Google Gets Free Pass to Post Perfect10 Nudes

May 29, 2007 on 1:47 pm | In DMCA |

Google’s Images are a Fair use and By the Way Their Billions are Incidental, Says the Court of Appeals for the 9th Circuit

By Gregory Alan Rutchik, founding lawyer, the arts and technology law group (www.rutchik.com), an infringement litigation firm in San Francisco and Santa Monica, California. Rutchik is co-chair of the American Bar Associations’ Copyright section subcommittee on Pictorial, Sculptural, Visual and Graphic Acts.

Last week in Perfect 10 v. Amazon and Google, May, 16, 2007, Decision No. 06-55405 entitled PERFECT 10, INC. V AMAZON. INC., , the Court of Appeals for the Ninth Circuit delivered – in a de novo decision - a complete pass (ie victory) to Google and drove the ship of fair use through conventional wisdom on the author’s presumed exclusive right to control the display of their work. This result reads as an almost guidebook for Google – as a search engine - to continue doing what it is doing without modification and escape direct copyright infringement liability, and thus secondary liability. The result of the decision undid Perfect 10’s preliminary injunction and leaves open whether or not the DMCA’s applies here. The decision is so complementary of Google’s approach to another’s copyrighted work, the copyright author community is left holding its head in its hands.

Perfect 10 argues that Google displays a copy of the full- size images by framing the full-size images, which gives the impression that Google is showing the image within a single Google webpage.

Is Perfect 10 and any copyright author entitled to injunctive relief – to stop – an unauthorized party from (a) using thumb nails; and (b) instructing a browser to go out and get an image to display that image on the user’s browser? No and No. What amazes this reader however is to get there, the Court of Appeal made three astonishing conclusions: (1) the exclusive display right does not include preventing others from forcing the display but is somehow limited to those that have an actual copy and then do the displaying – never Google; (2) “Google is incidental”; and (3) Google’s search result use is significantly transformative. Although this Court does not get to the application of the DMCA here, it does inform that Google cannot – for technical reasons - police its site. As an aside, unless Viacom comes up with some fancy footwork, this Court’s position on the DMCA may be the death knell of Viacom’s new assertions otherwise. (See http://www.thepiracylawyer.com/2007/04/03/viacom-v-google-viacom-and-google-had-better-read-the-perfect-10-case/)

In sum, here Perfect 10, owner of copyrighted photographs of nude models, “succeeded in showing it would prevail in its prima facie case that Google’s thumbnail images infringe Perfect 10’s display rights,” but failed to show that Google could not prevail on its defense of fair use ala Kelly v. Ariba and Sony. Google can prevail – this Court found – because, believe it or not, its thumb nail images are transformative. That is, this Court found that Google does something new to the Perfect 10 images that serves a public benefit. The fact that Google does this while making tons of money, and despite the other factors often at play in a fair use defense are not at issue.

When a user goes to Google and does a search on a model, for example, the following type of page results. On the top is a thumb nail image with some text, here “Image may be scaled down and subject to copyright.” On the bottom – below a frame – is the actual page on which the thumb nail image resides.

1) If you Google is displaying anything when it serves up the full image below the frame as a search result: You like “Perfect 10 [are] mistaken.”

It was thought that the conventional wisdom on the right to display was its plain meaning. 17 USC 106(5), the fifth of the magical rights states:

in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; (emphasis added)

Perfect 10 took two approaches that the Court of Appeals now says are “mistaken.”
The first criticism of Perfect 10’s approach is rather dismissive. “While in-line linking and framing may cause some computer users to believe they are viewing a single Google webpage, the Copyright Act, unlike the Trademark Act, does not protect a copyright holder against acts that cause consumer confusion.” Id at 5772.

The second criticism – hidden in a footnote - of Perfect 10’s approach will have far reaching implications for the – hereto know believe to be fundamental right of a copyright holder.

Perfect 10 also argues that “Google violates Perfect 10’s right to display full-size images because Google’s in-line linking meets the Copyright Act’s definition of “to perform or display a work ‘publicly.’ ” 17 U.S.C. § 101. This phrase means “to transmit or otherwise communicate a performance or display of the work to . . . the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.” Id. Perfect 10 is mistaken. Google’s activities do not meet this definition because Google transmits or communicates only an address which directs a user’s browser to the location where a copy of the full-size image is displayed. Google does not communicate a display of the work itself.

If the display right is or was in fact exclusive, wouldn’t this mean that the copyright author should be entitled to control when and how the image is displayed? Not according to Judge Ikuta, the writer of the decision. Google’s code acts not unlike a car jacker, forcing the browser to display a copyrighted image. Or more accurately Google is like a tipper, telling the user’s browser where to get to display the image. Being a tipper – a code tipper here – is not an infringement of the right to display. Communicating “only” an address is not infringing. In this era of zeros and ones, it is virtually impossible to infringe the display right so long as all you’re doing is pointing a viewer to the location where the copyrighted image resides, whether the copyright owner permits the viewing or not.

