Advances in digital technology often require courts to answer questions the Copyright Act never contemplated. “Embedding” (sometimes also referred to as “framing”) is such an advance. They allow the sharing of information on the internet and embedding has become standard practice online. Social media websites like YouTube, networking sites like Twitter, streaming music services such as Spotify and search engines including Google encourage embedding and offer tools that facilitate this practice. But despite the widespread use of embedding an unresolved issue remains. Does one violate the display right in §106(5) of the Copyright Act by embedding on one’s site an image hosted on a third-party server?
Overview of Embedding
Before turning to that issue, here is a brief overview for those unfamiliar with embedding. An “embedded” image is one that “hyperlink[s] . . . to [a] third-party website” where the image is hosted. “To embed an image, [a] coder or web designer . . . add[s] an ’embed code’ to the HTML instructions [on a webpage],” Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 587 (S.D.N.Y. 2018). “When an individual visits a website that includes an ‘embed code,’ the user’s internet browser is directed [by the HTML instructions on the website] to retrieve the embedded content from the third-party server and display it on the website. 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,” Sinclair v. Ziff Davis, LLC, 2020 U.S.P.Q.2d 10336 (S.D.N.Y. 2020).
The Display Right in the Copyright Act
In analyzing whether embedding violates the display right, one looks first at the definition of that right in §106(5) of the Copyright Act. It is broadly defined. Section 101 of the Copyright Act extends the display right to include showing a “copy” of the work “by means of … any device or process.” Further, that section provides to “transmit … a display is to communicate it by any device or process whereby images … are received beyond the place from which they are sent.” “Any device or process” would seem to mean what it says.
The Server Test & Perfect 10
Despite this broad language, courts, content owners have argued that Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), holds that embedding does not violate the display right. But as now explained, reliance on is misplaced. It did adopt the “server test,” which makes actual possession of a copy hosted on defendant’s server a prerequisite to violating the display right. But Perfect 10 only applied that test when search engines in-line link to content hosted elsewhere. Contrary to arguments others have made, Perfect 10 never finally reached the issue whether framing or embedding violated the display right. Instead, Perfect 10 merely held that, in the unique circumstances of that case, because the framed images were “thumbnails” used for search purposes, the thumbnails were “fair use,” Id. at 1168. Here are the details.
In Perfect 10, Google’s search engine used plaintiff’s images in two ways. First, Google embedded or framed the images from third party sites where unauthorized copies had been uploaded and were hosted. But Google only showed those images as poor quality thumbnails and framed them merely for the purposes of search. Second, Google provided in-line links to the third-party sites, where full and higher quality of the infringing images were displayed.
Difference Between Embedding and In-Line Linking
In-line linking is not the same as embedding; and an explanation of that difference will help to understand the result in Perfect 10. In-line linking is a “process by which the webpage directs a user’s browser to incorporate content from different computers into a single window,” Id. at 1156. An in-line link is a series of HTML instructions (sometimes confusingly referred to as “an embed code”) that provides the website address of the third-party site where the content is hosted. Assume a user visits a website (which I will refer to as the first site) that contains such a link and clicks on it. At that point, the user’s browser directed by the HTML instructions, accesses the third-party site and displays in the browser window of the first site the linked content on the third-party site. As a result, the linked content comes directly from the third-party site and is not copied onto the first site’s server, although the user would not realize that the content actually resides on the third-party site. See Perfect 10, supra, 416 F. Supp. 2d at 842. Accordingly, in-line linking allows the user to simultaneously view content on the first site and the linked content on the third-party site, without ever leaving the first site.
In contrast, with embedding, when the user’s browser accesses the first site, the embedding image hosted on a third-party site appears on the first site without the need to make the extra click. Further, with embedding, the user never leaves the first site to view the embedded image even though that image is stored on the third-party site. Instead, the HTML instructions (again confusingly referred to as the embed code) transport that image to the first site.
And now with this distinction in mind, let’s turn back to Perfect 10.
The District Court’s Decision
Plaintiff claimed that Google’s framing and linking each infringed the display right. Plaintiff asserted that Google directly infringed by displaying copies of the thumbnail versions of the photos on its site in response to search requests and Google directly, vicariously and contribution infringed by providing links to the third-party sites where the full images were located.
On a motion for a preliminary injunction, the District Court agreed that Google’s framing of the thumbnails infringed the display and distribution rights, 416 F. Supp. 2d at 851. The District Court, applying the server test also found that Google’s in-line linking did not infringe the display right because the linked images were “stored” and “served” to users “directly” from third-party websites, Id. at 843. The District Court granted a partial preliminary injunction that prevented the use only of the framing of the thumbnails, Id. at 859.
