Split of Authority Continues as to Unauthorized Displays of Copyrighted Material by Embedding Technology

The Ninth Circuit recently issued a decision involving the use of "embedding" technology to display copyrighted material. The Ninth Circuit's decision perpetuates the disagreement among federal courts as to whether copyright infringement liability arises from using such technology to display copyrighted works without authorization from the copyright owners.

"Embedding," explained the Ninth Circuit in Hunley vs. Instagram, LLC (9th Cir. Jul. 17, 2023), "is a method that allows a third-party website (the embedding website) to incorporate content directly from the website where it originally appeared (the host website)." "Importantly," stressed the court, "the embedding website does not store a copy of the underlying image. Rather, embedding allows multiple websites to incorporate content stored on a single server simultaneously."

In Hunley, the Ninth Circuit upheld the dismissal of a class action copyright infringement lawsuit brought by photographers against Instagram. The photographers had alleged that Instagram was secondarily liable for acts of direct copyright infringement committed by Buzzfeed and Time, who each had used Instagram's "embedding" tool to fully display Instagram posts containing the plaintiffs' copyrighted photographs, without obtaining the plaintiffs' permission.

After this ruling in Hunley, I expect that the photographers will file a petition to request that the Ninth Circuit rehear this case en banc, for purposes of reconsidering its decision in Perfect 10 vs. Amazon.com, Inc. (2007). 

In Hunley, the Ninth Circuit extended application of the Perfect 10 "server test" to Instagram's embedding tool. Since that tool did not store a local copy of any of the copyrighted photographs in the respective memories of either Buzzfeed's or Time’s computers, reasoned the Ninth Circuit, Perfect 10 mandated a conclusion that neither Buzzfeed nor Time had directly infringed the photographers' exclusive display rights, and thus that Instagram could not be secondarily liable.

Currently, a noticeable split of authority exists on this issue. 

Although the Ninth Circuit (at least for now) continues to follow the "server test," New York federal district courts expressly rejected that test. For example, the Southern District of New York reasoned: "The Ninth Circuit's approach, under which no display is possible unless the alleged infringer has also stored a copy of the work on the infringer's computer, would seem to make the display right merely a subset of the reproduction right." McGucken v. Newsweek LLC, No. 19 Civ. 9617, 2022 U.S. Dist. LEXIS 50231, at *13-*14 (S.D.N.Y. Mar. 21, 2022).

In the wake of Hunley, photographers contending that use of embedding technology infringed their copyrighted works should avoid bringing copyright infringement lawsuits in federal district courts located within the Ninth Circuit, i.e., in federal district courts sitting in California, Nevada, Alaska, Hawaii, Washington, Oregon, Arizona, Idaho, or Montana. Such avoidance should continue for as long as the Ninth Circuit adheres to its Perfect 10 decision.