The Nascent Showdown Between the Ninth Circuit's Server Test and Its Detractors
| Publication year | 2021 |
| Author | David A. Sergenian |
David A. Sergenian
Sergenian Law
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In 2007, the Ninth Circuit addressed a novel issue: whether a defendant website violates a copyright holder's exclusive right to display a copyrighted work by "in-line linking" to an image that resides on another entity's website. The Ninth Circuit answered in the negative, holding that although in-line linking may give the copyright holder a claim for contributory infringement, the text of the Copyright Act does not support a claim for direct infringement under such a set of facts because the infringing image is not found on the computers of the website that in-line links to the image on another entity's website.1 The Ninth Circuit referred to its analysis as the "server test," and it went largely unchallenged for a decade.
However, beginning in 2017, a district court in the Northern District of Texas,2 and subsequently several courts3 in the Southern District of New York, have explicitly rejected the Ninth Circuit's server test, finding that it is inconsistent with the text of the Copyright Act and the intent of Congress as evidenced by legislative history. Currently, the Ninth Circuit is the only circuit court that has ruled on the issue. However, the approach adopted by the Ninth Circuit is diametrically opposed to the approach adopted by district courts that have rejected the server test, and the conflict appears to be setting up, however slowly, a circuit split that may ultimately be decided by the Supreme Court.
In Perfect 10 v. Google, Inc. ("Perfect 10 I"), Perfect 10, Inc. sued Google, Inc. and Amazon.com, Inc. and its subsidiary, A9.com, Inc., for copyright infringement.4 Perfect 10 was the owner of copyrights in nude photographs, which it displayed on its website to its subscribers.5 Google's search engine indexed websites on the Internet via a "crawler," i.e., software that automatically scans and stores the content of each website into an easily searchable catalog.6 A Google Image search provided users with textual results, as well as thumbnail images.7 If a user clicked on a thumbnail, the browser would open a window on the screen that displayed the underlying Web page in a process called "framing."8 Accordingly, when a user clicked on a thumbnail that had been returned as the result of a Google Image Search, the user was presented with a page comprised of two distinct frames: one hosted by Google, and a second hosted by the underlying website that originally hosted the full-size image.9
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The upper frame displayed information about the image, including the original resolution of the image and the specific URL associated with that image.10 The upper frame also stated that the thumbnail "may be scaled down and subject to copyright" and made clear that the upper frame is not the original context in which the full-size image was found, stating: "below is the image in its original context on the page: http://[
Perfect 10 sued Google, asserting various copyright and other claims, and moved for a preliminary injunction against Google.14 Perfect 10 argued, in part, that Google was directly liable for copyright infringement because Google's image search engine directly infringes by copying, distributing, and displaying thumbnails and full-size images of Perfect 10's copyrighted photographs.15
In its order on Perfect 10's request for a preliminary injunction against Google, the district court framed the issue as follows: "[D]oes a search engine infringe copyrighted images when it displays them on an 'image search' function in the form of 'thumbnails' but not infringe when, through inline linking, it displays copyrighted images served by another website?"16 Perfect 10 had argued that Google directly infringed Perfect 10's copyrights by displaying full-size images hosted by third-party websites.17 Google had argued that what is depicted in the lower frame of its image searches was not a "display" as that term is used in 17 U.S.C. § 106.18 The district court sided with Google.
The district court found that the full-size images displayed on Google's image search results pages were the result of a process called "in-line linking," and although it may appear to the user that the images resided on Google's website, the issue was more complicated. "In-line linking" refers to the process whereby a webpage can incorporate by reference content stored on another website.19 When a website in-line links to a third-party website, although it may appear that the image resides on the linking website, that is not the case. As the court explained, the following steps occur unbeknownst to the website user: (1) the browser downloads the linking website's webpage; (2) the browser parses through the various HTML commands of that webpage; (3) the linking website may display text accompanying the image; (4) HTML code from the linking website directs the browser to follow an in-line link to the image stored on the third-party website; (5) the browser downloads the image to the user's computer directly from the third-party website; and (6) the browser displays the image in the browser.20 Accordingly, although it appears to the user that the image is on the linking website's webpage, and the user may assume (mistakenly) that the image is stored and "served" by the linking website, in reality the image was transferred directly from the third-party website, even if the browser displays only the URL of the linking website.21
The district court observed that there are at least two approaches to defining "display" in the context of in-line linking: (1) a "server" test (urged by Google), and (2) an "incorporation" test (urged by Perfect 10).22 Pursuant to the server test, "displaying" is "the act of serving content over the web—i.e., physically sending ones and zeroes over the internet to the user's browser."23 Under the server test, the entity that risks liability for direct infringement is the entity that originally displays copyrighted work without a license.24 Pursuant to the incorporation test, "displaying" is "the mere act of incorporating content into a webpage that is then pulled up by the browser[.]"25 Under the incorporation test, an entity that in-line links to a copyrighted image being displayed by another website without authorization would also risk liability for direct infringement even if that website disclosed the identity of the actual server of the image.26
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The district court concluded that in determining whether Google's lower frames are a "display" of infringing material, "the most appropriate test is also the most straightforward: the website on which content is stored and by which it is served directly to a user, not the website that in-line links to it, is the website that 'displays' the content."27 Accordingly, the court adopted the server test.28
This conclusion was based on five rationales:
- Users who are viewing the full-size image in the lower frame of Google's image search were not viewing images that Google had stored or served; rather, the user's computers were engaging in a direct connection with third-party websites, which are responsible for transferring content.
- Adopting the server test would not invite search engines to infringe copyrights because the search engines may still be liable for indirect copyright infringement.29
- Adopting the server test would be readily understandable by website operators and courts (although the district court acknowledged that the incorporation test was also relatively easy).30
- The initial direct infringers were the websites that displayed Perfect 10's images on their websites.31
- "[T]he server test maintains, however uneasily, the delicate balance for which copyright law strives—i.e., between encouraging the creation of creative works and encouraging the dissemination of information. Merely to index the web so that users can more readily find the information they seek should not constitute direct infringement, but to host and serve infringing content may directly violate the rights of copyright holders."32
The district court did not address any of the Copyright Act's legislative history.
Applying the server test, the district court concluded that for purposes of direct copyright infringement, Google's use of frames and in-line links did not constitute a "display" of the full-size images stored on and served by infringing third-party websites, and therefore, with respect to Google's "framing" of Perfect 10's images, Perfect 10's claim of direct infringement against Google would likely fail.33
The case was appealed to the Ninth Circuit, which issued an opinion in Perfect 10, Inc. v. Amazon. com, Inc. ("Perfect II"). The Ninth Circuit's opinion in Perfect 10 II considered, among other issues, whether Perfect 10 was likely to prevail on its direct infringement claim against Google.34 Addressing Perfect 10's display right under 17 U.S.C. § 106(5), the Ninth Circuit adopted the "server test" applied by the district court.35 The Ninth Circuit relied on the text of the Copyright Act, especially the requirement that a "copy" be "fixed in a tangible medium" and Ninth Circuit precedent holding that "a computer makes a 'copy' of a software program when it transfers the program from a third party's computer (or other storage device) into its own memory, because the copy of the program recorded in the computer is 'fixed' in a manner that is 'sufficiently...
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