URBANIMAGE MEDIA LTD. v. IHEARTMEDIA, INC.
Case 5:24-cv-00623-XR
IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS SAN ANTONIO DIVISION
July 29,
ORDER
On this date, the Court considered Defendant IHeartMedia, Inc.‘s (“IHeartMedia“) Motion to Dismiss (ECF No. 13), Plaintiff Urbanimage Media LTD‘s (“Urbanimage“) Response (ECF No. 14), and Defendant‘s Reply (ECF No. 17). After careful consideration, and the parties’ oral arguments on April 17, 2025, the Court issues the following order.
I. BACKGROUND
A. Factual Allegations
The following allegations are presumed true for the purposes of the motion to dismiss. In January 1990, third party Adrian Boot first published a photograph
EXHIBIT 1: PHOTOGRAPH
ECF No. 12-1.
Nearly thirty years later, in 2018, the Photograph was registered by the United States Copyright Office under Registration No. VA 2-110-511. AC ¶ 14. Subsequently, Boot assigned all rights in the Photograph, including the right of copyright enforcement, to Plaintiff. AC ¶ 15. Plaintiff acquired the rights to the Photograph with the intent to commercially license the Photograph. AC ¶ 16.
Plaintiff alleges that Defendant displayed the Photograph on its website in July 2021,1 (AC ¶ 22), with Defendant noting that the Photograph was in a YouTube video that was embedded on IHeartMedia‘s webpage in connection with an “in Memoriam” article surrounding the death of Chuck E. Weiss. ECF No. 13 at 10.
EXHIBIT 2: INFRINGEMENT
URL: https://kbco.iheart.com/content/2021-07-23-rest-in-peace-chuck-e-weiss/
Defendant asserts that Plaintiff‘s Exhibit Two is a “screengrab” of the YouTube video that was embedded on the website of its radio affiliate in Denver, Colorado. ECF No. 13 at 10.
B. Embedding
The concept of “embedding” is uncontested, and the Court adopts then-Judge Forrest‘s explanation below.
A webpage is made up of a series of instructions usually written by coders in Hypertext Markup Language (“HTML“). These instructions are saved to a server (a computer connected to the internet), and when a user wishes to view a webpage, his or her computer‘s browser connects with the server, at which point the HTML code previously written by the coder instructs the browser on how to arrange the webpage on the user‘s computer. The HTML code can allow for the arrangement of text and/or images on a page and can also include photographs. When including a photograph on a web page, the HTML code instructs the browser how and where to place the photograph. Importantly for this case, the HTML code could instruct the browser either to retrieve the photograph from the webpage‘s own server or retrieve it from a third-party server.
“Embedding” an image on a webpage 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. To embed an image, the coder or web designer would add an “embed code” to the HTML instructions; this code directs the browser to the third-party server to retrieve the image. An embedded image will then hyperlink (that is, create a link from one place in a hypertext document to another in a different document) to the third-party website. The result: a seamlessly integrated webpage, a mix of text and images, although the underlying images may be hosted in varying locations. Most social
media sites—Facebook, Twitter, and YouTube, for example—provide code that coders and web designers can easily copy in order to enable embedding on their own webpages.
Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 587 (S.D.N.Y. 2018).
Here, it is undisputed that Defendant‘s website embedded the Photograph by including the necessary embed code in their HTML instructions. As a result, the Photograph appeared within IHeartMedia‘s website “in Memoriam” article even when a reader took no action to retrieve or navigate to the YouTube video. See AC ¶ 23; ECF No. 12-2.
C. Procedural Background
On June 6, 2024, Urbanimage sued IHeartMedia for copyright infringement. ECF No. 1.
On October 21, 2024, Urbanimage filed an amended complaint that brings a claim of direct copyright infringement, alleging that IHeartMedia improperly and illegally distributed and publicly displayed its copyright protected Photograph without permission or authorization in violation of its rights under
Thereafter, IHeartMedia moved to dismiss pursuant to Federal Rule of Procedure 12(b)(6). ECF No. 13. Plaintiff filed a response, and Defendant filed a reply.
The Court heard the Parties’ oral arguments on April 17, 2025, wherein both Plaintiff and Defendant agreed this case involves a pure legal issue and therefore is appropriate for the Court‘s consideration on the 12(b)(6) motion.
II. LEGAL STANDARD
Rule 12(b)(6) allows a party to move for the dismissal of a complaint for “failure to state a claim upon which relief can be granted.” To survive a motion to dismiss, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.‘” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 678. A claim for relief must contain: (1) “a short and plain statement of the grounds for the court‘s jurisdiction“; (2) “a short and plain statement of the claim showing that the pleader is entitled to the relief“; and (3) “a demand for the relief sought.”
