July 23, 2007
'In Perfect 10 Inc. v. Google Inc., 2007 DJDAR 6903 (9th Cir. May 16, 2007), the 9th U.S. Circuit Court of Appeals ruled that Google's search engine for images does not engage in direct or vicarious copyright infringement, and the panel remanded the case to the lower court for further fact finding on other issues. In reaching this result, the 9th Circuit examined and addressed the inherent tension in copyright law between two important, but sometimes conflicting, goals: the protection of creative content and the promotion of technical innovation.
Less Than Perfect
Perfect 10 sells copyrighted photographs of nude or scantily-clad women on the Internet. Google operates a search engine known as Google Image Search, which permits search engine users to search for photographic images on the Internet. After a user types in a search request, Google Image Search provides a Web page of relevant thumbnail images, which appear in a single-framed window. These thumbnail images are stored in Google's computers.
When a user clicks on a thumbnail image in the search results window, the user's browser launches another window that has two frames. The thumbnail image selected appears in the top frame; a full-size version of the same image appears in the lower frame. Unlike the thumbnail, the full-size image is not stored or served on Google's computers. Instead, it appears on the user's computer screen as a result of "in-line linking."
More specifically, the HTML instructions on Google's Web page direct the user's browser to a third-party computer that stores the full-size image. The user's browser interacts directly with the third-party computer, causing the full-size image to appear in the lower frame of the window. Thus, the thumbnail image above and the full-size image below are coming from two data sources.
Unauthorized copies of Perfect 10's copyrighted images are displayed by a number of third-party Web site publishers. By using Google Image Search, people may locate and download both thumbnail and full-size versions of these unauthorized copies.
Key Rulings
Perfect 10 sued Google in 2004 and later sought a preliminary injunction. In February 2006, United States District Judge A. Howard Matz granted Perfect 10's motion in part and denied it in part. The injunction was stayed, pending the appeal of the lower court's ruling by both Perfect 10 and Google.
The 9th Circuit affirmed the lower court in part and reversed it in part. In doing so, the court made two key rulings. First, the court adopted the "server test" to determine what constituted the "display" of images on the Internet. Applying this test, the court concluded that Perfect 10 was unlikely to prevail on its direct-infringement claim with respect to any full-size images appearing on Google Image Search because Google neither stored nor served these images. Second, the court ruled that Perfect 10 was not likely to defeat Google's fair-use defense with respect to Google's thumbnail images because of the "highly transformative" use of these images by Google. Based on these rulings, the court concluded that Perfect 10 was not likely to prevail on its claim for direct infringement.
Server Test
The server test was adopted for the first time by Matz in his ruling before the appeal to the 9th Circuit. Perfect 10 Inc. v. Google Inc., 416 F. Supp. 2d 828 (C.D. Cal. 2006). The further acceptance of the server test by the 9th Circuit is a highly significant development in copyright law, because it concerns both existing and emerging information technology. This has resulted in a landmark legal standard that addresses the many complex and difficult issues of technology and policy arising from search engines linking to infringing or otherwise-objectionable content.
Under 17 U.S.C. Section 106, a copyright owner has the exclusive right to, among other things, display a copyrighted work. In determining to what extent Google may have been violating the Copyright Act, the court first had to determine what constituted the "display" of photographs on the Internet. Google advocated adoption of the server test, under which a photograph is "displayed" only if it is stored and served by the defendant. In contrast, Perfect 10 advocated a "framing" test, under which Google would be "displaying" any in-line linked photograph that it framed in Google Image Search, whether or not that photograph was stored or served on Google's computers.
The court agreed with Google. Noting that a digital photographic image must be "'fixed' in a tangible medium of expression" under 17 U.S.C. Section 101, the court concluded that a person "displays" such copyrighted works only if the images are "fixed in the computer's memory" by residing on that person's computer server, hard drive or other storage device.
The court also concluded that, for copyright purposes, providing HTML instructions directing a user to another computer storing an in-line linked image "is not equivalent to showing a copy." The court reasoned that "the HTML instructions are lines of text, not a photographic image," and that "HTML instructions do not themselves cause infringing images to appear on the user's computer screen." Rather, the interaction between the user's browser and the HTML instructions directs the browser to the third-party Web site. The browser interacts directly with the third-party computer storing the in-line linked image. The full-size image is not communicated to the user's browser until after this second, direct interaction between the user's computer and the third-party computer. The court thus held that Perfect 10 was unable to make a prima facie case of direct infringement with respect to such images.
