You have had a rough day. After having your car towed, you dropped a bag of groceries, shattering a jar of mayonnaise. Dejected, you collapse onto the couch and scroll your Instagram feed for some needed distractions. When you discover an image of a football player getting tackled by two separate linebackers simultaneously, the schadenfreude strikes deep. But this slowly morphs into vicarious embarrassment because, based on your day, you cannot help but identify with the misfortune. You copy and paste the Instagram post to your Twitter account with the caption, “Me, today,” to share the comic relief. The next day, you receive a cease-and-desist email from the owner of the football photo.

Can they do that? Almost every tech-savvy social media user knows about the process of embedding images. Many have grown accustomed to its ubiquity, much like the presence of the Internet itself. More importantly, social and digital media companies have generally permitted users to embed content on third-party websites without significant repercussions. However, the number of copyright infringement cases involving the issue of embedding has increased in the last few years, and recent developments have thrust its legality into question. While most courts had relied upon a Ninth Circuit Court of Appeals holding that embedding images using code from a foreign server did not constitute infringement for almost a decade, a few recent court decisions have begun to turn the tides.

Any entity that operates online should take note of these recent legal developments to shield itself from liability. Although individual users should be wary of sharing copyrighted material on their personal posts, larger media outlets have been the overwhelming targets of recent litigation. Such entities may be liable for more substantial damages when using others’ copyrighted images for their own monetary gain. Here we explore the basic technical framework of embedding, the history of its legality and the best approaches for users going forward.

What is Embedding?

Embedding is quite simple on the front end, but the coding process warrants further explanation. All web content is transmitted via Hypertext Markup Language (HTML) code, which tells a browser where content is stored and dictates how it should appear when retrieved. A website is often composed of material from various servers, including third-party photographs and advertisements, and the HTML code is able to instruct a browser to retrieve the information from all of those servers simultaneously, as well as content from the website’s own server.

When an image is embedded on a website, there is a particular HTML “embed code” that programmers add in order to retrieve the image from a third-party server. Most social media platforms make this user-friendly by programming it into their interface. For example, YouTube provides embed codes for programmers to copy and paste videos onto their own websites without having to take additional steps. This is often referred to as an embedding application programming interface (API). Embedded content is almost always displayed without requiring users to navigate to another page, although it is worth noting that the content itself is not copied nor saved. Regardless, the current legal landscape is unclear as to whether or not that matters in a copyright infringement context.

Legal History and the “Server Test”

In 2004, adult entertainment website Perfect 10, Inc. sued Google (among other defendants) for violating its exclusive right to display copyrighted works after it discovered that Google preliminarily displayed thumbnail images from Perfect 10’s page during web searches, as well as full-size versions of those images when clicked. Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 831 (C.D. Cal. Feb. 17, 2006). After a series of settlement discussions and an appeal, the Ninth Circuit held that the thumbnails infringed on Perfect 10’s display right but the full-size images did not, because only the former were stored on Google’s servers. Id. at 1159–62. This has come to be known colloquially as the “server test.” Essentially, the party whose servers store the copied images is responsible for the display, and this may determine liability.

For almost a decade, the server test was the most widely accepted standard for embedding copyrighted content. However, the landscape changed in 2018 with the Southern District of New York’s decision in Goldman v. Breitbart News Network, LLC. The case concerned a photograph of NFL star Tom Brady, which was taken and uploaded to Snapchat by Justin Goldman. The image quickly became popular and was shared on multiple Twitter accounts, and these Tweets were embedded by several online news and media outlets. Goldman then sued these entities for violating his exclusive display right, and the Court held that physical possession of a copied image is not required to prove infringement. Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 594 (S.D.N.Y. 2018). This case also clarified, per Supreme Court precedent, that embedding a copyrighted image may constitute infringement regardless of the technology used to facilitate it.

The Goldman decision departed significantly from the server test and left digital content managers with uncertainty regarding the legal status of embedding. Furthermore, the Second Circuit Court of Appeals decided not to hear an interlocutory appeal of the case. As a result, media outlets were forced to weigh the risks of embedding copyrighted content against the viability of a fair use defense on a case-by-case basis.

Recent Developments

Since the Goldman decision, embedding API has become a more frequently litigated issue. In 2018, photographer Stephanie Sinclair sued technology website Mashable in the Southern District of New York after she discovered that one of her Instagram posts had been embedded in an article written about her and several other photojournalists dedicated to social justice initiatives. While the article was not unflattering, Sinclair had previously expressly refused to license her work to Mashable for $50 and sued for infringement. The key fact is that Sinclair had agreed to Instagram’s terms of service, which included granting to Instagram a non-exclusive, “sub-licensable, worldwide license” to any content she posted. Accordingly, in April 2020, the court held that she had effectively granted a sublicense to Mashable to embed her photograph on their website. Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342, 343–45 (S.D.N.Y. 2020).