In considering a motion to dismiss under Rule 12(b)(6), all factual allegations from the complaint should be taken as true, and the facts are to be construed in the light most favorable to the nonmoving party. Fernandez-Montes v. Allied Pilots Ass‘n., 987 F.2d 278, 284 (5th Cir. 1993). Still, a complaint must contain “more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. “[N]aked assertions’ devoid of ‘further factual enhancement,‘” and “threadbare recitals of the elements of a cause of action, supported by mere conclusory statements,” are not entitled to the presumption of truth. Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557); see also R2 Invs. LDC v. Phillips, 401 F.3d 638, 642 (5th Cir. 2005) (stating that the Court should neither “strain to find inferences favorable to the plaintiffs” nor accept “conclusory allegations, unwarranted deductions, or legal conclusions.“).
III. DISCUSSION
Defendant argues under Rule 12(b)(6) that Plaintiff has failed to state a claim for infringement of the Copyright Act‘s right of display. Defendant contends that embedding the Photograph is not a “display” under the Copyright Act. Relying on the Ninth Circuit‘s server test, first announced in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), Defendant has framed the issue as one in which liability is determined by the physical location and/or possession of an allegedly infringing image. Defendant contends that Perfect 10 is settled precedent that should determine the outcome of this case. On the other hand, Plaintiff contends the server test violates the plain text of the Copyright Act and contradicts its legislative history.
A. Copyright Infringement
“A claim of copyright infringement has two elements: (1) ownership of a valid copyright; and (2) copying constituent elements of the work that are copyrightable.” Geophysical Serv., Inc. v. TGS-NOPEC Geophysical Co., 850 F.3d 785, 791 (5th Cir. 2017) (citation omitted).
1. Ownership
The Amended Complaint alleges Urbanimage owns the Photograph, and the Photograph has been properly registered with the United States Copyright Office. AC ¶¶ 10–15, 46. Defendant does not argue that Urbanimage does not own the photograph, nor does it otherwise challenge the underlying facts regarding registration. Urbanimage‘s pleadings are sufficient to meet the first element.
2. Copying
The second element of a copyright infringement claim—copying—requires a showing of (1) factual copying and (2) substantial similarity. Baisden v. I‘m Ready Prods., Inc., 693 F.3d 491,
499 (5th Cir. 2012). In this case, only factual
Urbanimage pleads that IHeartMedia has copied the Photograph and publicly displayed the Photograph on its website thereby constituting willful copyright infringement. AC ¶¶ 4, 48–49. Defendant asserts under the server test that it has not displayed the Photograph but has simply embedded a video containing the Photograph in an article on its website containing the Photograph. ECF No. 13 at 12–15.
The plain text of the Copyright Act, the legislative history behind its enactment, and subsequent Supreme Court Jurisprudence provide no support for the server test, a rule that allows
physical location or possession of an image to determine whether a work has been “displayed” within the meaning of the Copyright Act. Moreover, the Court finds Defendant‘s policy argument unpersuasive. For the reasons stated below, the Defendant‘s Motion to Dismiss is denied.
B. Direct Infringement – Display Right
Although
1. Display
i. Plain Text
Under the Act, a “display” occurs when a copy of the work is shown “either directly or by means of a film, slide, television image, or any other device or process.”
A “copy” as defined by the Act is a “material object[] . . . in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
A copy of a work includes the original Id. (“The term ‘copies’ includes the material object . . . in which the work is first fixed.“). Finally, ‘[a] work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” Id.
Thus, under the plain meaning of the Act, a defendant violates an artist‘s exclusive right to display a work when the defendant without authorization causes any copy of the work to be seen—whether directly or by means of any device or process available when the Act was enacted or developed thereafter.
“From its beginning, the law of copyright has developed in response to significant changes in technology.” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 430 (1984). The legislative history reveals that Congress intended copyright protection to be viable into the future regardless of yet to be developed technologies. H.R. Rep. 94–1476, 47, 51 (1976) (proclaiming that the legislation was necessary in part because “technical advances have generated new industries and new methods for the reproduction and dissemination of copyrighted works” and Congress did “not intend to freeze the scope of copyrightable subject matter at the present state of communication technology.“).
In considering the display right, the drafters of the act noted that “the display of a visual image of copyrighted work would be an infringement if the image were transmitted by any method (by closed or open circuit television, for example, or by a computer system) from one place to members of the public elsewhere.” Id. at 80 (emphasis added).
