Ninth Circuit Finds Google Not Liable for Copyright Infringement for Displaying Thumbnail Images

Remands Case on Issue of Contributory Infringement for Linking to Full-Sized Images

By David M. Silverman and Susan Seager
[May 2007]

In a significant decision regarding copyright infringement on the Internet, the U.S. Court of Appeals for the Ninth Circuit has found search engine Google not liable for its display of “thumbnail” mini images of infringing photographs contained on third-party websites. In Perfect 10, Inc. v. Amazon.com, Inc.,¹ the court followed its earlier decision in Kelly v. Arriba Soft,² finding Google’s provision of thumbnail images to be protected by fair use and thus not liable for direct copyright infringement.

However, the case was remanded to the District Court on the issue of contributory infringement based on Google’s linking to infringing third-party websites despite receiving notice from the copyright owners. This portion of the decision could be problematic for websites that link to infringing sites and warrants continued scrutiny.

Background

Perfect 10, a company that provides copyrighted photographs of nude models, sued Google for copyright infringement in connection with Google’s display of thumbnail images of Perfect 10’s copyrighted photographs, as well as for Google’s in-line links to the websites containing those images without authorization from Perfect 10.

In a decision issued last year, the U.S. District Court for the Central District of California issued a preliminary injunction enjoining Google from displaying the thumbnail versions of those images, but did not enjoin Google from linking to third party websites that display the full-sized versions of those images. In its May 16 decision, the Ninth Circuit vacated the District Court’s preliminary injunction regarding Google’s display of thumbnail images but remanded for further consideration Google’s links to infringing third-party websites.

Facts

In a Google image search, Google provides search results as a webpage of small images called “thumbnails,” which are stored in Google’s servers. The thumbnail images are reduced-size and lower-resolution versions of full-sized images stored on third party servers and displayed in third party websites. When a user clicks on a thumbnail image, the HTML instructions on Google’s webpage provide in-line links to the websites where the full-sized images are stored. These websites are then “framed” in a window on the user’s screen, which occupies all but the top portion of the screen. In other words, the top part of the user’s window consists of information from Google’s server, including the thumbnail image and text, while the bottom part of the screen is actually the source website that has been framed by Google. Unless Google receives notice of copyright infringement, it has no knowledge whether the framed webpages and thumbnail images it creates consist of infringing material.

The copyright suit filed by Perfect 10 was based both on Google’s display of thumbnail images contained on its servers as well as its in-line links to and framing of websites containing the infringing full-sized images, following notice from Perfect 10.

Summary of the court's holdings

The Ninth Circuit considered Google’s actions under theories of direct, contributory and vicarious copyright infringement, holding that:

• Google’s display of thumbnail versions of Perfect 10’s copyrighted photographs stored on Google’s own servers constitutes unauthorized copying, but that copying is protected fair use, in large part because Google’s free search engine provides “a significant public benefit to the public”;
  
  
• Google does not directly infringe the copyright in the full-sized images of Perfect 10’s photographs by in-line linking to or framing of these full-sized infringing copies because Google uses computer language to create an “interaction” between computers that displays the infringing images, but does not copy them on Google’s servers;
  
  
• Google may be held contributorily liable for in-line linking to full-size infringing images if it “had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10’s copyrighted works, and failed to take such steps”; and
  
  
• Google may not be held vicariously liable for indexing infringing third-party websites because it lacks the ability to stop or limit the direct infringement by third-party websites.

Thumbnail copies of photographs are protected by fair use

The Ninth Circuit first held that Google’s display of thumbnail photographs was direct infringement, but protected under Google’s affirmative fair use defense. Although there are four statutory fair use factors,³ the court’s decision turned primarily on the first factor—purpose and character of the use.

In analyzing that factor, the court found that Google’s use of thumbnails is “highly transformative.” In the court’s words, “A search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool.” The Ninth Circuit rejected the District Court’s holding that Google’s thumbnails were not transformative because users could download those images onto their mobile phones, noting that there was no evidence that such downloads had taken place. The appellate court found that the “public benefit” of Google’s search engine outweighed any potential commercial uses of the thumbnails in this case. Following Kelly, the court noted that Google’s incorporation of the entire copyrighted image into its thumbnails did not diminish the transformative nature of Google’s use.

