Google’s Use of Thumbnails of Perfect 10’s Copyrighted Images Are Fair Use

Christine Pepe is an associate in the law firm of McDermott Will and Emery LLP, and a member of the Intellectual Property, Media and Technology (IPMT) Department. She is based in the firm’s New York office. In holding that Perfect 10 was unlikely to succeed in overcoming Googleââ?¬â?¢s fair use defense, the U.S. Court of Appeals for the Ninth Circuit reversed the district courtââ?¬â?¢s ruling that Googleââ?¬â?¢s thumbnail versions of Perfect 10ââ?¬â?¢s images constituted direct infringement and vacated the preliminary injunction. Perfect 10, Inc. v. Amazon.com (No. 06-55405) and Perfect 10, Inc. v. Google Inc. (Case Nos. 06-55406, -55425) (9th Cir., May 16, 2007) (M.D. Smith, J.). With regard to the in-line linking to images, the Court remanded for further fact finding on the issues of contributory infringement by both Google and Amazon and whether they are entitled to safe harbor immunity under the Digital Millennium Copyright Act (DMCA). The plaintiff, Perfect 10, markets and sells copyrighted images of non-surgically enhanced nude models and operates a related subscription website on the Internet for ââ?¬Å?member onlyââ?¬Â? viewing of certain images. Perfect 10 has also licensed a third party to sell and distribute Perfect 10ââ?¬â?¢s reduced-size copyrighted images for download to cell phones. However, certain website publishers republish Perfect 10ââ?¬â?¢s images on the Internet without authorization. Once this occurs, Googleââ?¬â?¢s search engine may automatically index the webpage containing these images and provide thumbnail versions of images in response to user inquiries. When a user clicks on the thumbnail version of an image returned by a Google search, the userââ?¬â?¢s browser accesses the third-party webpage and ââ?¬Å?in-line linksââ?¬Â? to the full-sized infringing image stored on the website publisherââ?¬â?¢s computer. This image then appears on the lower portion of the window on the userââ?¬â?¢s computer screen framed by information from Googleââ?¬â?¢s webpage. In separate actions against Google and Amazon (now consolidated), Perfect 10 sought a preliminary injunction to prevent Google and Amazon from infringing or otherwise contributing to the infringement of Perfect 10ââ?¬â?¢s photographs and from linking to websites that provide infringing versions of the photographs. Because it merely in-line linked to the thumbnails on Googleââ?¬â?¢s server and to full-size images on third-party websites, the district court refused to enjoin Amazon. However, the district court did enjoin Googleââ?¬â?¢s use of the thumbnails of Perfect 10ââ?¬â?¢s images, noting that a computer owner that stores an image as electronic information and serves that electronic information directly to the user is displaying the electronic information in violation of a copyright holderââ?¬â?¢s exclusive display right. Applying this definition, the district court held that Perfect 10 was likely to succeed in its claim that Googleââ?¬â?¢s display of the thumbnails constituted direct infringement. However, the district court held that Perfect 10 was not likely to succeed in its claim that Googleââ?¬â?¢s ââ?¬Å?in-line linkingââ?¬Â? to full-size images constituted direct infringement, in violation of Perfect 10ââ?¬â?¢s display and distribution rights. The Ninth Circuit affirmed the district court findings that Perfect 10 was unlikely to succeed in proving direct infringement. Specifically, with regard to the in-line linked images, the Court held that because in-line linking does not involve communicating a copy of the image, but rather only HTML (Hyper Text Markup Language) instructions that direct a userââ?¬â?¢s browser to a website publisherââ?¬â?¢s computer that stores the image, there is no direct infringement. Moreover, the Court held that Perfect 10 must also show a likelihood that it will prevail against Googleââ?¬â?¢s fair use defense. In that regard, the district court held that the commercial nature of Googleââ?¬â?¢s use weighed against its transformative nature and that Googleââ?¬â?¢s use of thumbnails superseded Perfect 10ââ?¬â?¢s right to sell its reduced-size images for use on cell phones. On this issue, the Ninth Circuit reversed, finding that Google used Perfect 10ââ?¬â?¢s images in a new context to serve a different purpose and that the significantly transformative nature of Googleââ?¬â?¢s search engine, in view of its public benefit, outweighed any alleged superseding and commercial use of the thumbnails. The Court therefore vacated the preliminary injunction. With regard to in-line linking to copyrighted images, the Ninth Circuit remanded for further findings on contributory infringement and whether the DMCA safe harbor provision limits injunctive relief. The district court held that Perfect 10 was unlikely to succeed on its contributory infringement claim against either Google or Amazon. However, the Court held that the parties could be held contributorily liable if they had knowledge that infringing Perfect 10 images were available using their systems, could take simple measures to prevent further infringement and failed to do so. Because there were factual disputes over whether there are reasonable and feasible means for Google and Amazon to refrain from providing access to infringing images, the Court remanded these issues to the district court. The Court also remanded for further findings on whether Google and Amazon satisfied the requirements of Ã?§512(d) of the DMCA (i.e., whether adequate notices were sent to the parties and whether the responses to the notices were adequate). Reprinted with permission from McDermott Will and Emeryââ?¬â?¢s IP Update, June 2007.

