Embedding, sometimes also referred to as framing, provides instructions to a browser for a third-party website (the embedding website) to incorporate content directly from the website where it originally appeared (the host website). The browser automatically retrieves and shows the content from the host website in the format specified by the embedding website. Users can see the content itself on the embedding website without navigating away from the site.

Embedding is different from merely providing a hyperlink to the URL address for such content, and courts have generally held that hyperlinking does not constitute direct infringement. See, e.g., Online Pol'y Grp. v. Diebold, Inc., 337 F. Supp. 2d 1195, 1202 n.12 (N.D. Cal. 2004) (“[H]yperlinking per se does not constitute direct infringement because there is no copying, [but] in some instances there may be a tenable claim of contributory infringement or vicarious liability.”); MyPlayCity, Inc. v. Conduit Ltd., 2012 WL 1107648, at *12 (S.D.N.Y. Mar. 20, 2012) (collecting cases), adhered to on reconsideration, 2012 WL 2929392 (S.D.N.Y. July 18, 2012).

Under the Ninth Circuit's “server” test, embedding is not copyright infringement because a “copy” is not displayed as that term is defined in the Copyright Act. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1160–61 (9th Cir. 2007). In Perfect 10, the defendant did not store a copy of the full-size images, but merely embedded them and allowed them to be displayed; and thus “does not have a copy of the images for purposes of the Copyright Act.” Id. The Ninth Circuit concluded that this “does not constitute direct infringement.” Id. at 1161; see also Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065, 1073 (9th Cir. 2021) (“reverse image search”); Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 978 (9th Cir. 2011) (noting that “Blogger account holders may upload images from the web onto Google's server in order to post them on their blogs, or may use a hyperlink to images hosted on other servers.”).

Although no other circuit has disapproved of the Server Test (see, e.g., Soc'y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 55 (1st Cir. 2012) (declining to adopt or reject the Server Test); Flava Works, Inc. v. Gunter, 689 F.3d 754, 761 (7th Cir. 2012) (citing with approval Perfect 10's distinction between direct and secondary infringement)), several district courts have either rejected or limited the Server Test. See, e.g., Nicklen v. Sinclair Broad. Grp., Inc., F. Supp. 3d 188 (S.D.N.Y 2021) (rejecting the Server Test); Leader's Institute, LLC v. Jackson, 2017 WL 5629514 (N.D. Tex. Nov. 22, 2017) (“To the extent Perfect 10 makes actual possession of a copy a necessary condition to violating a copyright owner's exclusive right to display her copyrighted works, the Court respectfully disagrees with the Ninth Circuit.”).

Reaffirming the Server Test for Embedding

The Ninth Circuit recently reaffirmed the Server Test in Hunley v. Instagram, LLC, No. 22-15293, — F.4th — (9th Cir. July 17, 2023), holding that embedding Instagram posts is not copyright infringement, and rejecting Hunley's arguments that applying the Server Test to social media platforms is inconsistent with the Copyright Act's statutory scheme.

            We will not consider these arguments in any detail because they are foreclosed by Perfect 10. Whatever merit these arguments might have in other contexts, Perfect 10 states the rule for infringing the public display right using embedding. See, e.g., Perfect 10, 508 F.3d at 1162 (discussing copies “in the electronic context”). In Perfect 10, we did not address the precise arguments Hunley now presses, but we carefully considered display and distribution rights. See id. at 1159–63. Even if we thought, in retrospect, that Perfect 10 created some inconsistencies with other provisions of the Copyright Act, we are not free to overrule Perfect 10 outside of an en banc proceeding unless there has been a change in the statute or an intervening Supreme Court decision. See Langere v. Verizon Wireless Servs., LLC, 983 F.3d 1115, 1121 (9th Cir. 2020). For the reasons described infra, we find no such intervening authority.

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            Finally, Perfect 10 crafted our Server Test out of the Copyright Act's fixation requirement—not the perceptibility requirement. See Perfect 10, 508 F.3d at 1160 (“A photographic image 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).”). Perfect 10 did not scratch on a blank slate; it built on our prior caselaw interpreting the fixation requirement. See id. (“The image stored in the computer is the “copy” of the work for purposes of copyright law.”). Our caselaw regarding computerized copyright infringement relied on user perception in a limited circumstance: to determine whether copies were “fixed” under the Copyright Act. 17 U.S.C. § 101 (definition of “fixed”); see MAI Sys. Corp., 991 F.2d at 517–18. Because the public display right requires that an infringer “display a copy,” user perception is relevant to whether a copy is “fixed,” but not sufficient to establish direct infringement absent the underlying display of a fixed copy. See generally 17 U.S.C. §101.

The Court also noted that “the Server Test applies only to embedding in its current technological format, which involves a single host server storing and transmitting an image, with an embedding website that directs the browser to retrieve and display that same underlying image from the host server.” This does not foreclose future technologies that may configure retransmission in a new way or can display a copy in a way other than to store it on a server.

            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 nonexclusive sublicense to display these photos.

By embedding—but not storing—the underlying copyrighted photographs, there was no direct infringement. Without direct infringement, Hunley cannot prevail on any theory of secondary liability. Thus, the Ninth Circuit affirmed dismissal based on the Server Test.

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.