Is The End Of Embedding In Sight?

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Embedding flourishes on the internet. Social media like YouTube, networking sites such as Twitter, streaming music services, including Spotify and search engines like Google, encourage embedding and offer tools that facilitate this practice. Even WordPress, the content management system I am using to create this post, has a tutorial on “embeds.” But are the internet sites that embed violating the display right in §106(5) of the Copyright Act?

Three well-reasoned opinions in the Southern District discussed below all say “yes.” Each rejected the server test established in Perfect 10, Inc. v., Inc., 508 F.3d 1146 (9th Cir. 2007). That test provides the display right is implicated only when the copyrighted work is stored on the same site that exhibits the work

Abstract cloud architecture platform with cloud in middle of concentric circles of various colors with blue lines ending with small circles radiating out from cloud against an indistinct blue background.

Before discussing these cases, here is some brief background on internet architecture. Embedding results when a web designer adds what the courts refer to as an embed code to a websites’ HTML instructions directing the user’s browser, when visiting a website, to retrieve a copyrighted work from a third-party’s server. The code tells the user’s browser how to cause the work, hosted on the third-party server or website, to appear on the visited website. In other words, that website does not copy the copyrighted work on its site but simply renders or displays it from the source’s website.

Embedding Infringes

Embedding is now of questionable legality in the Southern District of NY thanks to Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585 (S.D.N.Y. 2018), Nicklen v. Sinclair Broad. Grp., Inc., 2021 U.S. Dist. LEXIS 142768 (S.D.N.Y. 2021) and most recently, McGucken v. Newsweek LLC, 2022 U.S. Dist. LEXIS 50231 (S.D.N.Y. Mar. 21, 2022) (“McGucken II“). Each, resting on similar facts, held that embedding a work infringes it. In each case defendant added a retrieval codes to its website. When a visitor accessed defendant’s site the code triggered the display of an infringing image hosted elsewhere. The visitor played no volitional role in the rendering of the image on defendant’s site, neither asking for, looking for or clicking on the image. 302 F. Supp. 3d at 596, 2021 U.S. Dist. LEXIS 142768 at *6, 2022 U.S. Dist. LEXIS 50231 at *2.

The Server Test

In each case, defendants sought immunity under the “server test” adopted in Perfect 10 involving Google’s search engine. This test conditions display on possession. The test provides that a website “displays” a work within the meaning of §106(5) of the Copyright Act only if the site has copied the work and stores it on its server. Defendants in Breitbart and Nicklen argued embed immunity because their computers did not copy into memory the embedded images; instead, those images at all times remained on a third-party’s server. 302 F. Supp. 3d at 593, 2021 U.S. Dist. LEXIS 142768 at *12. Defendant in McGucken made a more colorful argument stating that an embed code was not a display but was “merely instructions on how to find the content, the same way it would not be a public display to provide someone with directions for how to see an artwork by Marc Chagall on display on the walls of the Metropolitan Museum of Art.” McGucken II, 2022 U.S. Dist. LEXIS 50231 at *12.

Defendants in Breitbart and Nicklen also asserted that the server test was central to the functioning of the internet and that a finding for plaintiff would either chill the “core functionality of the web,” or “grind[] the internet to a halt.” 302 F. Supp. 3d at 596, 2021 U.S. Dist. LEXIS 142768 at *15.    

Breitbart, Nicklen and McGucken II Find The Server Test Inapplicable

All three cases rejected the server test. Each case held that nothing in the Copyright Act, its legislative history or Supreme Court jurisprudence conditioned “display” on physical location or possession of a copyrighted work. 302 F. Supp. 3d at 593, 2021 U.S. Dist. LEXIS 142768 at *13, 2022 U.S. Dist. LEXIS 50231 at *13-14.

In reaching this conclusion, these cases stressed the wide sweep of the display right.  Each cited to § 101 of the Copyright Act, which states that to display a work means to “show a copy of it, either directly or by means of a film, slide, television image, or any other device or process.” Each case noted that a device or process is further defined in § 101 as “one now known or later developed.” 302 F. Supp. 3d at 588-89, 2021 U.S. Dist. LEXIS 142768 at *9, 2022 U.S. Dist. LEXIS 50231 at *14.