This decision turned some heads, as experts were concerned that it provided a loophole for websites to display copyrighted works without permission and left copyright owners uncredited for their original works. However, two months later, the court granted a motion for reconsideration. Sinclair v. Ziff Davis, LLC, No. 18-CV-790 (KMW), 2020 U.S. Dist. LEXIS 110627 (S.D.N.Y. June 24, 2020). In her opinion, Judge Kimba Wood reasoned that the Instagram terms of service were too vague and did not convey any user’s “explicit consent” to sublicense the copyrights to their images as a contractual matter. Id. at *3-4. While the court was clear that Sinclair had licensed her rights to Instagram, the issue regarding the alleged sublicense to Mashable is now being reexamined. As a result, the idea that embedding is presumptively non-infringing is no longer definitively justifiable.

Interestingly enough, the same court questioned the use of embedding in another June 2020 case, denying media outlet Newsweek’s motion to dismiss similar copyright infringement claims on the same grounds. McGucken v. Newsweek LLC, 2020 U.S. Dist. LEXIS 96126, at *9 (S.D.N.Y. June 1, 2020). In response to both cases, a Facebook representative issued a statement to news website Ars Technica that although Instagram’s terms permit it to grant sublicenses, people would need to obtain licenses before embedding users’ posts. Furthermore, in October 2020, several photojournalists sued Buzzfeed for embedding their copyrighted photos, which forced Buzzfeed to remove them ahead of trial. Complaint, Hunley v. Buzzfeed, No. 1:20-cv-08844 (S.D.N.Y. Oct. 22, 2020). Overall, the permissibility of embedding images is profoundly questionable.

However, it is worth noting that this does not necessarily preclude the fair use defense. For example, in November 2020, sports media outlet United Sports Publications was determined not to have infringed on the copyright to a photo of tennis player Caroline Wozniacki when it was used in a news article regarding her retirement from the sport. Boesen v. United Sports Publ’ns, Ltd., No. 20-CV-1552 (ARR) (SIL), 2020 U.S. Dist. LEXIS 203682, at *14 (E.D.N.Y. Nov. 2, 2020).

Limiting Infringement Liability

Fair use is a feasible defense if such a copyright infringement case makes it to trial. However, this is heavily fact-dependent and may only be appropriate in circumstances involving legitimate journalism. For instance, a news outlet may argue fair use in a situation such as the case involving Caroline Wozniacki’s photograph, if it used an Instagram post that was the subject of an existing controversy.

This also brings us back to the Ninth Circuit “server test.” While  the Southern District of New York has rejected the test,  that trial court ruling  is not binding on other courts.. Accordingly, the server test may still present a viable defense as of this writing. However, given that the Second Circuit has yet to rule on the server test and courts are seemingly split, this defense may be short-lived.

However, website owners can avoid liability altogether by simply linking to the image source without embedding the image itself. Copying and pasting a link from one website to another does not amount to copyright infringement because it does not involve copying any creative material; it merely provides a direct route to the original content. While this may not be the most aesthetically pleasing avenue for a journalist who wants to display an image in an article related to the subject matter of the image, it is a way to avoid copyright infringement liability. This process of “deep linking” has been widely deemed permissible by multiple courts, so long as the ownership of the creative material is clearly and properly attributed. Compare Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007) with Live Nation Motor Sports, Inc. v. Davis, 2006 U.S. Dist. LEXIS 89552, *12-14 (N.D. Tex. Dec. 11, 2006).

It is also worth mentioning that the Digital Millennium Copyright Act (DMCA) may provide insulation from both direct and secondary infringement liability for service providers when embedding copyrighted content. Certain service providers may be able to circumvent this liability by establishing reasonable policies to terminate repeat infringers, implementing standard technological measures to prevent illicit copying and responding promptly to takedown notices from users. However, this may be limited to hosting or linking services maintained by independent sponsors, like social media platforms and larger search engines. Personal websites may still however be subject to more scrutiny.

Conclusion

The legality of embedding is uncertain. On the one hand, the server test is alive and well in the Ninth Circuit, which weighs in favor of embedding others’ images in that jurisdiction. However, Instagram has clarified its stance requiring licenses, and the Southern District of New York has outright rejected the server test, so the server test may no longer be applicable. Given the disagreement, it will be crucial to monitor the most recent cases involving Newsweek and Buzzfeed, as either could be sent to the Second Circuit Court of Appeals.

A rejection of the server test could send shockwaves of doubt regarding the legal status of embedding across the country. However, the Internet has no geographic boundaries. Thus, it is imperative to consider where the copyright holder resides and which law may govern in both interstate and international copyright disputes. If you believe someone is improperly embedding your photograph on the Internet, or you have been accused of an alleged infringement, feel free to contact Lutzker & Lutzker for a deeper analysis.