Manhattan judge rejects 'server test' for internet copyright infringement

3 minute read

An exterior view of the federal courthouse at 500 Pearl Street in New York. REUTERS/Chip East

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  • Embedding images can infringe copyrights, Rakoff says
  • Judge rejects 9th Circuit's 'server test' for infringing display rights
  • Rakoff is second Manhattan judge to reject 9th Cir test

(Reuters) - In a dispute over a video of a starving polar bear, a Manhattan federal court on Friday rejected Sinclair Broadcasting's argument that it and its affiliates couldn't have infringed the copyright in Paul Nicklen's video because they only embedded it on their websites from Instagram or Facebook.

In his decision denying Sinclair's motion to dismiss, U.S. District Judge Jed Rakoff split from the 9th U.S. Circuit Court of Appeals on its controversial server test, also known as the server rule, that says a website can only infringe a copyright by displaying an image if it also stores a copy on its server, finding the rule contradicts the Copyright Act.

"Proponents of the server rule suggest that a contrary rule would impose far-reaching and ruinous liability, supposedly grinding the internet to a halt," Rakoff said. "These speculations seem farfetched, but are, in any case, just speculations."

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Nicklen and his attorneys Robert Kaplan of Kaplan Fox & Kilsheimer, Bryan Hoben of Hoben Law, and James Bartolomei of the Duncan Firm didn't immediately respond to a request for comment, nor did Sinclair and its attorneys Joseph Slaughter and Thomas Sullivan of Ballard Spahr.

Nicklen, a photographer, filmmaker, and founder of the nonprofit conservation group SeaLegacy, posted a video to his Instagram and Facebook accounts that he took of an emaciated polar bear wandering the Arctic. Sinclair later embedded the video in an article about it going viral, and Nicklen sued Sinclair and others for copyright infringement last year for displaying it without a license.

In Friday's opinion, Rakoff said the server rule 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.'"

Rakoff said that under the test, "a photographer who promotes his work on Instagram or a filmmaker who posts her short film on YouTube surrenders control over how, when, and by whom their work is subsequently shown -- reducing the display right, effectively, to the limited right of first publication that the [Act] rejects."

Sinclair had argued that a creator can keep control over their work by not posting it on social media, but Rakoff said "it cannot be that the Copyright Act grants authors an exclusive right to display their work publicly only if that public is not online."

Rakoff is the second Manhattan federal judge to reject the rule, following then-U.S. District Judge Katherine Forrest's repudiation of it in 2018.

Rakoff also denied Sinclair's motion to dismiss based on fair use, finding that question couldn't be resolved at this early stage of the case.

The case is Nicklen v. Sinclair Broadcast Group, U.S. District Court for the Southern District of New York, No. 1:20-cv-10300.

For Nicklen: Robert Kaplan of Kaplan Fox & Kilsheimer, Bryan Hoben of Hoben Law Firm, and James Bartolomei of the Duncan Firm

For Sinclair: Joseph Slaughter and Thomas Sullivan of Ballard Spahr

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at