Urbanimage Media Ltd. v. IHeartMedia, Inc.
793 F.Supp.3d 852
W.D. Tex.2025Background
- In January 1990, Adrian Boot created and published a photograph of Tom Waits, later registered with the U.S. Copyright Office in 2018 and assigned to plaintiff Urbanimage Media LTD.
- Urbanimage alleges that in July 2021, IHeartMedia embedded a YouTube video containing the photograph on its website in an "in Memoriam" article for Chuck E. Weiss, making the image visible to users.
- The key fact is IHeartMedia did not host the image on its own servers but embedded it using HTML code that sourced it from a third-party (YouTube) platform.
- Urbanimage sued for direct copyright infringement in June 2024, claiming violation of its exclusive display right under 17 U.S.C. § 106(5).
- IHeartMedia moved to dismiss under Rule 12(b)(6), arguing that, under the Ninth Circuit's "server test," embedding an image is not a public display if not hosted on the defendant's server.
- The decision addresses whether the server test applies and whether embedding third-party images infringes the public display right.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does embedding a third-party image violate the copyright holder's display right under the Copyright Act? | Server test contradicts statutory text; embedding is a display regardless of server location | No display occurs unless the image is stored on defendant’s own server (server test) | Embedding can infringe the display right; server test rejected |
| Does the location of the image (plaintiff’s or third-party server) determine infringement? | Storage location is irrelevant; focus is on public display to users | Infringement requires possession/storage on defendant’s server | Physical location not determinative; display occurs if user sees it |
| Has Urbanimage properly pleaded ownership and copying for a copyright claim? | Plaintiff owns copyright, image shown without authorization | Does not contest ownership, but claims no actionable copying due to embedding | Plaintiff sufficiently pleaded ownership and actionable copying |
| Is volitional conduct required and satisfied? | Defendant’s staff embedded the video intentionally | (Not contested in substance) | Volitional act present and sufficient |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (facial plausibility standard for motions to dismiss)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (motion to dismiss standard and pleading requirements)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (copyright infringement elements and originality)
- Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (copyright law responds to technological change)
- Am. Broad. Cos., Inc. v. Aereo, Inc., 573 U.S. 431 (technological distinctions that are invisible to users do not affect liability for public performance/display)
- Arista Records, LLC v. Doe 3, 604 F.3d 110 (copyright infringement requires violation of exclusive rights)
- Geophysical Serv., Inc. v. TGS-NOPEC Geophysical Co., 850 F.3d 785 (ownership and copying are the main elements of copyright infringement)