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Online Fanfiction and Third Party Copyright Infringement

Everyone has a favorite television show, or book, or comic strip. But what are loyal fans to do during the (sometimes lengthy) period of time in between seasons of a TV series or installments of a series of books or movies? Are fans of the Fox series “House, M.D.” supposed to watch the Major League Baseball games that are being broadcast the entire month of October in lieu of regular programming? Reread favorite books until the binding splits or watch videocassettes until they break? For the fan with Internet access, the answer is clearly no. All fans need to do is to type in the name of their favorite book or movie into a search engine, and the answer is at their fingertips. The explosion of fan culture on the World Wide Web is a phenomenon that is impossible to ignore. While some sites serve as a meeting place for fans to discuss aspects of their favorite works, share spoilers for future episodes or novels, or simply commune with other like-minded individuals, a major activity of fan culture is the creation of new works of art or literature featuring their favorite characters in a variety of settings. While most fanfiction is noncommercial in nature (and authors are very vocal about the fact that they make no money), this fact alone does not insulate such authors from legal liability for the body of work that they are posting on the Internet and making available to anyone, in any country, with web access. While suing individual authors of fanfiction may be impracticable, does this mean that the copyright holder is without remedy? After all, the right to create derivative works is one of the six exclusive rights afforded the copyright holder under Section 106 of Title 17.¹  What if an author finds a particular category of fanfiction, such as adult-themed work, particularly problematic or offensive? One possible solution is the imposition of third-party liability on the parties who own and operate websites on which the work of many authors is included. Two theories of third-party liability on which authors may rely are contributory infringement and vicarious infringement. Contributory infringement requires both knowledge on the part of the third party and a material contribution to the infringement. “[O]ne who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.”²  A person who deliberately sets up a website for the purpose of posting fanfiction is clearly acting intentionally. Whether he believes that posting such content is an act of infringement is debatable. Questions of fact such as the receipt of cease-and-desist letters by the website owner or any of the authors whose work is posted on his website will certainly be relevant. Under Napster, which I will discuss in greater length below, the court held that actual knowledge of specific infringing uses was not necessary, merely that the owner of the website knows that the site is being used for infringing activity in general.³  The element of contribution can arguably be met; although an fan author could post his work on his own website rather than that of a dedicated “fanfiction” website, the inclusion of many pieces of fiction in one location make such sites more easily accessible and more popular than if the would-be reader had to navigate from individual web page to individual web page. By maintaining a dedicated “fanfiction” page, the owner is inducing others to write their own derivative works and to post them for all to read. While contributory liability stems from enterprise liability, vicarious liability is based on principles of agency law, and requires that the third party have the right and ability to control the infringing conduct as well as a direct financial interest in the infringing conduct.⁴  Owners of particular websites are ultimately in charge of the content that appears on their various pages. If the owner allows submissions from the general public, he or she also has the ability to delete content with which he disagrees or that he feels will subject him to harassment or potential legal liability. The element of direct financial benefit, on the other hand, will be difficult to prove, as practically nobody makes any money from the authorship of fanfiction. However, the individual fan authoris not the defendant in a third-party case, but the website owner, and many sites to which this work is posted are supported by advertising.⁵  If these advertising revenues go beyond the cost of setting up and maintaining the sites, this may provide a nexus to commercial gain, which would justify holding the website owner liable under a theory of vicarious infringement. Similarly problematic is the nature of vicarious liability as an offshoot of respondeat superior. Even if both the necessary elements are met, it may be difficult to characterize individual fan authors as agents of the fanfiction website in any context. Perhaps an analogy to a peer-to-peer file sharing case will put the above issues in context. In A&M Records, Inc., v. Napster, Inc.,⁶  the Ninth Circuit held that the plaintiff had a likelihood of success on the merits for both its claims of contributory and vicarious infringement against Napster, and that a preliminary injunction was appropriate. However, Napster is factually somewhat different from the case of fanfiction websites. The infringing files in Napster were exact copies of plaintiff’s copyrighted works,⁷  which weighs against the defendant’s claim of fair use,⁸  as opposed to the transformative nature of most works of fanfiction. Weighing against fanfiction website owners is the fact the court in Napster upheld liability even though the central server did not maintain copies of the works themselves, but merely an index of names which allowed users to obtain the infringing copies from one another, whereas fanfiction sites store and facilitate distribution of potentially infringing content. Moreover, in Napster, even if specific files were removed at the request of the copyright owner, it was highly likely that another individual would “fill the gap” and provide another copy almost immediately. Within the Napster system, there would be a plentitude of anonymous sources of the exact same infringing file. Whereas, once an individual fan author discovered his or her fan authorship had been removed, he or she would be less likely to upload it somewhere else for fear of direct action by the copyright owner. His or her reading public might not have copies of the same authorship to repost. Therefore, in the case of fanfiction, individual instances of infringement could be targeted more effectively and permanently. While, in any case, a suit for direct infringement against the individual authors themselves is always possible, turning off the tide of unauthorized derivative works at the source is far easier and more effective for the copyright owner than to pursue (potentially) millions of individual defendants. Such theories of third party liability as contributory and vicarious infringement make the enforcement of copyright practicable for the modern author of creative work.

