Frankfurt Kurnit Klein & Selz

February 21st, 2018

Publishers Beware: New Ruling Says Embedding May Infringe Copyright

For over a decade, embedding, or "in-line linking," has widely been considered non-infringing.  But late last week, in a decision with potentially far-reaching implications for online publishers and pretty much everyone else who posts content to and from social media, the court in Goldman v. Breitbart News Network, LLC held that using embed codes to incorporate third-party content into an article does not shield the embedder from liability for copyright infringement. As a result, online publishers now need to be extra cautious when embedding third-party content, especially when the content originated on a different social media platform.

Last week's ruling diverges sharply from long-established law in the Ninth Circuit holding that embedding content though "in-line linking" doesn't violate copyright as long as the content is served from someone else's computer. As Eriq Gardner of The Hollywood Reporter observed, the decision "is sure to be controversial and could prove quite consequential, too, potentially disrupting the way that news outlets use Twitter and causing many in technology to re-examine ubiquitous practices from embedding to linking."

Here are the takeaways from this potentially game-changing decision.

The facts of the case are fairly typical, which is part of what makes the case so interesting and important.  In 2016, Justin Goldman photographed Tom Brady. After Goldman uploaded the photo to Snapchat, it went viral, and eventually landed on Twitter, where it was tweeted (uploaded) by several users - critically, without Goldman's permission.  Over the next 48 hours, multiple news outlets and bloggers embedded those Tweets in articles about Tom Brady's help in recruiting Kevin Durant for the Boston Celtics.  Goldman sued them for copyright infringement.

The lawsuit raised the question of whether nine news outlets and blogs violated Goldman's exclusive right to publicly display his photograph by embedding Tweets containing the photograph in their articles.

"Embedding an image," explained the court, "is the act of a coder intentionally adding a specific 'embed' code to the HTML instructions that incorporates an image, hosted on a third-party server, onto a webpage."  The publisher defendants argued that they did not violate Goldman's public display right by using Twitter's embed codes because, as a technical matter, it was Twitter - not the publishers - who hosted and served the image displayed to users in the articles.

The defendants urged the court to apply the so-called "Server Test," adopted by the Ninth Circuit in Perfect 10, Inc. v. Amazon.com, Inc.  In Perfect 10, the court, relying in part on the Copyright Act's definition of the term "display" as meaning "to show a copy of it," held that Google's use of "in-line linking" (essentially the same thing as embedding) in Google Image Search did not violate Perfect 10's public display right because the image copies, though accessed through Google, were stored on third-party servers.  In other words, under the Server Test, whether a publisher implicates the public display right hinges entirely on where the copy of the image is hosted:  on the publisher's own server (implicated) or on a third-party server (not implicated).

In granting partial summary judgment in favor of the photographer, the Goldman court rejected the Server Test, reasoning that "[t]he plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have 'displayed' a work within the meaning of the Copyright Act."

The key take-aways
If other courts follow Goldman, then the bright line Server Test established by the Ninth Circuit will be in jeopardy.  Under the Goldman ruling, using embed codes to incorporate third-party content into a web page will not shield the embedder from liability for copyright infringement.  If you otherwise would need a license to use copyright-protected material on your web page, you cannot avoid getting that license by embedding/in-line linking to the image hosted on a third-party server.  According to the Goldman ruling, it does not matter where the image is hosted.

Another key takeaway from the decision relates to terms of service and cross-platform sharing on social media.  The court did not address what would have happened if Goldman himself had uploaded the photo to Twitter, and the news outlets then embedded Goldman's Tweet with the photo, either alone or alongside other Tweets commenting on the photo.  In that situation, the use of the photo might very well have been authorized by Twitter's terms of service.

But Goldman did not upload his photo to Twitter.  Rather, Goldman shared the photo with his "friends" on Snap, one of whom uploaded it to Reddit, and from there it was tweeted by multiple users.  Since someone other than Goldman, the copyright owner, uploaded the photo to Twitter, neither the photo nor the embedding of the photo was covered by Twitter's terms of service.

In sum, federal courts in New York and California now are on opposite sides of this important issue.  If the Second Circuit affirms, there would be a full-fledged circuit split, clearing the path for the Supreme Court to step in and referee.  In the meantime, online publishers need to pay close attention to this shift in widely accepted Internet/copyright norms and proceed accordingly.

If you have any questions about the Goldman decision, or about other legal issues involving copyright and the Internet, contact Jeremy S. Goldman (310) 579-9611 or jgoldman@fkks.com, or any other member of the Frankfurt Kurnit Litigation Group.