U.S. Court of Appeals for Ninth Circuit Rejects Claims of Copyright Infringement Against Instagram’s Embed Code

U.S. Court of Appeals for Ninth Circuit Rejects Claims of Copyright Infringement Against Instagram’s Embed Code

The U.S. Court of Appeals for the Ninth Circuit has handed Instagram a win in the latest round of a legal battle over embedded imagery.

In its ruling, the Federal Appeals Court held that the ‘Server Test’ - which came from the Ninth Circuit in the Perfect 10, Inc. vs. Amazon.com, Inc., (2007) case 7 and essentially stands for the proposition that a website does not legally ‘display’ a copyrighted image if that website does not communicate the work to viewers from a copy of that image stored on its own servers - shields the Meta-owned photo and video-sharing app from copyright infringement liability for images that are shared with its embedding API.

The brief background of the case is that Photographers Alexis Hunley and Scott Brauer first filed suit against Instagram in May 2021, accusing the app to be engaged in ‘scheme to generate substantial revenue for its parent, Facebook, Inc.’ – now Meta Platforms, by encouraging ‘third party online publishers’ to use the embed tool to display copyrighted works without the necessary license or permission from the copyright owners.

In the process, it was argued in the complaint that Instagram misled the public into believing that anyone is free to get on Instagram and embed copyrighted works from any Instagram account, like eating for free at a buffet table of photos.

Two non-parties, namely, BuzzFeed and Time had embedded the plaintiffs’ photographs on their websites to accompany news articles. Although the plaintiffs did not sue these entities, the plaintiffs claimed that those entities had infringed their copyrights.

Against such background, Hunley and Brauer asserted that Instagram should be held secondarily liable for copyright infringement.

In a decision in September 2021, Judge Charles Breyer of the U.S. District Court for the Northern District of California granted Instagram’s motion to dismiss, holding that it was not liable for copyright infringement because its embedding tool does not require a website publisher to store a copy of an image or video, thereby, upholding the Ninth Circuit’s server rule.

The District Court’s ruling prompted Hunley and Brauer to appeal to the Ninth Circuit.

Among other things, Hunley and co. claimed that the Court erred in its overly broad application of the ‘server test,’ as no Court has expanded the server test to apply to embedding technology from Instagram to third-party publisher sites.

The Ninth Circuit panel began examining the case by setting forth the lengthy computer code that allows for the incorporation of content from Instagram (including images and accompanying captions) seamlessly into articles.

The Court noted that by using this code, the embedding website appears to the user to have included the copyrighted material in its content, when the copyrighted content is actually hosted by Instagram.

The Court explained this key fact by observing that, “The embedding website appears to the user to have included the copyrighted material in its content. In reality, the embedding website has directed the reader’s browser to retrieve the public Instagram account and juxtapose it on the embedding website.”

The Court next noted that under the Copyright Act, to ‘display’ a work means to show a copy of it. Due to the fact that the plaintiffs’ works were never fixed in the memory of the third-party servers, BuzzFeed and Time were not primary infringers.

The Court concluded that Perfect 10’s server test is neither confined to particular types of sites such as search engines nor inconsistent with the Copyright Act or American Broad. Co. vs. Aereo, (2014), in which the Supreme Court rejected a technological work-around Aereo had designed to appear to avoid the need for to obtain licenses to retransmit content.

Notably, while distinguishing Aereo case (supra), the Ninth Circuit highlighted that the display right under Section 106(5) requires a tangible copy of a work to be shown.

In contrast, the public performance right at issue in Aereo as per Section 106(4) only involved performance of a work.

Based on this conclusion, a party that retransmits audiovisual or other performable works may not be able to rely on the server test to avoid liability, stated the bench.

The panel also referenced volitional conduct, amplifying that the third-party embedders or the alleged ‘direct infringers,’ could not be held liable for direct infringement, as they only passively provided access to content, rather than engaging in actual copying or displaying.

As such, Instagram could not be secondarily liable for such conduct without direct infringement.

The opinion, written by Judge Jay Bybee, further stated that “because BuzzFeed and Time embedded – but did not store – the underlying copyrighted photographs, they are not guilty of direct infringement. Without direct infringement, Hunley cannot prevail on any theory of secondary liability.”

The panel likewise rejected the concept that liability should arise because it may appear to the reader like embedded images are new copies (even though the ‘embedded’ version of the Instagram content contains accompanying captions and indicia of Instagram as the source of such content), pointing to the fixation requirement in the Copyright Act, not a ‘perceptibility requirement.’

Therefore, the Ninth Circuit while ruling in favor of Instagram affirmed that by posting photographs to her public Instagram profile, Hunley stored a copy of those images on Instagram’s servers. By displaying Hunley’s images, Instagram did not directly infringe Hunley’s exclusive display right because Instagram had a non-exclusive sublicense to display these photos.

As such, the Ninth Circuit panel found no error in the judgment of the District Court.