Sources

1   In order to succeed on a claim of contributory or vicarious infringement, the copyright holder/plaintiff must prove that direct infringement has taken place. Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361, 1371 (N.D. Cal. 1995). It is possible that a copyright owner could sue an individual fan author in name, with the understanding that he will seek relief entirely from the named third parties, as was the case in Universal City Studios, Inc. v. Sony Corp. Of America, 464 U.S. 417 (1984).
2   Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).
3   114 F.Supp.2d 896, 917 (N.D. Cal. 2000).
4   Fonovisa, Inc. v. Cherry Auction, Inc., 76 F. 3d 259 (9th Cir. 1996).
5   For example, www.fictionalley.org (Harry Potter fanfiction/fanart) features banner advertising at the bottom of the page.
6   239 F.3d 1004 (9th Cir. 2001).
7   239 F.3d at 1011.
8   Id. at 1016.

Debate: Counsel for Perfect 10 v. Google Square Off

On February 2, 2007, Justin Hughes, Director of the Cardozo Law School’s intellectual property program, moderated a panel discussion at Santa Clara University. The talk focused on the Perfect 10 v. Google case and its implications for Internet copyright.

The panelists include:

• Andrew Bridges of Winston and Strawn is Google’s lead defense counsel in the case
• Russ Frackman of Mitchell, Silverberg, and Knupp represents Perfect 10 in this case
• Fred Von Lohmann is Senior Staff Counsel at the Electronic Frontier Foundation
• Tyler Ochoa teaches copyright law at the Santa Clara University School of Law

View Counsel for Perfect 10 vs. Google Square Off on FORA.tv
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Viacom v. YouTube and Section 512 of the DMCA

On October 23rd, 2007 at Santa Clara University, a panel of experts discussed the potential ramifications of Section 512 (frequently referred to as the “Safe Harbor provisions”) of the Digital Millennium Copyright Act as they relate to Viacom’s copyright claims against Google-owned YouTube. The panel was moderated by Jenny Lynn Cox, director of the High Tech Law Institute at Santa Clara, and included Mindy M. Morton of Bergeson, LLP, co-chair of the High Technology Law Section of the SCCBA; Professor Tyler Ochoa of the Santa Clara University School of Law; and Fred von Lohmann, Senior Counsel at the Electronic Frontier Foundation.