Based on the statute‘s language and its legislative history, the Act is concerned not with how a work is shown, but whether a work is shown.
ii. The “Server Test”
In Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007), the Ninth Circuit announced the server test, which determines liability for direct copyright infringement based on how a copyrighted image is displayed on a website. If a website displays an image by “using a computer to fill a computer screen with a copy of the photographic image fixed in the computer‘s memory[,]” that is infringement. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007). If, on the other hand, the same website shows an image to a user by “embedding” a link to it such that a user‘s browser “interacts with the [third-party] computer that stores the” computer code that represents the image—that is not infringement. Id. at 1161. Finding a distinction based on where the images were hosted, the Ninth Circuit reasoned that, under the definitions of “display” and “copies,” a defendant committed infringement only
Since Perfect 10, the Ninth Circuit has applied and upheld the server test in multiple cases.7 In Hunley v. Instagram, LLC, 73 F.4th 1060, 1065–67 (9th Cir. 2023), the appellants posted some of their copyrighted material on Instagram, which appellees then displayed in online articles by embedding the photographs. Affirming the district court, the Hunley Court held the
appellants did not display a copy of the appellants’ photographs, given that neither appellee stored appellants’ photographs on its servers. Id. at 1077. Hunley concluded that Perfect 10 did not limit the server test to specific types of websites, such as search engines, as the server test depends on the method used for displaying a photo—not the context in which the photo is displayed. Id. at 1070–71. The Hunley Court also distinguished Perfect 10 from the Supreme Court‘s decision in Am. Broad. Cos. v. Aereo (discussed infra), given its understanding that the server test was crafted out of the Copyright Act‘s fixation requirement—not the perceptibility requirement. Id. at 1076.
iii. The server test contravenes the language and history of the Copyright Act
When interpreting the Copyright Act, “we follow the text of the statute.” Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178, 184 (2022) (citation omitted). “When the language is plain, we ‘must enforce the statute‘s plain meaning, unless absurd.‘” Trout Point Lodge, Ltd. v. Handshoe, 729 F.3d 481, 486 (5th Cir. 2013) (quoting In re Nowlin, 576 F.3d 258, 261–62 (5th Cir. 2009)). And “courts often apply a statute‘s highly general language in light of the statute‘s basic purposes.” Am. Broad. Cos. v. Aereo, 573 U.S. 431, 450 (2014). The Act‘s “significant purpose” is to “encourage the origination of creative works by attaching enforceable rights to them.” Crown Awards, Inc. v. Discount Trophy & Co., Inc., 564 F. Supp. 2d 290, 295 (S.D.N.Y.) (quoting Matthew Bender & Co., Inc. v. West Pub. Co., 240 F.3d 116, 122 (2d Cir. 2001)).
The Copyright Act‘s text conflicts with the server test. As discussed above, the Perfect 10 Court reasoned that copyrighted works were not displayed through embedding because the works were never stored on the alleged infringer‘s servers. Perfect 10, 508 F.3d at 1160. Yet any suggestion that the location of where the image is stored is absent from the text and purpose of the Act. The plain text of the Act is clear that “[t]o ‘display’ a work means to show a copy of it, either directly
work occurs when it is caused to be seen, regardless of the method of display. Under the server test, however, the display of an image can only occur when an infringer uses “a computer to fill a computer screen with a copy of the photographic image fixed in the computer‘s memory.” Perfect 10, 508 F.3d at 1160 (emphasis added). The Court there wrote that a “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 person‘s computer.” Id. But a server-storage requirement adds a condition absent from the Act‘s plain text.
IHeartMedia argues under the server test that it has not infringed the Act because the embedded video remains on a third-party‘s server and is not fixed in IHeartMedia‘s servers and thus is not a display. But this conclusion is contrary to the text and legislative history of the Copyright Act. The Act defines to “display” as “to show a copy of” a work,
Although the copy of the work being shown must be a material object in which the copyright work is fixed, see
storage device).“), the text of the statute provides that a “copy” of the work can be “fixed in any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
Relying on this language, the Perfect 10 Court held that an “image stored in the computer is the ‘copy’ of the work for purposes of copyright law” Perfect 10, 508 F.3d at 1160 (quoting MAI Sys. Corp. v. Peak Comput., Inc., 991 F.2d 511, 517–18 (9th Cir. 1993)). But MAI, which Perfect 10 relied on, considered the copying of software programs and, in that context, found that a “copy” was made when the program was transferred from one computer to another computer‘s memory. MAI Sys., 991 F.2d at 518. Mai did not rule out other methods “now known or later developed,”
Applying this conclusion to the facts, IHeartMedia published on its website an “in Memoriam” article that embedded a third-party‘s YouTube video which caused the Photograph to appear on IHeartMedia‘s website. A reader interacting with the article would have seen the Photograph even if the reader took no action to retrieve or navigate to the YouTube video. Under the plain meaning of “display,” IHeartMedia “showed” the Photograph by embedding it in a way that a user would see the image while reading the article thus infringing on Plaintiff‘s exclusive right to display the Photograph.
iv. American Broadcasting Cos., Inc. v. Aereo, Inc.
