When ‘Visibility’ on the Internet Does Not Implicate the ‘Display’ Right

Courts are split on whether it is copyright infringement to link to or “embed” a post from a social media site intended for sharing posts, when the post (and all of its content) remains on the original server. Does the location of the server matter? Does a new copyright claim accrue anew each day an image is visible on the internet?

Today’s technology has challenged courts to distinguish the display right under the U.S. Copyright Act, 17 U.S.C. §106(5), which includes the right “to display the copyrighted work publicly.” The plaintiffs’ copyright bar would have this “right” activated by “visibility” on the internet. But copyright infringement is not always found just because an unauthorized use is “visible” on the internet, nor does the statute of limitations run anew each day a work is visible. In other words, “display” does not mean “visibility.”

The following paragraphs review analogous concepts in copyright law that address digital visibility. For instance, courts are split on whether it is copyright infringement to link to and/or “embed” a post from a social media site intended for sharing posts when the post (and all of its content) remains on the server where the poster put the content. It is visible but stored elsewhere. Similarly, the location of a server is the critical factor where an alleged infringement is visible in the United States but caused to be visible from outside the United States. Finally, courts have held that copyright claims do not accrue anew each day an image is visible on the internet.

When Server Location, Not Visibility, Is Key – The Server Test
In Perfect 10 v. Amazon.com, 508 F.3d 1146, 1161 (9th Cir. 2007), the Ninth Circuit codified into law the “Server Test.” Under the Server Test, when an unauthorized image is visible by way of viewing a particular website, if the image is not stored on that website’s server, there is no copyright infringement. An example of how this can occur is by way of “embedding.” Embedding, which is made available by certain social media applications, like lnstagram, is when a party links to another’s social media post, which viewers can then view on that party’s website-but the post itself remains on the lnstagram server. As the Northern District of California explained, summarizing the Ninth Circuit’s decision in Perfect 10.

[A)n image [or video) is a work that is ”fixed” in a tangible medium of expression, for purposes of the Copyright Act, when embodied (i.e., stored) in a computer’s server (or hard disk, or other storage device). If a website publisher does not “store” an image or video in the relevant sense, the website publisher does not ‘communicate a copy’ of the image or video and thus does not violate the copyright owner’s exclusive display right.

Hunley v. lnstagram, 2021 WL 4243385, at *1 (N.D. Cal. 2021 ). In Hunley, the court applied the Server Test adopted by the Ninth Circuit and dismissed the complaint.

On this side of the country, the Second Circuit has not decided whether the Server Test thwarts copyright infringement complaints regarding embedding. Some district courts within the Second Circuit have disagreed with the Ninth Circuit. For instance, in McGucken v. Newsweek, 2022 WL 836786, at *5–6 (S.D.N.Y. 2022), the court denied defendant summary judgment, declining to accept the argument that there is no infringement where the image remains stored on lnstagram’s server, and holding that embedding violates the display right. See also Nick/en v. Sinclair Broadcast Group, 551 F.Supp.3d 188 (S.D.N.Y. 2021) (same).

But even New York courts determining related copyright issues have held that the location of a server is what is critical, not visibility. This includes cases analyzing the doctrine known as the non-extraterritoriality of the U.S. Copyright Act.

It Is Still About the Location of a Server
The U.S. Copyright Act is not extra-territorial; hence, it is well established that the U.S. Copyright Act does not apply to infringements that occur outside of the U.S. Craig v. UMG Recordings, 380 F.Supp.3d 324, 331 (S.D.N.Y. 2019); see also Update Art v. Modiin Publishing, 843 F.2d 67, 73 (2d Cir.1988); Robert Stigwood Grp. v. O’Reilly, 530 F.2d 1096, 1101 (2d Cir.), cert. denied, 429 U.S. 848 (1976); see also, EEOC v. Arabian Am. Oil Co., 499 U.S. 244, 248 (1991) (“[l)t is a long-standing principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the tenritorial jurisdiction of the United States.”).

This doctrine is most easily understood where the internet is not involved, e.g., company x, an Australia-based company, uses a New York photographer’s image in a book that company x distributes throughout South Africa. Since the alleged infringement occurred outside of the U.S., the New York photographer cannot file a lawsuit in the United States under the U.S. Copyright Act. But it has been applied to the internet, and for those claims, the location of the server is critical. That is because for a company to be liable under the U.S. Copyright Act for copyright infringement that occurred outside the United States, it must have committed a predicate act within the United States. See Craig, 380 F.Supp. 3d at 331.

Importantly, the fact that a U.S. citizen can view a foreign infringement on the internet does not, on its own, cause a foreign infringement to be subject to United States copyright law. In fact, courts have expressly held that there must be a “plus” factor beyond the mere accessibility of the copyrighted work on the internet. State St. Global Advisors Trust Co. v. Visbal, 431 F.Supp. 3d 322, 340 (S.D.N.Y. 2020). In State St. Global, the court explained that “plus” factors include (1) the direction of copyrighted material into the United States; (2) when foreign “acts are intended to, and do, have an effect within the United States”; and (3) the uploading of copyrighted materials to servers located in the United States. See also, Perfect 10 v. Yandex N.V., 962 F.Supp. 2d 1146, 1153 (N.D. Cal. 2013), as amended (Sept. 6, 2013) (hosting of images on servers in Russia does not constitute copyright infringement in the United States, and expressly rejecting the claim that when images are hosted on servers localed in Russia, it violates the “exclusive display right” because users in the United States could download them); McBee v. Delica Co., 417 F.3d 107 (1st Cir. 2005) (visibility of defendant’s website, which was hosted and managed overseas, in the United States does not constitute “domestic conduct” so as to warrant extraterritorial application of Lanham Act). Thus, visibility is not the critical factor.