Although Perfect 10 argued that Google was "displaying" in-line linked photographs by framing and commenting on them, the court noted that any resulting consumer confusion was irrelevant because "the Copyright Act, unlike the Trademark Act, does not protect a copyright holder against acts that cause consumer confusion." In short, the court in Perfect 10 adopted Google's server test instead of Perfect 10's framing test because the server test (a) more accurately reflects the precise technological method by which in-line linked photographs actually appear on a computer screen and (b) better takes into account the relevant facts under copyright law.
Fair Use
The court further found that, even though Perfect 10 was able to make a prima facie case of direct infringement with respect to the thumbnail images stored on Google's computers, Google was not liable for direct infringement because its use of the thumbnail images was a fair use.
The court focused its analysis primarily on "the purpose and character of the use" by Google of thumbnail images, rather than other factors under the fair-use statute, 17 U.S.C. Section 107. The court found that "Google's use of thumbnails is highly transformative," noting that "a search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool."
Significantly, the court downplayed any commercial or superseding use by Google of the thumbnails, concluding that "the significantly transformative nature of Google's search engine, particularly in light of its public benefit," outweighed any such use. In fact, the court went so far as to say that "the transformative nature of Google's use is more significant than any incidental superseding use or the minor commercial aspects of Google's search engine and Web site." (Emphasis added.) In other words, the transformative nature of Google's use of thumbnails was so important to the court in its fair-use analysis that, in comparison, the court characterized the hundreds of millions of dollars of commerce generated annually by Google as merely "minor." Thus, Google's "highly transformative" use of the thumbnails was the single most important factor relied on by the court in deciding that Perfect 10 was not likely to overcome Google's fair-use defense.
Changing Terrain
So where does the Perfect 10 case leave us? Other courts likely will adopt the server test. It not only fairly reflects the technology by which in-line linked images are displayed on a computer screen but also recognizes the impracticality of attempting to hold Google and other search engines accountable for every single word or image that they index for reference purposes but that they do not create, own, manage or control.
The court's fair-use analysis also seems likely to survive any challenge by Perfect 10. The importance that the court placed on transformative use rather than commercial use in evaluating a fair-use defense has strong support from United States Supreme Court precedent. See Campbell v. Acuff-Rose Music Inc., 510 U.S. 569 (1994).
Moreover, in recent years the ability of copyright owners to control the distribution of creative content has been eroded by technology in other contexts. The circulation of print newspapers is down in no small part because of the availability of news stories on the Internet. Record companies no longer can require consumers who like one or two songs on an album to purchase that entire album; instead, consumers are able to obtain copies of individual songs lawfully, conveniently and inexpensively. Any similar erosion of the protection of creative content resulting from the popular use of search engines could also become another such byproduct of technological progress that gains popular acceptance.
The court did not fully decide all of the issues presented in the Perfect 10 case. The court's adoption of the server test and its fair-use analysis, however, will have a profound and far-reaching effect on future cases.
©2007 Daily Journal Corporation. All rights reserved. This article originally appeared in the Friday, July 20, 2007, edition of the Los Angeles Daily Journal, and is here republished with their permission.
This article is published as an information service for clients and friends. Please recognize that the information is general in nature and must not be relied upon as legal advice. We would be pleased to discuss the information in this article, and its application to your specific situation, in greater detail. We welcome your comments and suggestions.
About Thelen LLP
Thelen LLP is an international law firm with approximately 600 attorneys, and offices in New York, San Francisco, Washington, DC, Los Angeles, Silicon Valley, Hartford, Northern New Jersey, Shanghai, and London. The firm provides superior legal services in complex commercial litigation; corporate and capital markets transactions; project and asset finance; construction; labor and employment; intellectual property; information technology; domestic and international tax; employee benefits; government affairs; and real estate.
Hartford Los Angeles New York Northern NJ San Francisco Shanghai Silicon Valley Washington, DC
Affiliated Sites
www.constructionweblinks.com |
www.technologylawupdate.com |
www.climatelawupdate.com
Copyright ©
