The Southern District of New York recently considered whether the unlicensed embedding of a video originally posted to a social media platform constituted copyright infringement. The case, Nicklen v. Sinclair Broadcast Group, Inc., et al., No. 20-10300 (S.D.N.Y. July 30, 2021), concerned the re-posting of a copyrighted video of a starving polar bear, taken by Paul Nicklen and posted to his social media accounts.  After Nicklen posted the video, it went viral. Sinclair Broadcasting wrote an article about the video, embedding in the article the Nicklen video. As a result of the embedding a reader of the article would view a still image from the Nicklen video regardless of whether the reader clicked to play the video. Nicklen claimed that the display of the still image from the Nicklen video infringed the copyright in the video. Sinclair Broadcasting filed a motion to dismiss claiming that the embedding was allowed under the so-called “server rule” or, in the alternative, constituted fair use. Judge Jed Rakoff denied the motion to dismiss rejecting the server rule and declining to consider the fair use defense at this early stage of the case.

Background on the US Copyright Act

Under Section 106 of the US Copyright Act, the owner of the copyright has several exclusive rights, including :

“to reproduce the copyrighted work in copies or phonorecords;

*                       *                       *                       *                       *

in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly;

(emphasis added.)  Under section 101 of the US Copyright Act, 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 or, in the case of a motion picture of other audiovisual work, to show individual images nonsequentially.”

The Server Rule

In Perfect 10 v., Inc., 508 F. 3d 1146, 1159-62 (9th Cir. 2007), the Ninth Circuit created the “server rule,” a rule that says a website publisher can only infringe a copyright by displaying an image only if the website publisher also stores a copy of that image on its server.  Thus, under the server rule the in-line linking of images, now more commonly referred to as “embedding,” does not violate the exclusive display, copying or distribution rights of the copyright holder because, via HTML instructions, users are only directed to the website where the images are stored.

Southern District of New York Decision

Judge Rakoff did not examine the fair use defense in the motion to dismiss, but he did consider the merits of the server rule. The court  denied the motion to dismiss rejecting the server rule as “contrary to the text and legislative history of the Copyright Act.”  In doing so, Judge Rakoff focused on the “display” right under the Copyright Act rather than the “reproduction” right.

Judge Rakoff noted that the exclusive display right and reproduction right available to copyright owners are distinct rights. The Copyright Act defines “display” as “to show a copy of” a work  not “to make and then show a copy of the copyrighted work.” Because the server rule does not consider the “display” right, where user interaction is not required to display the still image from the embedded video, Judge Rakoff declined to adopt it.

Looking Forward

The question of whether an embedded image can constitute copyright infringement is highly unsettled law with relatively few district court cases squarely addressing the question. The Nicklen v. Sinclair Broadcast Group decision is not the first ruling in the Southern District of New York to reject the server rule. In 2018, Judge Katherine B. Forrest also rejected the server rule holding that embedding a tweet in a news article could violate the copyright owner’s display rights. Goldman v. Breitbart News Network, 302 F. Supp. 3d 585 (S.D.N.Y. 2018).  In 2020, however, Judge Kimba Wood, after finding that a photographer had granted Instagram a valid license to display an image, acknowledged as “unsettled in this Circuit” the question of whether “embedding an image constitutes a display “that is capable of infringing a copyright in the image.” Sinclair v. Ziff Davis, LLC, No.18-CV-790 (KMW), 2020 WL 3450136 (S.D.N.Y June 24, 2020). Judge Vernon S. Broderick ‘s decision in Walsh v. Townsqure Media, Inc., 464 F. Supp. 3d 570 (S.D.N.Y. 2020) appeared to agree with Judge Wood’s assessment of the law in the Second Circuit.  Embedding practices should be reviewed and assessed with consideration of the law governing the website publisher, as the law continues to evolve and may be different in different areas of the country. Consideration should also be given to obtaining appropriate licenses or confirming that a license is in fact conveyed by the social media platform to which the link is made.