GREAT BOWERY d/b/a TRUNK ARCHIVE v. BEST LITTLE SITES d/b/a www.comicbookmovie.com; NATHAN BEST; MARK CASSIDY; and JOSHUA WILDING
Case No. 2:21-cv-00567-DBB-JCB
May 2, 2023
District Judge David Barlow
Document 85; PageID.910
MEMORANDUM DECISION AND ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFF’S [72] MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS AND DENYING [80] DEFENDANTS’ MOTION FOR JUDGMENT ON THE PLEADINGS
Before the court are two motions for judgment on the pleadings. Plaintiff Great Bowery, doing business as Trunk Archive (“Trunk Archive”), moves for partial judgment on the pleadings as to the counterclaim filed by Defendants Best Little Sites, doing business as comicbookmovie.com
BACKGROUND
Trunk Archive represents certain photographers.4 It licenses their photographs and images.5 CBM operates a website where third-party users create and post articles.6 CBM does not direct users as to article content, quality, or timing.7 The site has a copyright policy that allows users to submit DMCA (“Digital Millennium Copyright Act”) take-down requests.8 It also contains community guidelines that prohibit the posting of infringing content.9 Users must consent to these policies before posting.10
At issue are eighteen photographs taken by Annie Leibovitz (“Ms. Leibovitz“).11 The photographs originally appeared in the publication Vanity Fair.12 Ms. Leibovitz granted Trunk Archive the exclusive right to license the photographs.13 In February 2019, Trunk Archive discovered articles on CBM‘s website containing unlicensed copies of the photographs.14 Trunk Archive asserts that CBM paid Mr. Cassidy and Mr. Wilding to create these articles.15 It also asserts that Mr. Best “has the ability to supervise and control [site] content.”16
CBM Defendants assert that neither CBM nor Mr. Best directed anyone to post the images (“Subject Images“) on the website.17 The Subject Images were not “stored on servers belonging to or controlled by CBM or [Mr.] Best.”18 They “were displayed on CBM‘s website by embedding the image[s] and linking back to a third-party server that was not owned or controlled by CBM.”19 Mr. Best and CBM disclaim actual knowledge that the Subject Images were allegedly infringing or even posted to the website until they received
On September 27, 2021, Trunk Archive filed its Complaint.22 CBM Defendants filed their Answer and Counterclaim on June 23, 2022.23 Trunk Archive moved to dismiss the counterclaim and strike certain affirmative defenses.24 The court granted in part and denied in part the motion on October 13, 2022.25 On November 29, 2022, Trunk Archive filed an answer and its Motion for Judgment on the Pleadings.26 CBM Defendants filed an opposition on January 17, 2023,27 and Trunk Archive replied on January 31, 2023.28 On February 1, 2023, Defendants filed their Motion for Judgment on the Pleadings.29 Trunk Archive responded on February 2, 2023.30 Defendants filed their reply one week later.31
STANDARD
DISCUSSION
The parties collectively raise three issues. Trunk Archive moves for partial judgment on the pleadings as to CBM Defendants’ affirmative defenses of “embedding”
I. “Embedding” Affirmative Defense
Trunk Archive moves for judgment on the pleadings on CBM Defendants” “embedding” affirmative defense. “Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party‘s server, into the coder‘s website.”38 When a user “visits a website that includes an ‘embed code,’ the user‘s internet browser is directed to retrieve the embedded content from the third-party server and display it on the website.”39 “As a result of this process, the user sees the embedded content on the website, even though the content is actually hosted on a third-party‘s server, rather than on the server that hosts the website.”40
Trunk Archive argues that since the act of displaying a work publicly means to “transmit or communicate a display to the public,”41 “each unauthorized showing of a work through a computer infringes on the owner‘s right of public display.”42 It likens the act of embedding to an intentional process where the images are communicated to users “via a seamlessly integrated webpage program.”43 As such, the mere fact that CBM embedded the images—instead of uploading them from their own servers—is not determinative of whether the images were “publicly displayed.”44 Trunk Archive contends that the court should focus on the “practical functional perspective“-the display of copyrighted images—instead of letting an “embedding” “hyper[-]technical loophole” excuse liability.45
In response, CBM Defendants cite the “server” test as set forth in Perfect 10, Inc. v. Google, Inc. and later affirmed by the Ninth Circuit.46 In Perfect 10, the Ninth Circuit addressed whether Google‘s unauthorized display of thumbnail and full-sized images violated the copyright holder‘s rights. The court first defined an image as a work “that is fixed in a tangible medium of expression . . . when embodied (i.e., stored) in a computer‘s server (or hard disk, or other storage device).”47 The court defined “display” as an individual‘s action “to show a copy . . . , either directly or by means of a film, slide, television image, or any other device or process . . . .”48 “The image stored in the computer is the ‘copy’ of the work for purposes of copyright law.”49 Thus, the “computer owner shows a copy ‘by means of a . . . device or process’ when the owner uses the computer to fill the computer screen with the photographic image stored on that computer, or by communicating the stored image electronically to another
The Ninth Circuit found that Google infringed with the thumbnail images because Google‘s computers had stored copies of Perfect 10‘s images and then communicated the copies
to users.52 But Google had not displayed copies of the full-size images when it merely framed inline linked images appearing on the users’ screens.53 The court reasoned that Google had only provided HTML instructions that “direct a user‘s browser to a website publisher‘s computer that stores the full-size photographic images.”54 Google had not stored the images. “[T]he owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner inline links to or frames the electronic information.”55 “[S]uch assistance... does not constitute direct infringement of the copyright owner‘s display rights.”56 By the same token, CBM Defendants contend that the “server” test applies here.