The Ninth Circuit’s Decision
The Ninth Circuit reversed the injunction. It agreed plaintiff had made “a prima facie case” that the thumbnails infringed the display right, 508 F.3d at 1160. But, the circuit court found that, because the “thumbnails” were of such poor quality and were used by Google solely for “search” purposes, Google was likely to prove at trial the thumbnails were a likely a “transformative” fair use, enabling Google to continue using them pending trial, Id. at 1165-68. Because the case was never tried, a final fair use determination was not made.
The Ninth Circuit further affirmed the District Court’s application of the “server test” to the in-line linking by Google to the third-party sites where the full-size, infringing images were hosted. Because those links (or embed codes) simply directed a visitor’s browser where and how to retrieve the fuller copies of the images stored on others’ servers, the links were insufficient to create a copy in violation of either the display or distribution rights, Id. at 1160-61. Instead, in the Ninth Circuit’s view, a “copy” of a digital image can only be created when it is “embodied (i.e., stored) in a computer’s server,” Id. As a result, there was no “copy” of the images on Google’s servers, so it could not infringe the distribution right; and there was no “display” on Google’s servers because the full-size images were not hosted on or served from Google’s own site, Id.
Thus, Perfect 10 did conclusively apply the server test, but only to linked, not embedded content. The thumbnail issue, involving embedding, was found to be fair use.
In any event, the server test in the Ninth Circuit has had little traction outside the search engine context. Free Speech Sys., LLC v. Menzel, 390 F. Supp. 3d 1162, 1172 (N.D. Cal. 2019), recently noted the alleged infringer in that litigation was unable to cite to “any case within the Ninth Circuit applying the server test outside of the search engine context.”
District Courts Elsewhere Rejected the Server Test
Further, at least three district court cases have refused to apply the server test to embedded or framed content. See The Leader’s Inst., LLC v. Jackson, 14-CV-3572-B, 2017 Bloomberg Law 420273 (N.D. Tex. Nov. 22, 2017) (“The text of the Copyright Act does not make actual possession of a copy of a work a prerequisite for infringement.”); Flava Works, Inc. v. Gunter, 10-CV-6517(N.D. Ill. Sept. 01, 2011), (“In our view, a website’s servers need not actually store a copy of a work in order to ‘display’ it.”), rev’d on other grounds, 689 F.3d 754 (7th Cir. 2012) and Breitbart, supra. Instead, each found a violation of the display right arising from framed or embedded content.
Breitbart is representative. At issue was an image of Tom Brady created by plaintiff Justin Goldman. After Goldman posted the image on Snapchat, third parties, without authority from plaintiff, uploaded the image to Twitter. Defendants then embedded the image’s Twitter HTML retrieval code on their news sites, along with a story about Brady and also framed the image on their sites.
Defendants invoked the server test in response to plaintiff’s alleged violation of the display right,. Defendants asserted that test properly places liability on the entity hosting the image because that entity is best positioned to know whether the content is lawful, has the strongest incentive to take it down and has the ability to do so. Defendants also argued that the server test was central to the functioning of the internet. They asserted a finding for plaintiff would chill the “core functionality of the web,” 302 F. Supp. 3d at 596.
District Court Finds Embedding Violates the Display Right
But Judge Katherine B. Forrest (now retired) was not persuaded, Id. at 593. The court, taking a swipe at Perfect 10, stated that nothing in the Copyright Act or its legislative history provides a web site needs to host an image to display it. Instead, the court noted that display under the Act was “drafted with the intent to sweep broadly” and encompasses the transmission of the image to the public “‘by means of any device or process.’ 17 USC § 101” (emphasis in original). The court further stated that “[d]evices and processes are further defined to mean ones ‘now known or later developed,’ Id.”
The court added that defendants “took active steps” to display the image by including the retrieval code and displaying the actual image on their sites, Id. at 594. The court further observed that Perfect 10 had, in any event, impermissibly required defendants to copy the work as a prerequisite to displaying it, even though fixation in a tangible medium is not a condition precedent to the exercise of the display right, Id. at 595. In other words, in Breitbart’s view, the Copyright Act does not condition display on possession.
The result in Breitbart was also influenced by the Supreme Court’s decision in Am. Broad. Cos. v. Aereo, Inc., 573 U.S. 431 (2014). Judge Forrest observed that the Supreme Court “eschewed the notion that Aereo should be absolved of liability based upon purely technical distinctions,” 302 F. Supp. 3d at 595. Breitbart also noted that “while [Aereo was] not directly on point,” that case “strongly support[ed] plaintiff’s argument that liability should not hinge on invisible, technical processes imperceptible to the viewer,” Id.
