No CTRL-ALT-DEL in the 9th Circuit for the Server Test

It has been referred to as one of the top copyright cases to watch this year. This case, Alexis Hunley, et al v. Instagram, LLC, questioned the scope and validity of the Server Test, a copyright doctrine that was established by the 9th Circuit and has since been rejected by a number of courts.

Alexis Hunley et al v Instagram, LLC involved a potential class action claim against Instagram related to its embedding practice. The named plaintiff is a photojournalist whose photographs were featured on the websites of various media outlets without a license. Hunley alleged that Instagram provided an embedding tool which allows the photo posted to an Instagram account to be simultaneously displayed on third-party websites. Embedding is the process of copying a unique HTML code assigned to the location of a digital copy of a photo or video published to the Internet, and the insertion of that code into a target webpage or social media post which enables that photo or video to be displayed within the target post.  

Hunley alleged that the third parties who displayed her photos via use of Instagram’s embedding tool committed direct copyright infringement and that Instagram was secondarily liable for that infringement. To violate the public display right, infringers must “display ‘copies’ of the copyrighted work.” The district court held that the Ninth Circuit’s 2007 opinion in Perfect 10, Inc. v., Inc., the case that established the Server Test, precluded a finding in favor of Hunley.

The public display right under copyright law is infringed only when an alleged infringer “displays” a “copy” of the copyrighted work. This “display” refers to making the work perceptible to the public, whether through physical or digital means. The key element that the Server Test focuses on is whether the alleged infringer stores a “copy” of the copyrighted work on its server or storage device. In other words, if the infringer has a copy of the work stored on its server, and this copy is then displayed or made available to the public, it would constitute a violation of the public display right.

The rationale behind this approach is to differentiate between cases where an alleged infringer merely provides a means of linking to or embedding a work hosted elsewhere, and cases where the infringer actively possesses and displays a copy of the work on its own server or storage device.

The Server Test considers the technical aspects of the alleged infringement, focusing on whether the infringer has control over the display of the work and whether they possess and store the copy of the work on their own server. If the infringer lacks this control or possession, they may not be considered directly liable for public display infringement.

The district court found that the websites embedding Hunley’s images did not “store an image or video” and did not “’communicate a copy’ of the image or video and thus did not violate the copyright owner’s exclusive display right.” Under Perfect 10, an alleged infringer displays an image in violation of a copyright holder’s rights only if a “copy” of the image is “embodied” (i.e., stored) in the alleged infringer’s computer’s server, hard disk, or other storage device. In dismissing the case, the lower court concluded that because the websites embedding the images did not store the image files on their actual servers, they were not liable for direct copyright infringement, and because there was no underlying direct infringement, Instagram could not be secondarily liable.

In June, 2022, Hunley filed an appeal with the 9th Circuit, making the following arguments: 1) that the District Court erroneously extended the Server Test beyond the scope of Perfect 10; and 2) that the Server Test lacked explicit support or explanation in the plain language of the Copyright Act, making its application questionable. Hunley argued that Perfect 10 had essentially been overturned by the Supreme Court’s decision in ABC v. Aereo. The Ninth Circuit rejected each of Hunley’s arguments. 

In rejecting Hunley’s argument that the Server Test should only apply to search engines and should not extend to content embedded into commercial websites, the court said that its holding in Perfect 10 did not rely on the unique technology of a search engine but rather the plain language of the Copyright Act. The court also noted that the Server Test has already been applied outside of search engines.

The court rejected Hunley’s argument that the Server Test is inconsistent with the Copyright Act. Rather than address the specific challenges raised by Hunley, the court simply said that it will not consider these arguments in any detail because they are foreclosed by the court’s holding in Perfect 10. This is due to the fact that the 9th Circuit can’t overrule its own holding in Perfect 10 outside of an en banc preceding unless there has been a statutory change or an intervening Supreme Court decision.

Lastly, the court found that Perfect 10 has not been overturned by the Supreme Court’s decision in ABC v. Aereo. The court noted that Aereo involved a different right – the right of public performance and not the display right – and the differences between these rights mandates a different form of analysis.

The Ninth Circuit’s decision in the Hunley v. Instagram case is likely to impact future copyright disputes involving embedding technology and the Server Test. While the ruling may be seen as a setback for the plaintiffs and others who challenge the Server Test, the debate is far from over.

The Server Test has already faced opposition in courts outside the Ninth Circuit, with some judges in the Southern District of New York rejecting its application. This discrepancy in rulings suggests that further discussions and challenges to the Server Test are likely in other regions.