Addressing the “server” test, Trunk Archive argues that a party could still be liable for infringement through the process of embedding. It contends that the Copyright Act does not require physical possession to violate the Act‘s “display” right. In consequence, a requirement for a party to have stored the images before infringement would turn the “display” right into a subset of the “reproduction” right.57 Trunk Archive argues that Congress did not intend to ““freeze the scope of copyrightable technology’ to then-existing methods of expression.”58 In essence, it contends that it is immaterial whether a provider displays an image by embedding it or by uploading it from its own server.59
The relevant facts are not in dispute. CBM Defendants did not store the Subject Images on servers that they owned or controlled.60 They “embed[ed] the image[s] and link[ed] back to a third-party server.”61 The question is whether CBM Defendants’ act of embedding provides a defense to their liability. If the “server” test applies, the “embedding” affirmative defense survives Trunk Archive‘s motion for judgment on the pleadings.62 If not, then the defense fails as a matter of law. The parties agree that there is no controlling authority.63 The court must therefore determine
The Ninth Circuit considers the “server” test settled law.64 Other circuit courts have upheld the test or acknowledged it for its proposition that infringement arises when copies were loaded onto a computer server and then posted.65 In particular, the Seventh Circuit overturned a district court that declined to apply Perfect 10. The lower court had distinguished users’ selection and submission of videos for “inline linking/embedding” from Google‘s automated process of inline linking.66 It reasoned that “a website‘s servers need not actually store a copy of a work in
order to ‘display’ it.”67 The Seventh Circuit reversed. It found that the video‘s uploader had potentially infringed—not the provider who simply “provide[d] a connection between the server that host[ed] the video” and the user‘s computer.68 The court noted that the provider‘s action “[wa]s a bad thing to do . . . [,] but it [wa]s not copyright infringement” because the provider had not copied the video onto its system.69
Several district courts have endorsed the test including one from this circuit.70 In Grady v. Iacullo, the District of Colorado addressed whether a defendant‘s sharing of links to a copyright holder‘s photographs and videos was infringement. The defendant argued that he never possessed the images or videos and so he had not infringed pursuant to the “server” test.71 The court declined to adopt the copyright holder‘s invitation to distinguish Perfect 10, concluding that “[t]he problem for plaintiff is that merely because defendant, in some manner, shared plaintiff‘s photographs and videos does not necessarily mean that defendant copied the same in a way that infringes plaintiff‘s copyrights.”72 “[P]laintiff was required to present some evidence that its photographs and videos were placed on defendant‘s computer . . . .”73
implicated “reproduction” or “distribution” rights, the court cited favorably the “server” test, which does pertain to the “display” right.75
To be sure, some district courts have questioned the “server” test‘s applicability to embedding. In Goldman v. Breitbart News Network LLC, the court found that embedding a Tweet onto a website was infringement. Distinguishing Perfect 10, the court noted that the “defendant itself took active steps to put a process in place that resulted in a transmission of the photos so that they could be visibly shown.”76 The court in Leader‘s Institute, LLC v. Jackson also rejected the “server” test. In Jackson, the defendant‘s website directed a user‘s browser to display the copyright holder‘s website; the defendant did not have reproductions of the copyrighted material. Even so, the court found that the defendant “displayed [the copyright holder]‘s content as if it were its own.”77 The court compared the defendant‘s actions to a person live-streaming a movie in a theater without permission.78 The Southern District of New York has also found that Perfect 10 does not apply to embedding.79 In Nicklen v. Sinclair Broadcasting Group, Inc., the court reasoned that the “server” test applied only for search engines where users could see an image once they clicked a hyperlink.80 The court concluded that to “show a copy’ is to display it[,]” even if a party did not store it.81
Notwithstanding those decisions, the parties have not cited and the court cannot find any appellate authority rejecting the Ninth Circuit‘s “server” test. Perfect 10 offers a straightforward,
bright-line test for determining whether images displayed on a website violate the Copyright Act. Applied here, if the Subject Images were not stored on CBM Defendants’ servers or on servers that they controlled, then CBM Defendants have a possible defense to infringement.