The Court finds more support for its conclusion in Am. Broad. Cos., Inc. v. Aereo, Inc., 573 U.S. 431 (2014), which also appears to disagree with the server test.
In Aereo, the Court rejected any distinction between different technological means, reasoning it “means nothing to the subscriber” as the technology was “invisible to subscriber and broadcaster alike” and by which Aereo “perform[ed] the same work“; “show[ed] the same images and ma[de] audible the same sounds.” Aereo, 573 U.S. at 448. The Court ultimately concluded the technological distinctions were not adequate to avoid liability under the Copyright Act. Id. at 451; see also Goldman, 302 F. Supp. 3d at 595 (determining this reasoning in Aereo “strongly support[s]” rejecting the server test).
In Hunley, the Ninth Circuit addressed Aereo, noting that the server test was crafted out of the Copyright Act‘s fixation requirement—not the perceptibility requirement. Hunley, 73 F.4th at 1076. Still, the fixation requirement undergirding the server test rests on the nature of the background technological process, specifically, on the technicality that an embedded link points a
user‘s web browser to an author‘s image “fixed” elsewhere (rather than to a file on the operator‘s own computer server) and that distinction was rejected as immaterial in Aereo. Applying the Aereo Court‘s reasoning here, whether IHeartMedia displays the image directly from its server or it embeds the photo (relying on a third-party server to store the image), those technological distinctions
v. Policy
Proponents of the server test speculate that declining to apply the server test would “cause a tremendous chilling effect on the core functionality of the web” and “would impose far-reaching and ruinous liability . . . grinding the internet to a halt.” Goldman, 302 F. Supp. 3d at 596; Nicklen, 551 F. Supp. 3d at 195. Here, Defendant presents a simpler policy argument, asserting that the Server Test should be adopted as simply “good policy,” urging that the test should be adopted as a “straightforward, bright-line test for determining whether images displayed on a website violate the Copyright Act.” ECF No. 13 at 15 (quoting Great Bowery v. Best Little Sites, 671 F. Supp. 3d 1297, 1308 (D. Utah 2023). Perhaps there are good policy arguments for the sever test. But “between policy arguments and the statutory text . . . the text [of the Act] must prevail.” UMG Recordings v. Grande Comm. Networks, 118 F.4th 697, 723 (5th Cir. 2024), petition for cert. filed, No. 24-967. In any event, policy arguments are “best directed at Congress.” Id.
The Court determines that the plain language of the Copyright Act, the legislative history underlying its enactment, and Supreme Court jurisprudence conflict with Defendant‘s assertions
that the physical location or possession of the Photograph determines who may or may not have “displayed” a work within the meaning of the Copyright Act. Thus, as to the second element—copying constituent elements of the work that are copyrightable--the Plaintiff has met its pleading burden.
The court now turns to the remaining elements of a direct infringement claim.
2. Publicly
The owner of the copyrighted work has the exclusive right to display the work publicly.
Here, IHeartMedia published the “in Memoriam” article, including the embedded Photograph, on its publicly accessible website. Defendant does not argue that the display was not public. As such, IHeartMedia communicated a display of the Photograph to the public.
3. Volitional Conduct
In direct copyright infringement cases, the Fifth Circuit recognizes that volitional conduct is required, which is “conduct by a person who causes in some meaningful way an infringement.” BWP Media USA, Inc. 852 F.3d at 440 n.1.(quoting Costar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544, 549 (4th Cir. 2004). Here, IHeartMedia‘s website contained code,9 presumably inserted by IHeartMedia
order to embed the copyrighted work, Defendant had to navigate to a third-party website and obtain the URL. Defendant then had to insert the URL into the article published on its website. Thus, IHeartMedia‘s volitional conduct caused the infringement at issue here.
IV. CONCLUSION
For the foregoing reasons, Defendant‘s Motion to Dismiss for Failure to State a Claim (ECF No. 13) is DENIED.
Plaintiff has abandoned its claim of infringement of the right of distribution. Plaintiff‘s claim for infringement of the right of display remains pending.
It is so ORDERED.
SIGNED this 29th day of July, 2025.
XAVIER RODRIGUEZ
UNITED STATES DISTRICT JUDGE