In analyzing the fourth fair use factor—the effect of the use on the potential market—the court also followed Kelly in holding that thumbnails are not a substitute for full-sized images and therefore do not harm Perfect 10’s ability to sell or license those full-sized images. The Ninth Circuit then weighed all four factors “in light of the purposes of copyright,” and held that Google’s use of the thumbnails as part of a public search engine was “fundamentally different than the use intended by Perfect 10” and “provided a significant benefit to the public.”

In-line linking to full-sized infringing images not direct infringement

The Ninth Circuit held that Google’s use of in-line linking to display full-sized, infringing copies of the Perfect 10 photographs on third-party websites was not direct infringement. As the court explained, Google uses HTML instructions or “in-line linking” to “merely give[] the address of the [infringing] image” to a user’s browser. This enables the user’s browser to “interact[]” with the server that stores the infringing image, causing “an infringing image to appear on the user’s computer screen.” Although this “interaction” appears to create a framed copy of the photograph on the user’s website, Google’s computer code simply directs the user’s browser to the original image without creating a new copy.

Similarly, because Google does not distribute copies of the infringing photographs, but only links to websites that may have those photographs, Google does not “distribute” copies of those images. The court distinguished Napster,⁴ in which the owners of music files distributed copies of those files to other Napster users.

Contributory and vicarious infringement

Significantly, however, the Ninth Circuit opened the door for potential contributory liability for Google—and many other websites—for simply directing users to third-party websites containing infringing content. The District Court had held that Perfect 10 was unlikely to prevail on its claim that Google was contributorily liable for in-line linking to full-size infringing images on third-party websites because Google did not encourage its users to visit the infringing sites or provide significant revenue to the infringers. But the Ninth Circuit rejected this analysis as “erroneous,” declaring that there “is no dispute that Google substantially assists websites to distribute their infringing copies to a worldwide market and assists a worldwide audience of users to access infringing materials.”

The Ninth Circuit relied on the contributory infringement test set forth in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.⁵ Applying the Grokster test, the Ninth Circuit held a website could be liable for contributory infringement if a copyright holder could show that the website: (1) “had knowledge that infringing . . . images were available using its search engine” (2) “could take simple measures to prevent further damage to [the copyright holder’s] copyrighted works,” and (3) “failed to take such steps.” The court held that remand was necessary “to resolve the factual disputes over the adequacy of Perfect 10’s notices to Google and Google’s responses to these notices” and “factual disputes over whether there are reasonable and feasible means for Google to retrain from providing access to infringing images.

The Ninth Circuit declared that it has “enunciated” a new “test” for contributory infringement in the Perfect 10 decision, but many unanswered questions remain. The court offered no guidance on what “simple measures” could be taken “to prevent further damage to the copyright holder’s copyrighted works” and whether there are “reasonable and feasible means for [a website] to refrain from providing access to infringing images” on third-party websites.

On the vicarious infringement claim, however, the Ninth Circuit held that Perfect 10 could not prevail because Google lacks “the legal right to stop or limit the direct infringement by those third-party websites.”

Conclusion

The Perfect 10 opinion is a mixed decision. “Thumbnail” copies of infringing images are protected by fair use—at least when used by “significantly transformative” search engines with social utility—although it is not clear how this analysis would apply to a website arguably lacking in social benefits. It is also unclear whether this holding might have changed had there been evidence of mobile phone downloads of the thumbnail images, as may well be the case in future disputes of this nature. In-line linking to infringing images is not direct infringement because the framed image is not really a copy, but only the result of an “interaction” between two computers. Linking to infringing third-party websites does not create vicarious liability, but it may very well create contributory liability if there is actual notice of the infringement.

FOOTNOTES

1 Perfect 10, Inc. v. Amazon.com, Inc. --- F.3d ----, 2007 WL 1428632 (9th Cir. May 16, 2007). This article focuses on the Ninth Circuit’s decision as it related to Google, which was a co-defendant with Amazon.com.

2 Kelly v. Arriba Soft Corp., 336 F.3d (9th Cir. 2003).

3 The four fair use factors are 1) the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect of the use on the potential market for the work. 17 U.S.C. § 107.

4 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).

5 545 U.S. 913, 929-30 (2005).

For more information, please contact:

David M. Silverman Washington, D.C. (202) 973-4200 davidsilverman@dwt.com

This advisory is a publication of the media group of Davis Wright Tremaine LLP. Our purpose in publishing this advisory is to inform our clients and friends of recent legal developments. It is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may only be given in response to inquiries regarding particular situations. Attorney Advertising. Prior results do not guarantee a similar outcome. Thank you.

Copyright © 2007, Davis Wright Tremaine LLP.

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