Other Tech LawForum coverage of the Viacom v. YouTube can be see on TLF Video on Demand

Vehicle Infrastructure Integration (VII) and Privacy

On August 1, 2007, Professor Dorothy Glancy of the Santa Clara University School of Law and SCU Law alumnus and computer networks expert Rich Seifert spoke with Tech LawForum interviewer Erik Schmidt. The discussion centered on the nascent Vehicle Infrastructure Integration (VII) project, which aims to create “smart” highways. The privacy ramifications of VII are not being taken lightly, but as this discussion illustrates, there are differences of opinion as to whether privacy concerns will be adequately addressed if and when VII becomes reality.

53 min.

Play Glancy-Seifert-VII-Privacy

VII-privacy-policies-framework-v-1-0-2 (Download)

Nicole Ozer of the ACLU Discusses Online Privacy

Nicole Ozer, the Technology and Civil Liberties Policy Director of the ACLU of Northern California, addressed an IP research class at Santa Clara University School of Law on November 17, 2006. She discussed several online privacy issues, focusing on the linkage between online commerce and privacy.

1: The Motivation for the ACLU’s Efforts in Online Privacy

“We have a whole new relationship with data, with largely the same statutes.” 28 min.

Play Ozer-1-aclu-privacy , View transcript

2: Student Comments, Questions and Answers

“When is the last time that you signed up for something, and you actually considered whether the product or the service was worth the information that you were giving up?” 23 min.

Play Ozer-2-comments , View transcript

State of the Net West 2008

State of the Net West Audio, Santa Clara Law, August 2008 In August The Congressional Internet Caucus Advisory Committee in collaboration with the High Tech Law Institute at Santa Clara School of Law hosted the 2nd Annual State of the Net West Conference on Wednesday, August 6th, 2008, in the California Room at the Benson Center of the Santa Clara University School of Law, from 8:30 a.m. to 2:30 p.m. The discussion featured leaders of the Congressional Internet Caucus, including Congresswoman Zoe Lofgren, Congressman Mike Honda, and Congressman Bob Goodlatte. Other participants included West Coast academic scholars, public interest advocates, and industry executives during a series of discussions on current, important technology policy issues. State of the Net West is designed to channel West Coast thought leadership from the academic community and private sector to help inform the technology policy issues being debated in Washington. The State of the Net West Conference allows for bicoastal networking and dialogue on key policy issues to take place in the heart of Silicon Valley. Participants engaged in lively debates exploring the following panels: “Will Our Reputations and Privacy Survive the Age of Social Networking?”

• Introduced by Congressman Bob Goodlatte (bio)
• Frank Pasquale, Associate Professor of Law at Seton Hall Law School (bio)
• Lauren Gelman, Executive Director and Lecturer of Law at Stanford Law (bio)

“Can ISP Immunity Survive the Onslaught of Web 2.0”

• General welcoming from Congressman Mike Honda (bio)
• Introduced by Congresswoman Zoe Lofgren (bio)
• Mike Fertik, CEO of Reputation Defender (bio)
• Dan Dougherty, eBay(bio)

“The Movement of Information from the Crowd to the Cloud”

• David Schellhase, Senior VP/General Counsel, salesforce.com Inc.(bio)
• James X. Dempsey, Vice President for Public Policy, Center for Democracy and Technology (bio)
• Matthew Parrella, U.S. Department of Justice (bio)

The Congressional Internet Caucus Advisory Committee hosts the annual “State of the Net Conference” in Washington to frame many of the technology policy debates that Congress grapples with throughout the year. State of the Net has grown into the largest and most influential information technology policy conference in the country to discuss technology trends and the enormous challenges that lawmakers, industry leaders, and citizens must confront and resolve. While the State of the Net Conference has been an unmitigated success at framing the debate in Washington, an infusion of intellectual capital from the West Coast significantly enhances the State of the Net discussions. This educational briefing was hosted by the Congressional Internet Caucus Advisory Committee (ICAC), part of a 501 (c)(3) charitable organization. The ICAC is a private sector organization comprised of public interest groups, trade associations, non-profits, and corporations.

EFF and ACLU Experts Discuss NSA Wiretapping

On November 17, 2006, civil liberties experts from the Electronic Frontier Foundation and the American Civil Liberties Union discussed the legal impact of post-9/11 Internet surveillance and other forms of wiretapping at a Santa Clara University forum. Kevin Bankston is a staff attorney for the EFF, and he focuses on free speech and privacy law. Ann Brick works for the Northern California branch of the ACLU.

