 v. Amazon.com, is based on the definition of “display” in copyright law, wherein to “display” a work involves showing a copy of it. In order to infringe copyright law by “displaying” a copyrighted work, an alleged infringer must first store a copy of that work. The act of embedding never stores a copy of the underlying image. Rather, embedding allows websites to incorporate content stored on a single (host) sever simultaneously. The host server can control whether embedding is available for third party websites and can further control what content appears at a specific IP address.

The plaintiffs in Hunley v. Instagram, two photographers, posted their content on Instagram thereby granting Instagram a royalty-free sublicense to display their posted content. Although Instagram doesn’t grant third parties a license to users’ works, the platform permits third parties to embed public posts. During the Black Lives Matter protests in 2020, BuzzFeed embedded Hunley’s post with a copyrighted image of a protester. Similarly, Time embedded co-plaintiff Brauer’s copyrighted image of Hillary Clinton. Neither publication sought the consent of Instagram or the photographers. Hunley and Brauer subsequently sued Instagram on grounds that Instagram’s embedding tool violates the Copyright Act since it enables third party websites to display copyrighted photos.

The Plaintiffs argued that the server rule should be limited for four reasons. First, the server test should only apply to search engines such as Google. Second, the Perfect 10 ruling is inconsistent with the Copyright Act. Third, the Perfect 10 ruling is inconsistent with the Supreme Court’s decision in American Broadcasting Companies v. Aereo, where the Supreme Court held that an equipment provider that enabled users to stream broadcast television over the Internet infringed the public performance right. Fourth, there are public policy reasons for overruling Perfect 10.

The Ninth Circuit rejected Hunley’s first two arguments, determining that Perfect 10 applied correct statutory interpretation of the Copyright Act and further noting that other courts had already adopted the server rule in situations outside the search engine context.

The Ninth Circuit Panel also rejected Hunley’s third argument on the grounds that the public display right and the public performance right are distinct. In particular, the infringing public display right requires an underlying copy, whereas for the performance right, the infringer does not need to show or perform a copy of the underlying work. User perception was also important, and the server rule acknowledges the difference between websites that actually display the image to the user and websites that simply embed the image.

The Ninth Circuit panel also noted that the server rule has been widely accepted by other courts and has been beneficial to the growth of social media. The panel concluded that the server rule is a sound interpretation of the Copyright Act and that it should be upheld. Finally, the Ninth Circuit refused to “craft a policy solution and rewrite the law to [its] tastes.”

The impact of Hunley decision extends beyond the affirmation of the server rule. The Ninth Circuit’s decision creates a circuit split with the Second Circuit, which has rejected the server rule. Such a circuit split creates the possibility that the Supreme Court will be asked to resolve the split in the future.

Sarah M.D. Luth is an Intellectual Property Attorney in the MVS Biotechnology & Chemical Practice Group. To learn more, visit our MVS website.