(Reuters) - In 2007, a commenter on a knife aficionados’ website called Blade Forums posted an image of a photograph of a redwood tree burl. Readers were discussing knife handles made from these tree trunk outgrowths, and the commenter picked up the image of a burl from the website of a well-known photographer, QT Luong, to show other Blade Forums members what they look like. The embedded image was posted as a deep link, meaning that Blade Forums’ readers could see Luong’s photograph, but only via Luong’s website. The photo was not hosted on Blade Forums’ server.
In March 2019, the copyright firm Higbee & Associates contacted the operator of Blade Forums, a knife shop owner named Kevin Schlossberg. Higbee’s letter said that Schlossberg had infringed Luong’s copyright on the burl photograph. The law firm demanded $2,500 to resolve Blade Forums’ copyright liability. Schlossberg removed the image from the 2007 post but refused to pay.
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On Wednesday, Schlossberg’s lawyers at Public Citizen and Stanford’s Juelsgaard Intellectual Property and Innovation Clinic filed a declaratory judgment suit in federal court in San Jose, seeking a determination that embedding an image of Luong’s photograph via a deep link to Luong’s website is not copyright infringement. The complaint also argued that Schlossberg cannot be liable for a forum member’s post since he didn’t direct the post – and can’t monitor millions of discussion threads by hundreds of thousands of forum participants - or profit from display of the image.
Paul Alan Levy of Public Citizen said the group regards this suit as a test case for web forums’ liability for images embedded via deep links. He said he has seen an uptick in copyright demand letters, including demands from the Higbee firm, to the operators of web discussion sites, like Blade Forums, that did not take all of the requisite steps to qualify for safe harbor protection under the Digital Millennium Copyright Act. (Levy said Schlossberg did not realize that he had to designate a DMCA agent to receive protection.)
Levy said that if Higbee’s clients truly want to stop embedded images of their work, they can adopt technical measures to block deep links. “The first means of protecting yourself should be to use technological means – not threats of lawsuits,” Levy told me.
Mathew Higbee of Higbee & Associates said he’s confident that forum hosts can be held responsible for copyright violations via embedded links, but said he’s not yet sure if his client, Luong, wants to litigate a test case. In a general statement about his firm’s tactics, he pointed out in an email that Higbee & Associates “handles copyright enforcement matters for two of the three largest news agencies … in the world and more than 100 other agencies and professional photographers.”
You may recall that there’s some turmoil in the courts about copyright liability for embedded links. In 2007’s Perfect 10 v. Google, the 9th U.S. Circuit Court of Appeals said Google was not liable for linking to thumbnail images, reasoning that websites are only responsible for policing images stored on their servers, not those reached through links. But in a 2017 ruling in The Leader’s Institute v. Jackson, a dispute between competitors in the team-building business, U.S. District Judge Jane Boyle of Dallas cast doubt on Perfect 10’s reliance on the physical location of digital images. “To the extent (that) Perfect 10 makes actual possession of a copy a necessary condition to violating a copyright owner’s exclusive right to display her copyrighted works, the court respectfully disagrees with the 9th Circuit,” she wrote.
In February 2018, a federal judge in Manhattan explicitly rejected the so-called server test in a case involving a photo of Tom Brady that was embedded in articles on a half-dozen news sites. The Manhattan judge ruled that nothing in copyright law backs the proposition that online publishers should get a free pass based on the technical question of where images are stored. Last July, the 2nd Circuit declined to hear an interlocutory appeal of the ruling, despite online publishers’ protestations that the decision would wreak fundamental changes in Internet operations. (The case, captioned Goldman v. Breitbart, is in discovery in the trial court in Manhattan.)
Schlossberg cited Perfect 10 in emails to the Higbee firm, contending that he is not liable under the 9th Circuit’s server test because the embedded image of Luong’s photograph was never hosted on Blade Forums' server. Higbee’s Theodore Sell responded (in an email attached to Schlossberg’s lawsuit) that the 9th Circuit’s March 2019 ruling in VHT v. Zillow clarified limits on the Perfect 10 test. According to Zillow, Sell said, Perfect 10 protects “legitimate, actual search engines” that obtain links to thumbnail images by crawling the Internet. The server test, he said, does not shield Schlossberg for the intentional embedding of an image of Luong’s photograph.
“We do not think that Perfect 10 stands for the blanket proposition that publishers can use inline links to escape liability for publicly displaying a photographer’s work without a license,” Higbee added in an email. “This case provides the opportunity for the 9th Circuit clarify the misinterpretations of the dicta in Perfect 10. Courts in the 2nd, 5th and 7th Circuits have properly ruled that publishers cannot exploit the work of photographers without compensation simply because they display the image through an inline link.”
Public Citizen’s Levy said in a May 6 letter to the Higbee firm and in an interview with me on Friday that the 9th Circuit’s Zillow precedent actually helps Schlossberg. The 9th Circuit affirmed that Zillow could be liable for images uploaded by its own employees but was not responsible for photos uploaded by brokers and homeowners.
Levy said the Zillow decision emphasizes that the host site’s volition is a key to liability. Schlossberg, he said, did not know that a member of Blade Forums had shared an image of Luong’s photograph so he cannot be liable for it.
Both Public Citizen and the Higbee firm seem to be spoiling for this fight, although, as Higbee said, it’s up to his client to decide whether to defend the declaratory judgment action. If he does, this could be big.
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