Embedding Images Can Infringe Copyrights

A blue box with the letters CL in white

On December 7, 2020, in the Southern District Court of Manhattan, Paul Nicklen and Cristina Mittermeier filed a complaint against a host of defendants too numerous to list here accusing the defendants of “embedding and/or displaying Plaintiff Nicklen’s Video and, in four instances, Plaintiff Mittermeier’s photo. The case is styled: “Nicklen v. Sinclair Broadcast Group – 1:20-cv-10300.” The complaint was subsequently amended on December 10, 2020.

“Paul Nicklen a resident and domiciled in Canada is an iconic, renowned Canadian photographer, filmmaker and marine biologist. Nicklen's work is regularly featured in National Geographic Magazine, the New York Times, and many other publications with a global reach,” the complaint alleged.

“Cristina Mittermeier is an acclaimed Mexican photographer and filmmaker that often collaborates with Plaintiff Nicklen on capturing rare, wildlife images and videos throughout the world in some of the harshest, almost inaccessible regions on planet Earth,” the complaint further recited.

The case proceeded along until March 8, 2021, when Sinclair filed a motion to dismiss the complaint asserting that defendants couldn't have infringed the copyright in Paul Nicklen's video because they only embedded it on their websites from Instagram or Facebook.

U.S. District Judge for the Southern District of New York Jed Rakoff denied Sinclair's (defendants) motion to dismiss. In articulating his decision, Judge Jed Rakoff disagreed with the 9th U.S. Circuit Court of Appeals on its controversial server test, also known as the server rule. Said rule states that a website can only infringe a copyright by displaying an image if it also stores a copy on its server, thus finding the rule contradicts and thus offends 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."

In his opinion, Judge Rakoff stated 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,'" thereby fomenting a circuit split.

Judge Rakoff further 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."

Judge 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.

Judge Rakoff also denied Sinclair's (defendants) motion to dismiss based on fair use, finding that question couldn't be resolved at this early stage of the case. With the proliferation of videos on the Internet, this should be an issue of great interest to Internauts of all stripes and we haven’t seen the end of this issue. Defendants are likely to appeal this case. In turn, whoever loses on appeal will most likely appeal to the to the U.S. Supreme Court. It is safe to say that this case will most likely reach the U.S. Supreme Court. Stay tuned!

If you have any questions, do not hesitate to contact us at: emmanuel.coffy@coffylaw.com

Emmanuel Coffy

COFFYLAW, LLC

Aug. 7, 2021


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