State St. Global involved an lnstagram page from an account in Australia. The court held that defendant’s page was not subject to U.S. copyright law, explaining:

As alleged in the SAC [Second Amended Complaint]. the Australian firms used the internet to communicate with their domestic audiences, and that, like most everything on the internet, their communications are thus “accessible” in the United States. Such conduct on its own is insufficient to state a claim, given the limitation on the extraterritorial application of United States copyright right law.

Id. at 240. The court noted that there could be no logical allegation that the “images posted by the Australian firms used servers located in the United States.” Id. al 338. The court further stated that such an allegation would not be a logical inference with respect to lnstagram because “when large internet service companies [like lnstagram) locate servers across the globe, such an inference by the Court is not reasonable.” See id. Indeed, lnstagram’s terms of use (last viewed Sept. 22, 2022) specifically state that it uses servers outside the United States: “To provide our global Service, we must store and transfer data across our systems around the world, including outside of your country of residence. This infrastructure may be owned or operated by Facebook Inc., Facebook Ireland Limited, or their affiliates.”

In another case where the alleged infringement occurred in the U.K., the Court allowed the case to proceed but only because plaintiff amended the complaint to allege (however illogical) that the lnstagram server for the U.K. website was located in the United States. Richardson v. Complex Media, Inc., 2021 WL 230192 (S.D.N.Y. Jan. 22, 2021 ). That opinion implicitly agreed that if the server was not located in the United States, the case could not continue under U.S. Copyright Law even though the alleged infringed work was visible from within the U.S. In other words, there was no discourse that the “display” right under the U.S. Copyright Act would be implicated regardless of where the server was located.

Distinguishing ‘Display’ in Other Contexts
Nor is the “display” right activated each day an image remains on the internet for purposes of calculating the statute of limitations. There is one outlier, but it applies only to infringement claims against the federal government, and has been repudiated by federal courts. APL Microscopic v. the United States, 144 Fed. Cl. 489 (Ct. of Fed. Claims 2019); 4 Nimmer on Copyright§ 12.01 [E)[1) (court of federal claims only has jurisdiction over claims against the federal government). In APL, the Federal Claims court held that the limitations period for an infringement claim began to run when NASA uploaded the allegedly infringed photograph to its website, but that the “right of display” began every time the photograph was viewed on the website, constituting a separate infringement. No court has adopted the reasoning in APL. Moreover, a court that squarely addressed its holding noted its flawed reasoning. See Bell v. The Oakland Comty. Pools Project, 2020 WL 4458890, at *5, n.3 (N.D. Cal. May 4, 2020).

The APL decision is overwhelmed by compelling contrary law and relied on Perfect 10 v. Amazon.com, 508 F.3d 1146 (9th Cir. 2007), a case that “does not mention the statute of limitations … or address whether a new claim accrues for each transmission.” Bell, at *9, In. 3. The court also found other cases that squarely addressed this issue more compelling:

The Supreme Court has cautioned that “separately accruing hanm should not be confused with hanm from past violations that are continuing.” Petrella, 572 U.S. at 671 n.6. Courts following this guidance have concluded that the mere fact that a document remained on line does not trigger the separate-accrual rule. See, e.g., Wolf v. Travolta, 167
F.Supp. 3d 1077, 1099 n.13 (C.D. Cal. 2016) (“The fact that the allegedly infringing document-published in 2010, outside the relevant three-year window-remained on defendant’s website through 2014 does not give rise to a discrete claim accruing within the three-year window.” (emphasis in original)); Nakada+ Associates, Inc. v. City of El Monte, EDCV 16-1467-GW (SPx), 2017 WL 246997, at *3 (C.D. Cal. June 2, 2017) (finding copyright claim barred where defendants posted a Youtube video outside the statute of limitations and did not “post or utilize” plaintiff’s materials within the three-year window); Alfa Laval v. Flowtrend, No. H-4-2597, 2016 WL 2625068, at *5, *6 (S.D. Tex., May 9, 2016) (finding copyright claim barred where “there is no evidence that Defendants engaged in new acts of copyright infringement after [they) originally posted the Copyrighted Materials on [their) website” outside the statute of limitations); cf. Michael Grecco Prods. Inc. v. Valuewalk, LLC, 345 F.Supp. 3d 482,512 (S.D.N.Y. 2018) (suggesting plaintiff’s copyright claim would be within the statute of limitations if defendants had “republish[ed)” a copyrighted image online, but not if it were just “continuously available for public viewing”).

Bell, al *9, In. 3 (“the reasoning in Wolf, Nakada, and Alfa Laval [is] more persuasive”). Similarly, in Fischer v. Forrest, 2017 WL 128705, at *7 n.9 (S.D.N.Y. Jan. 13, 2017), the court acknowledged that an alleged infringing work published on a website one year and remaining on the website years later “does not give rise to a discrete claim.”

The case law discussing these doctrines and alleged infringement on the internet-the Server Test, non-extraterritoriality, and the meaning of a discrete claim-distinguish
“display” from visibility. Combined, they give defense counsel persuasive analogous bases for dismissal whether the claim involves an embed, a foreign infringement or a late­filed copyright infringement claim.

Nancy Del Pizzo is a partner at Rivkin Radler LLP and resident at its Hackensack office. Her practice focuses on intellectual property, commercial litigation and privacy, data and cyber law. She is a Master in the John C. Lifland Inn of Court, which highlights federal practice and intellectual property.

Reprinted with permission from the September, issue of the New Jersey Law Journal. Further duplication without permission is prohibited. All rights reserved. © 2022 ALM Media Properties, LLC.