Two screens facing the viewer each containing a rainbow-like display of red, orange and blue colors framed against a black background with the floor a light red.
Photo by Arno Senoner on Unsplash

Brietbart and Nicklen also observed that Congress intended the display right to encompass new technologies. Id. All three cases relied on the House Report at H.R. Rep. 94-1476 (1976), which provides that the concept of “display” includes “the projection of an image on a screen or other surface by any method.” Id. at 64. Nicklen cogently added what matters is “not with how a work is shown, but that a work is shown.” 2021 U.S. Dist. LEXIS 142768 at *11 (emphasis in original). McGucken II, quoting Nicklen, stated “[b]ut ‘it cannot be that the Copyright Act grants authors an exclusive right to display their work publicly only if that public is not online.'” 2022 U.S. Dist. LEXIS 50231 at *15.

Liability Should Not Depend on Imperceptible, Technical Distinctions

Brietbart and Nicklen were also influenced by Supreme Court’s rejection in Am. Broad. Cos. v. Aereo, Inc., 573 U.S. 431 (2014), of infringement liability based on “technical distinctions.” 302 F. Supp. 3d at 94, 2021 U.S. Dist. LEXIS 142768 at *13-14.

Aereo stressed that copyright liability should not depend on behind the scenes processes “invisible” to the viewer. 573 U.S. at 444. Brietbart and Nicklen applied similar logic reasoning that, when a copyright owner polices a website, she often does not know nor care whether the site has stored an infringing copy in its memory. 302 F. Supp. 3d at 594, 2021 U.S. Dist. LEXIS 142768 at *13.

The Display Right Is Not an Appendage of the Reproduction Right

The three cases also criticized Perfect 10 for “collapse[ing] the display right” in §106(5) into the reproduction right in §106(1) or for making the display right “a subset of the reproduction right.” 302 F. Supp. 3d at 595, 2021 U.S. Dist. LEXIS 142768 at *13, 2022 U.S. Dist. LEXIS 50231 at *14. As Brietbart noted, Perfect 10 impermissibly required a work be “possess[ed]” as “a prerequisite to displaying it,” even though the Copyright Act does not make fixation in a tangible medium a condition precedent to the display right. 302 F. Supp. 3d at, 592, 595.

Perfect 10 Never Applied the Server Test to Embedded Images

Brietbart and Nicklen further distinguished Perfect 10 because that case dealt with images that were either stored on Google’s servers or appeared through a process called in-line linking, not embedding. 302 F. Supp. 3d at 590, 2021 U.S. Dist. LEXIS 142768 at *14. In fact, the word “embed” appears nowhere in Perfect 10.

In Perfect 10 Google’s search engine used plaintiff’s images in two ways. First, the search engine stored on its servers images from third party sites. Those sites had uploaded the images without authorization. But Google only showed those images as thumbnails that were of poor quality and were displayed merely for search purposes.  Second, Google provided links to the third-party sites, where full and higher quality of the infringing images were displayed and appeared on Google’s search results pages through in-line linking. 508 F.3d at 1155-56.

In-line linking is different from embedding; and that difference needs explanation to better understand the result in Perfect 10. An in-line link, like an embed code, is a series of HTML instructions providing the website address of the third-party site where content is hosted. When a user visits a website containing an in-line link and clicks on it, the HTML instructions directs the user’s browser to access the third-party site and display on the visited site the linked content stored on the third-party site.

Circular window looking out at a cityscape framed against a black rectangular background.
Photo by Marten Bjork on Unsplash

As a result, the visited site acts as a digital window that opens directly onto the linked content remaining on the third-party site, although the user does not realize the content at all times remains on the third-party site. See Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 842 (C.D. Cal. 2006).