2) Google is Incidental and Transformative.

The initial analysis of this Court left intact the Kelly v. Arriba Soft Corp., conclusion that “use of thumbnail images was a fair use primarily based on the transformative nature of a search engine and its benefit to the public.” Id at 5777 See 336 F.3d 811, 818-22. This note will focus on the diverging opinion of the Court of Appeals and the lower court on the notion of whether Google sufficiently transformed the underlying work to fit into the fair use defense. In fact, to fit in the Kelly analysis, this Court had to find that Google’s use was transformative and a benefit to the public. It did just that.

A) GOOGLE IS INCIDENTAL?

The Court dismissed any assertion that Google “intentionally misappropriated the copyright owners’ works for the purpose of commercial exploitation, Google is operating a comprehensive search engine that only incidentally indexes infringing websites” despite the billions of dollars Google makes off of the ads that run along and within the search results at issue. Again, the fatal blow delivered in a footnote . (emphasis added)

Had Perfect 10 succeeded in showing that Google’s use was merely for commercial purposes – to feed its billion dollar ad machine, they could have been denied the fair use defense. Perfect 10 failed here too.

Following the first element of the Kelly fair use analysis, the Court found the purpose and character of Google use to be incidentally commercial and thus transformative. To meet this important prong, the Court helped establish that Google’s use does not “merely supersede the objects of the original creation” but rather “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” It was not, for example, the publication of the “heart” of an unpublished work, or using a copy to save the cost of buying additional copies or any other type of use that offended notions of good faith and fair dealing. The Court of Appeals’ conclusion that Google’s search engine indexing is “incidental” is not incidental however. Rather, “Google’s inclusion of thumbnail images derived from infringing websites in its Internet-wide search engine activities does not preclude Google from raising a fair use defense.”

B) Google is highly transformative.

Google’s use of Perfect 10’s images are “in a new context to serve a different purpose” than Perfect 10. Thus, Google is highly transformative, it seems – and even more so than the Pretty Woman” parody — “because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work.”

As if that was not enough, the Court endorses Google as serving the public good.

We conclude that the significantly transformative
nature of Google’s search engine, particularly in light of its
public benefit, outweighs Google’s superseding and commer-
cial uses of the thumbnails in this case. In reaching this con-
clusion, we note the importance of analyzing fair use flexibly
in light of new circumstances. Sony, 464 U.S. at 431-32; id.
at 448 n.31 (“ ‘[Section 107] endorses the purpose and gen-
eral scope of the judicial doctrine of fair use, but there is no
disposition to freeze the doctrine in the statute, especially dur-
ing a period of rapid technological change.’ ”) (quoting H.R.
Rep. No. 94-1476, p. 65-66 (1976), U.S. Code Cong. &
Admin. News 1976, p. 5680)). We are also mindful of the
Supreme Court’s direction that “the more transformative the
new work, the less will be the significance of other factors,
like commercialism, that may weigh against a finding of fair
use.” Campbell, 510 U.S. at 579.

It is implied by this decision that the Court of Appeals, diverging completely from the lower court, felt that Google’s use was so transformative that the other factors of fair use were less significant.

In the end, money doesn’t matter – at least to the Court of Appeals. Reversing the District Court, Google’s transformative use here – in thumbnails - outweighed the fact that Google was ‘more commercial than Arriba’s use” in Kelly. “Instead, we conclude that the transformative nature of Google’s use is more significant than any incidental superseding use or the minor commercial aspects of Google’s search engine and website.”

C) At least the Court knows Beauty.

In a small concession to photographs, “simple”, “unretouched” photos of nudes are deserving of protection. Although Google contended that Perfect 10’s photographic images are less creative and less deserving of protection — because Perfect 10 boasts of its un-retouched photos showing the natural beauty of its models, the Court left untouched the district court’s position that Perfect 10’s photos are no less deserving of protection.

D) Google provides “a significant benefit to the public.”

The Court’s dismissal of Perfect 10, best said in the Court’s own words Given Google’s transformative use of the thumbnails,

the unproven use of Google’s thumbnails for cell phone downloads, and considering the other fair use factors, all in light of the purpose of copyright, Google’s use of Perfect 10’s thumbnails is a fair use.

2) No secondary liability because no direct infringement.

Not surprisingly, once the Court of Appeals found that the fair use defense trumped any assertion of direct infringement, Perfect 10’s claim of secondary infringement failed too. But in delivering the death knell to secondary infringement, the Court of Appeals added important fodder to Google’s arsenal how it does what it does. In sum, cache copies are not infringing copies because “as noted by the district court, a cache copies no
more than is necessary to assist the user in Internet use. It is
designed to enhance an individual’s computer use, not to
supersede the copyright holders’ exploitation of their works.
Such automatic background copying has no more than a mini-
mal effect on Perfect 10’s rights, but a considerable public
benefit.” 5788

3) Google is no Napster.

