It is about time users realize that everything they voluntarily post on public social media automatically comes with a license to embed. If you don’t want people to embed a post, take it down. Once it’s removed from the source, the license to embed is also revoked, the content will automatically disappear from all embeds. You can also take down a post and include the same content in a new post, that too will scrap the initial embeds, but at the expense of losing all engagement on the initial post. Can you hold a platform liable for any of that? No.
In the case of Alexis Hunley and Matthew Scott Brauer v. Instagram, LLC, 3:21-cv-03778 (N.D. Cal.) the federal appeals court for the Ninth Circuit held that the “Server Test” from Perfect 10, Inc. v. Amazon.com, Inc. which “essentially stands for the proposition that a website does not legally ‘display’ a copyrighted image if that website does not communicate the work to viewers from a copy of that image stored on its own servers” – shields Instagram from copyright infringement liability for images that are shared with its embedding API.
The lawsuit was filed in May 2021 by Photographers Alexis Hunley and Scott Brauer accusing Instagram of engaging in “scheme to generate substantial revenue for Meta by encouraging third party online publishers to use the embed tool to display copyrighted works without a valid license. In the process, Instagram “misled the public” into believing that “anyone is free to get on Instagram and embed copyrighted works from any Instagram account, like eating for free at a buffet table of photos”. On these grounds, Hunley and Brauer asserted that Instagram should be held secondarily liable for copyright infringement.
In September 2021, the U.S. District Court for the Northern District of California granted Instagram’s motion to dismiss, finding that the so called “server rule” bars the plaintiffs from asserting copyright infringement because the defendant’s embedding tool does not require a website publisher to store a copy of an image or video. The plaintiffs appealed, claiming that the court erred in its overly broad application of the “server test,” as no other precedent exists where the courts have expanded the server test to apply to embedding technology from Instagram to third-party publisher sites. The Ninth Circuit panel found no error in the judgment of the district court and held that Instagram has a blanket nonexclusive sublicense in ALL photos posted by its 2 billion users, therefore it is impossible for a plaintiff to assert a copyright infringement claim for anything they voluntarily posted on Instagram.
The court also said that you can’t sue 3rd party users who share plaintiff’s Instagram photos because there is no direct infringement of the underlying copyrighted photographs. Embedding does not constitute storing. Without direct infringement, plaintiffs cannot prevail on any theory of secondary liability.
Seemingly Divergent New York Jurisprudence
Other New York courts have construed differently the server test when defendants are news networks. In Nicklen v. Sinclair Broadcasting Group, the Southern District of New York rejected the “server test”, and held that the Ninth Circuit’s test is “contrary to the text and legislative history of the Copyright Act, [which] defines ‘to display’ as ‘to show a copy of’ a work, not ‘to make and then show a copy of the copyrighted work.’”
In Goldman v. Breitbart News Network and McGucken v. Newsweek LLC, the court refused to apply the server test, holding that Newsweek did, in fact, display plaintiff’s photograph by embedding it within its article. The test was also ignored in Goldman v. Breitbart News Network.
In sum, the server test shields platforms and their users, NOT news networks and commercial entities. So if a news network embeds your images in an article without your consent, it would be infringement, but if a news network simply embeds an image as a user without appropriating it in an article, then the server test would apply.
Now that the court of appeal has weighed in on the server test, it is entirely likely that the server test will apply to news networks in future cases. In all instances however, it is best to ask for consent every time you want to use something, or if not, be ready to take it down when you are told so.