No Second Circuit Review in Breitbart
The district court, in response to defendants’ argument that Breitbart created “tremendous uncertainty for online publishers,” certified its decision for an interlocutory appeal to the Second Circuit. But the appellate court found immediate review “unwarranted,” apparently because of the absence of exceptional circumstances justifying review. In late May 2019, plaintiff settled with the remaining defendants.
After Breitbart was decided, there were familiar cries the internet was doomed. See, e.g., https://abovethelaw.com/2018/02/federal-judge-ruined-the-internet-yesterday/ https://blog.ericgoldman.org/archives/2018/02/in-line-linking-may-be-copyright-infringement-goldman-v-breitbart-news.htm. But to no one’s surprise the internet is very much alive.
Two District Courts Find Instagram Embeds Violate the Display right
With the issue whether embedding content hosted on third party servers violates the display right substantially uncertain, at least in the Southern District of New York (where Breitbart was decided), those seeking to avoid liability for embedding shifted gears. In two cases involving content embedded from Instagram, defendants sought to avoid liability by arguing Instagram’s Terms of Service granted them sublicenses to embed. As now explained, these efforts ultimately failed.
Defendant Initially Successful in Sinclair
Defendant’s reliance on Instagram’s Terms of Service was initially successful in Sinclair v. Ziff Davis, LLC, supra, 2020 U.S.P.Q.2d 10336. There, after plaintiff refused to grant Mashable a license to her photo that plaintiff had posted on Instagram, Mashable retrieved the photo from Instagram and embedded it on Mashable’s website using Instagram’s application program interface (“API”).
Judge Kimba Wood found no infringement of the display right. She stated that Instagram’s Terms of Service granted Instagram a license to the posted photos. The court further found that the Terms of Service authorized Instagram to sublicense the photos to defendant Mashable and that Instagram had done so.
McGucken Finds No Sublicense
The identical issue on nearly identical facts arose shortly thereafter in McGucken v. Newsweek LLC, 19 Civ. 9617, 2020 BL 203594 (S.D.N.Y. June 01, 2020), but with a different result. There, after plaintiff declined to license a photo to Newsweek plaintiff had uploaded to Instagram, Newsweek embedded it on its site, using Instagram’s API. Defendant, echoing Mashable’s seemingly successful argument in Sinclair, supra, argued that Instagram had the right to sublicense to Newsweek plaintiff’s posted photo and had done so.
Judge Katherine Failla found otherwise. The district court agreed with Sinclair that McGucken, through Instagram’s Terms of Service, had granted Instagram a license to the photo at issue. But Judge Failla, parting company with Sinclair, found no evidence that Instagram had expressly given Newsweek a sublicense nor any “evidence of a possible implied sublicense.”
Instagram Announces No Sublicenses for Content Others Embed From Its Site
While our terms allow us to grant a sub-license, we do not grant one for our embeds API. Our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content, if a license is required by law.
Plaintiff Sinclair, bolstered by the result in McGucken, and by Facebook’s announcement that Instagram’s users would not be receiving a sublicense to embed, asked Judge Wood to reconsider and reverse her dismissal of the complaint in Sinclair.
Thus, the legal landscape has become more perilous for those embedding content at least from Instagram.
Some Thoughts Going Forward
Embedders are fighting an uphill battle. The sweep of the display right, outlawing a transmission to the public of copyrighted content by “any device or process” “now known or later developed” seems to clearly extend to embedding. Further, I agree with Professor Goldstein that defendants in Breitbart were arguing a form of “Internet exceptionalism,” that, despite the strict liability imposed by the Copyright Act, embedders should get a free pass because of the benefits and ubiquity of embedding. See Goldstein, Goldstein on Copyright § 7.10 at 7:270.2 (2018-2 Supplement).
Yet at the same time, embedding has flourished on the internet. If social media, streaming services, networking sites and search engines require rightsholders to grant a broad and express license and right to sublicense (easily obtained for a fair license fee if permission is obtained in advance), embedding may continue. Stay tuned.
My thanks to my colleague David Leichtman for invaluable contributions to this (long) post. Comments welcome to email@example.com
 See British Telecomms. PLC v. Prodigy Commc’ns Corp., 217 F. Supp. 2d 399, 406-07 (S.D.N.Y. 2002) (“HTML is the language in which Web pages are formatted. This language is a kind of publishing mother tongue that all computers may potentially understand.”).
 Framing is a process that combines multiple pages in a single website window enabling different content to be viewed simultaneously. One `frame’ may be used to annotate or comment on the content in the other frame, Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 833 (C.D. Cal. 2006).