In a blow to Perfect10’s “Google is Napster” analogy, the Court of Appeals does away with Perfect10’s DMCA argument – that it does not provide a shield for Google — as well. Most significantly is what this decision tells us about the 9th Circuit’s position on the burden a plaintiff must bare when attempting to shift the burden on a technology company seeking shelter from the shores of the DMCA.

A couple of important “take aways” for those accused of contributory infringement and seeking to avoid the plaintiff’s claim that DMCA does not apply.

1) Without a showing of actual knowledge, there is no claim of contributory infringement.

Although “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” without a showing of actual knowledge by Google, no liability found here either.

Applying our test, Google could be held contributorily liable 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.

But, Perfect 10 – it seems – simply did not meet its burden . Will Viacom fair any better in their own push to make Google pay?

2) If Google cannot be blamed for only being able to do so much, how could a lesser being be blamed?

In sum, the Court of Appeals bought hook line and sinker that Google really cannot control what it serves up. Does that mean that Google can prevent serving up as a result of a key word search, a key word that is intentionally placed on a site that infringes that of another?

“Google cannot stop any of the third-party websites from reproducing, displaying, and distributing unauthorized copies of Perfect 10’s images because that infringing conduct takes place on the third-party websites. Google cannot terminate those third-party websites or block their ability to “host and serve infringing full-size images” on the Internet. Perfect 10, 416 F. Supp. 2d at 831

If Google does not have the ability to police its version of the web now, how will the Motion Picture Association or Viacom for it to do it? It won’t. Digital rights management technology solutions are not ready for prime time for many reasons.
Without image-recognition technology, Google lacks the practical ability to police the infringing activities of third-party websites. This distinguishes Google from the defendants held liable in Napster and Fonovisa. See
Napster, 239 F.3d at 1023-24 (Napster had the ability to iden-
tify and police infringing conduct by searching its index for
song titles) .

Despite its throngs of paper and what looked like good proof, Perfect 10 “has not established a likelihood of proving the [control] prong necessary for vicarious liability.” Perfect 10, 416 F. Supp. 2d at 858.15

End Notes.

The decision is a consolidated decision of the following actions: No. 06-55405, Perfect 10, Inc. v. Amazon, Inc., A9.com; No. 06-55406, Perfect 10, Inc. v. Google, Inc.; No. 06-55425 Perfect 10, Inc. v. Google, Inc.; and Nos. 06-55759, 06-55854 and )6-55877, Perfect 10, Inc. v. Google. Inc.
We review the district court’s grant or denial of a preliminary injunction for an abuse of discretion. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). The district court must support a preliminary injunction with findings of fact, which we review for clear error. Earth Island Inst. v. U.S. Forest Serv., 442 F.3d 1147, 1156 (9th Cir. 2006). We review the district court’s conclusions of law de novo. Napster, 239 F.3d at 1013. Id. at 5765
“We reverse the district court’s ruling and vacate the preliminary injunction regarding Google’s use of thumb- nail versions of Perfect 10’s images.17 We reverse the district
court’s rejection of the claims that Google and Amazon.com are secondarily liable for infringement of Perfect 10’s full- size images. 5801
In addition to briefs filed by the litigants, amicus curiae – friends of the Court briefs were filed by the following supporters of Google: the Electronic Frontier Foundation and many associations of libraries including the American Library Association, Medical Library Association, Association of Law Libraries, Research Libraries; and the supporters of Perfect 10: various photographer related associations including the American Society of Media Photographers, Inc., the Motion Picture Association of America and as supporters of neither party: the Record Industry Association of America and National Music Publishers’ Association.
Id. 5772.
Id. 5775.
Id at 5772: note 7.
Id. 5778 note 8
The district court stated that Google’s AdSense programs as a
whole contributed “$630 million, or 46% of total revenues”
to Google’s bottom line, but noted that this figure did not
“break down the much smaller amount attributable to web-
sites that contain infringing content.” Id. at 847 & n.12 (inter-
nal quotation omitted).
Id at 5778 citing Campbell, 510 US at 579.
Id at 5779.
Id.
Id. 5782.
Id. 5783
Id. at 5786
Id. at 5788.
Id. at 5793.
“Perfect 10 points to no evidence that users logging onto the Perfect 10 site with unauthorized passwords infringed Perfect 10’s exclusive rights under section 106. In the absence of evidence that
Google’s actions led to any direct infringement, this argument does not
assist Perfect 10 in establishing that it would prevail on the merits of its
contributory liability claim. See Napster, 239 F.3d at 1013 n.2
(“Secondary liability for copyright infringement does not exist in the
absence of direct infringement by a third party.”).
5793 note 13

Id at 5796.