1: Kevin Bankston on the Legal Background of Wiretapping and EFF Litigation

“Basically the way the law has always worked is you target someone with probable cause and then you intercept their communications. But what it appears that the NSA is doing is that they’re actually intercepting, both I think under the Fourth Amendment and the statute’s definition, pretty much everyone’s communications. And then doing some sort of filtering on that to figure out who they want the NSA analysts to actually listen to or whose emails to read.” 18 min.

Play Bankston-brick-1-eff , View transcript

2: Ann Brick on ACLU Litigation

“The court very simply said look the government has come out, it’s acknowledged that it’s interdoing this targeted intercepting, the government doesn’t need state secrets to defend itself. In fact it called that plain disingenuous because this is a pure question of law whether or not the target is surveillance violates the Fourth Amendment, the First Amendment, Separation of Powers and FISA.” 19 min.

Play Bankston-brick-2-aclu , View transcript

3: Bankston on the State of Affairs in Congress

“How would you feel if President Hillary Clinton took it upon herself to have the authority to wiretap whoever her and her administration deemed necessary without any regard to the laws passed by Congress?” 3 min.

Play Bankston-brick-3-congress , View transcript

4: Q&A with Bankston and Brick

“And the fact is if our allegations are correct, they’re getting everything online. It’s not just email, it’s all the communications online. Your queries to a search engine go across the same networks. And so the NSA would be getting that data.” 17 min.

Play Bankston-brick-4-questions , View transcript

Interview: Judge Alex Kozinski of the 9th Circuit

Judge Alex Kozinski of the United States Court of Appeals for the 9th Circuit is famous for his memorable judicial opinions and unmistakable style. Judge Kozinski has written opinions in several important cyberlaw cases, and has a reputation for grasping the legal ramifications of new technology. On October 18, 2006, he was interviewed by SCU Professor Eric Goldman, with students from Professor Goldman’s class on Cyberlaw in attendance. The judge who nominated himself for a “Male Superhottie” award (and won) and appeared on The Dating Game shared with the class his eBay rating, his opinion of bloggers, thoughts on the evolution of the American concept of privacy, and his approach to incorporating new technology into existing legal precedent.

1: Introduction

“I think it’s pretty important for people to think of judges as human beings, to realize that we do have families and we do have homes and children and we’re part of the community, in a way, and that we don’t take ourselves as seriously as we expect you to take us.” 34 min.

Play Kozinski-1-intro , View transcript

2: Privacy

“I think the assumption that we’ve had in our society is that people who are couriers, people who are not the ultimate recipients of information but merely provide the means for taking information from one place to another, do not own the information and do not have access to the information and do not have a right to use the information.” 12 min.

Play Kozinski-2-privacy , View transcript

3: Domain Names

“And we read the California cases as being fairly permissive and progressive about these things in saying that you could have a conversion and so on as this intangible right that’s connected with some sort of written list, some sort of writing.” 19 min.

Play Kozinski-3-domainnames , View transcript

4: Questions

“I’m just speculating that it might be worthwhile trying to think about whether this new environment should really be dealt with by a whole different set of relationships and laws — not in everything, but at least when it comes to commerce, to transactions.” 10 min.

Play Kozinski-4-questions , View transcript

The Americans with Disabilities Act and the Web

Orrick attorneys Clifford Michel, Mark Howitson, and Amira Day discuss the issues behind the National Federation of the Blind v. Target case, in which Target is being sued for not making its website accessible for those with disabilities. They also provide a broad overview of the context of the case and why it matters for companies with an online presence.

1: What is the ADA?

2 min. Play ada-1-the-ada ,  View transcript

2: ADA and the Internet

9 min. Play ada-2-internet

3: The Target Case

7 min. Play ada-3-target-case , View transcript

4: Implications of the Target Case

6 min. Play ada-4-implications , View transcript

5: The U.S. Supreme Court and Target

6 min. Play ada-5-ussc-target , View transcript

6: Web Duties

2 min. Play ada-6-web-duty

7: ADA Exceptions

7 min. Play ada-7-ada-exceptions ,  View transcript

8: ADA Liabilities

5 min. Play ada-8-ada-liabilities , View transcript

9: ADA Best Practices

9 min. Play ada-9-best-practices , View transcript