Instagram is counting on controversial copyright test to save its image(s)

It’s hard to remember now, as we bob along in a relentless stream of photos of other people’s cute pets and baking triumphs, but there was once a time before Instagram – a time when there was no such job as ”influencer”, and Chrissy Teigen was just a briefcase model on Deal or No Deal.

Back in those long-lost days -- specifically, in 2007 -- the 9th U.S. Circuit Court of Appeals ruled that accused copyright infringers are not liable for displaying digital images unless those images are actually stored on their own servers.

And now Instagram is counting on that precedent to preserve a feature that has helped make it a ubiquitous presence on the internet.

Instagram’s lawyers at Durie Tangri filed a motion last week to dismiss a class action by photographers who contend that the company is liable for infringement because it enabled online publishers like Buzzfeed and Mashable to display unauthorized images of their work. The thrust of their argument: Under the 9th Circuit’s reasoning in Perfect 10 v. Amazon, there simply is no infringement.

That argument requires a bit of explaining. The photographers, as I told you in May, are trying to upend digital media’s practice of embedding Instagram posts in online stories. Digital publishers often use embedding, in which they include images of Instagram posts (or other social media snippets), either to report on news contained in the posts, like a celebrity’s Instagram announcement of her pregnancy or to cover the response on social media to news events.

They also use embedding to illustrate articles, as in the two examples described in the class complaint. The photographers acting as name plaintiffs alleged that publishers reproduced their Instagram photographs in online articles about photographers covering the 2020 racial justice protests and the 2016 presidential election. The class action, which is before U.S. District Judge Charles Breyer of San Francisco, claims that Instagram’s embedding tool has allowed digital publishers to make use of copyrighted photos without obtaining photographers’ permission or paying a licensing fee.

The photographers’ lawyers from the Duncan Firm, Hoben Law Firm, CERA, and the Law Offices of Todd M. Friedman devoted significant attention to the question of whether Instagram had entered into sublicense agreements with online publishers. Instagram’s terms of service arguably put Insta users on notice that the company can sublicense other websites to reproduce public Instagram posts.

Online publishers have claimed in suits by individual photographers that they relied on sublicense agreements with Instagram. Instagram and its parent Facebook said in 2020 that the company didn’t actually have any sublicense agreements, but the complaint claims Instagram was nevertheless actively pitching users’ content to digital publishers in order to raise the brand’s profile.

Instagram’s dismissal motion ignores all of the alleged drama about its sublicensing agreements (or lack thereof). The only significant licensing agreement, according to the company, is the deal users sign when they set up a public Instagram account, allowing Instagram to display and reproduce their content.

When digital publishers embed Instagram posts, the company said, they aren’t actually reproducing the content of the post, even though it may look that way to users. Instagram’s embedding tool, the company said, provides instructions in computer code to display images stored on Instagram’s servers on digital publishers’ websites. Embedding a photo or video is not the same thing as simply displaying the image, according to Instagram. It’s a technical act of incorporating an image stored elsewhere for display on the digital publisher’s site.

That’s almost exactly the scenario the 9th Circuit analyzed in 2007’s Perfect 10 case. The adult entertainment company sued Google and Amazon for displaying copyrighted images of its models. The appeals court said that when users clicked to see full-sized images, they were actually linking seamlessly to photos hosted by Perfect 10, not Google. The Copyright Act prohibits the unauthorized display of an image “fixed" in a tangible medium of expression.” The 9th Circuit in Perfect 10 interpreted that, in the context of digital photographs, to mean that the image is “fixed” when it is stored on a computer’s server. Because Google didn’t store the full-size Perfect 10 images, the 9th Circuit said, it isn’t liable for infringement.

The 9th Circuit’s now well-established “server test,” Instagram said, dooms the photographers’ case. Under the server test, it said, the online publishers that embedded Instagram posts cannot be directly liable for infringement because they didn’t host the photos in the posts. And with no direct liability, Instagram said, it can’t be liable for enabling infringement.

Plaintiffs' lawyer James Bartolomei of the Duncan Firm declined to comment on Instagram’s arguments. The company’s lawyers at Durie Tangri referred my query to a Facebook spokesperson who declined to comment.

The 9th Circuit’s server test is not universally beloved. As I’ve reported, a New York federal trial judge flat-out rejected its reasoning in a 2018 decision involving embedded tweets, sending digital media into a bit of a tizzy. The 2nd Circuit declined to take an interlocutory appeal in that case, which was subsequently settled.

But a handful of other judges have cast doubt on the test, which has not been explicitly adopted by any other circuit. (The 7th Circuit, in 2012’s Flava Works v. Gunter, ruled that a file-sharing site was not liable for infringing a video producer’s copyrights because it only enabled viewers to watch videos uploaded by other users.) The public interest group Public Citizen filed a test case in federal court in San Jose, California, in 2019 to reassess the contours of the server test, but the dispute fizzled.

It’s not clear whether Instagram had the server test in mind when it created its embedding tool in 2013. But we’ll find out in the photographers’ case just how powerful a defense the test remains 14 years after the 9th Circuit created it.