In contrast, an embedded image hosted on a third-party site renders 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 transport or deliver that image to the first site. 302 F. Supp. 3d at 587.

Thus, Perfect 10 never applied the server test to embedded images, as some have argued. See defendants’ memo in Breitbart dated July 13, 2017, in support of motion to dismiss the second amended complaint at p. 17, “[t]he Perfect 10 case involved both embedded content and content that resided on the defendant’s server.”

Two District Courts Find Instagram’s Terms of Service Did Not Shield Its Users From Liability for Embedding Content 

McGucken and a similar case, Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020), reconsidered, 2020 U.S. Dist. LEXIS 110627 (S.D.N.Y. June 24, 2020), also rejected another argument defendants raised to avoid embedding liability, that plaintiffs, by agreeing to Instagram’s terms of service, had authorized Instagram to give defendants a sublicense to embed.

Defendant Initially Successful in Sinclair

In Sinclair, the district court at first agreed with defendant, finding no infringement of the display right. Judge Wood then dismissed the complaint with prejudice. 454 F. Supp. 3d at 344-45.

McGucken Finds No Sublicense

But a short time later in McGucken, 464 F. Supp. 3d 594 (S.D.N.Y. 2020) (“McGucken I”), the court reached the opposite result. Even though plaintiff had consented to Instagram’s terms of service, the court found no evidence that Instagram had expressly granted a sublicense by those terms nor any “evidence of a possible implied sublicense.” Id. at 603. As a result, the court denied defendant’s motion to dismiss.

Instagram Announces Its Terms Do Not Authorize Users to Sublicense Posted Content

Shortly after McGucken I was decided, Ars Technica reported that Facebook (which owns Instagram) announced that Instagram had not and would not be granting sublicenses for its “embeds”:

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.

Sinclair Joined McGucken I in Finding Defendant Had No Sublicense to Embed Content

Plaintiff in Sinclair, in response to McGucken I and Facebook’s announcement, asked Judge Wood to reconsider and reinstate the complaint in Sinclair.

Motions for reconsideration are routinely denied. But not here. Judge Wood in a revised opinion, adhered to the “previous holding that plaintiff, by agreeing to Instagram’s Terms of Use, authorized Instagram to grant … users, such as Mashable [the defendant] a sublicense to embed plaintiff’s photos posted on Instagram.” 2020 U.S. Dist. LEXIS 110627 *2. But the court, echoing McGucken I, found “that the pleadings contain insufficient evidence that Instagram exercised its right to grant a sublicense to Mashable.” Id. at 2-3. Judge Wood added that her earlier opinion had not “give[n] full force to the requirement that a license must convey the licensor’s ‘explicit consent’ to use a copyrighted work.” Id. at 3.

Some Thoughts Going Forward

Most media follow and respect copyright law. But here none of the sites that have encouraged and permitted embedding for years have stopped doing so, although Instagram has now made it easier for those whose accounts are public to disable embedding. Further, the district courts in the Ninth Circuit, because they must, continue to apply Perfect 10 to sanction embedding. For example, Hunley v. Instagram, LLC twice rejected a putative class action seeking to tar Instagram for facilitating embedding. See 2021 U.S. Dist. LEXIS 177667 (N.D. Cal. Sep. 17, 2021), dismissed by 2022 U.S. Dist. LEXIS 18036 (N.D. Cal. Feb. 1, 2022).

In the litigation about embedding that is likely to follow, copyright holders have the stronger argument. The broad scope of the display right, outlawing a transmission to the public of copyrighted content by “any device or process” “now known or later developed” clearly extends to embedding. Further, nothing in the Copyright Act conditions display on possession. Moreover, those in the media who assert the internet will lose its functionality without embedding are making “the sky is falling” argument. It’s unlikely the internet will cease to operate if those who post others’ works obey the copyright laws. Further, the advocates for embedding are asserting a form of internet exceptionalism that strict liability dooms. Stay tuned and social media beware.

My thanks to my colleague David Leichtman for his most helpful contributions to this post. Comments welcome to