The court is not persuaded by Trunk Archive‘s arguments to reconsider the “server” test as to embedding in light of statutory text and legislative history.82 In Perfect 10, the court concluded that “based on the plain language of the [Copyright Act], a person displays a photographic image by using a computer to fill a computer screen with a copy of the photographic image fixed in the computer‘s memory.”83 The court found that Google had infringed the plaintiff‘s display right when it stored
Trunk Archive offers several policy rationales it believes undermine the “server” test. It argues that by “exploiting th[e] hyper[-] technical loophole [of embedding], websites . . . would be able to retain all benefits of placing desirable copyrighted content on [their] Website[s,] . . . all the while avoiding legal liability.”87 It claims that “practically every court outside the Ninth Circuit (and even some within) have expressed doubt that the use of embedding is a defense to infringement.”88 Next, it argues that embedding is different from linking and protection exists regardless of whether images are linked, embedded, or uploaded. As to a concern about widespread infringement claims, Trunk Archive notes that DMCA only protects service providers and that CBM Defendants” “DMCA arguments are misplaced since this part of [the] argument has nothing to do with Defendants’ DMCA defense.”89 It also contends that treating embedding as infringement would not fundamentally alter how the Internet works.90 Last, Trunk Archive argues that “if embedding were to be considered non-infringing, a website could simply ‘piggyback’ off of a licensed use by embedding on to their own website while avoiding having to seek a license.”91
In response, CBM Defendants describe embedding images as a “standard method for showing images on the internet [that] has been widely used for decades.”92 They argue that the copyright owner still holds the exclusive right to display their work; the owner should not be able to allow other sites to freely link to his work and then demand payment from all who have seen the images. Next, CBM Defendants discount Trunk Archive‘s slippery slope argument. They
note that a copyright owner could seek relief even against individuals and servers. CBM Defendants contend that equating all inline linking to infringement would “expose[] countless contributors to unsuspecting copyright infringement.”93 And they argue that the inline linking, as opposed to individual uploads, makes it easier for the copyright owner to enforce copyright law.
The court finds Trunk Archive‘s policy arguments insufficient to put aside the “server” test. Contrary to Trunk Archive‘s claims, “practically every court outside the Ninth Circuit” has not “expressed doubt that the use of embedding is a defense to infringement.”94 Perfect 10 supplies a
Besides, embedding redirects a user to the source of the content—in this case, an image hosted by a third-party server. The copyright holder could still seek relief from that server. In no
way has the holder “surrender[ed] control over how, when, and by whom their work is subsequently shown.”99 To guard against infringement, the holder could take down the image or employ restrictions such as paywalls.100 Similarly, the holder could utilize “metadata tagging or visible digital watermarks to provide better protection.”101
In sum, Trunk Archive has not persuaded the court to ignore the “server” test. Without more, the court cannot find that CBM Defendants are barred from asserting the “embedding” defense. The court denies in part Trunk Archive‘s motion for partial judgment on the pleadings.
II. “Safe Harbor” Affirmative Defense
Trunk Archive next argues that CBM Defendants cannot utilize the DMCA safe harbor affirmative defense. “The DMCA established four safe harbors to ‘provide protection from liability for: (1) transitory digital network communications; (2) system caching; (3) information residing on systems or networks at the direction of users; and (4) information location tools.”102
CBM Defendants assert that the safe harbor provision bars Trunk Archive‘s claims “because . . . CBM is a service provider and the accused content was posted, stored, transmitted, or otherwise made available at the direction of a user.”103 In their opposition, CBM Defendants
address only
“To be eligible at the threshold for the
Trunk Archive contends that the Subject Images were not stored on a “system or network controlled or operated by or for the service provider.”109 CBM Defendants respond that the relevant safe harbor provision protects more than just those who store copyrighted material.110 In particular, protection ostensibly extends to collateral functions such as providing access, transmission, routing, or connections.111
Courts have held that “storage” for purposes of the safe harbor provision extends beyond the storage itself.112 Yet such activities must still relate in some way to the material‘s storage. “[R]ather than requiring ‘that the infringing conduct be storage,’ the statutory language allows for infringement ‘by reason of the storage at the direction of a user.”113 “The
To rely on the third DMCA safe harbor defense, a service provider must also show that the activity was “at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.”117 Here, CBM Defendants assert that the Subject Images were displayed “by embedding the image and linking back to a third-party server that was not owned or controlled by CBM.”118 But the images “are not and were not stored on servers belonging to or controlled by CBM or [Mr.] Best.”119 Because they disclaim ownership
and control over the systems containing the Subject Images, CBM Defendants cannot now rely on the safe harbor defense.
Cases cited by CBM Defendants are not contrary. The court in Viacom International, Inc. v. YouTube, Inc. found that activities—“transmission, routing, or providing of connections” must “flow from the material‘s placement on the provider‘s system or network[.]”120 The court noted that a service provider maintains a safe harbor when it “facilitat[es] user access to material on its website.”121 In Io Group, Inc. v. Veoh Networks, Inc., users registered and then uploaded material directly to the defendant‘s website.122
CBM Defendants offer several policy-based arguments. They argue that expansive liability would undercut Congress’ goal of enacting the DMCA “to facilitate the robust development and worldwide expansion of electronic commerce, communications, research, development, and education in the digital age.”123 Further, they contend that holding service providers liable for having provided access would create an “illogical chasm” where providers would be responsible for others’ actions “through no fault of their own.”124 Last, CBM Defendants argue that a failure to fully promote the safe harbor provision would render moot the DMCA‘s notice-and-take-down procedures.125
These arguments do not overcome the fact that CBM Defendants have not shown that they are entitled to a safe harbor defense. Courts have recognized Congress’ intent to provide balance in the copyright sphere.126 And the DMCA‘s notice-and-take-down
For these reasons, CBM Defendants’ safe harbor affirmative defense fails as a matter of law.
III. Copyright Infringement Claim
Defendants move for judgment on the pleadings on Trunk Archive‘s claim for copyright infringement. They argue that Trunk Archive lacks standing to assert a violation of the right to publicly display the Subject Images and that it has not pleaded sufficient facts to show a violation. Specifically, Defendants contend that Trunk Archive alleges only a right to distribute copies of the images to the public-not a right to display publicly.130 They contend that even in
the best light, the Complaint alleges only a violation of the exclusive right to license or distribute.131 Last, they argue that Trunk Archive cannot hold the exclusive right to display the images since the publication Vanity Fair could also display them.132
Trunk Archive contends that it has standing to pursue a violation of the Copyright Act and that its pleadings are plausible. It argues that its “exclusive right to license” included the “right to grant licenses for exploitation of any of the six statutorily created exclusive rights, including the right of public display.”133 As to Vanity Fair, Trunk Archive contends that the publication was not given any exclusive rights, or, even if it held rights to first publication, Trunk Archive had standing to sue for later infringements.134
“Anyone who violates any of the exclusive rights of the copyright owner as provided by
dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other
The Copyright Act allows for transfer of copyright ownership.138 “A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.”139 “The Copyright Act recognizes that an exclusive license is effectively a transfer of ownership over the rights licensed.”140 “[A] license is an authorization by the copyright owner to enable another party to engage in behavior that would otherwise be the exclusive right of the copyright owner, but without transferring title in those rights.”141
Here, the issue is whether the “exclusive right to license” includes the right to display publicly.
the copyrighted work publicly[.]”143 Since Trunk Archive plausibly alleges that it held the exclusive right to display the work publicly, it also plausibly alleges that Defendants violated that right by displaying the Subject Images without its authorization.144
Accepting Defendants’ argument would mean that Trunk Archive would have had to plead with specificity that Ms. Leibovitz transferred each of the six exclusive rights under
Defendants’ argument that Trunk Archive had a non-exclusive license because of Vanity Fair falters. Trunk Archive does not plead that Vanity Fair ever held an exclusive license for the Subject Images. It pleads only that Vanity Fair
Finally, Trunk Archive has not pleaded that it is “merely the licensing agent for the works.”149 On the contrary, it pleaded that it held the exclusive right to license the Subject Images. That means it had the right to display the images publicly or to authorize others to do so. “[T]the default rule is that only those who owned an exclusive right in a registered copyright at the time of the infringement may bring suit.”150 Owning the exclusive right to license, Trunk Archive has plausibly pled that it can pursue an infringement claim against Defendants.
In sum, Trunk Archive plausibly pled that Defendants infringed the Copyright Act by publicly displaying the Subject Images without authorization. The court denies Defendants’ motion for judgment on the pleadings.
ORDER
Accordingly, the court DENIES IN PART AND GRANTS IN PART Plaintiff‘s Motion for Partial Judgment on the Pleadings.151 The court denies the motion as to the “embedding” affirmative defense. The court grants the motion as to the “safe harbor” affirmative defense. The court DENIES Defendants’ Motion for Judgment on the Pleadings.152
Signed May 2, 2023.
BY THE COURT
David Barlow
United States District Judge