The Server Test Suffers A Major Blow

In May 2007, the Ninth Circuit Court of Appeals handed down one of the most important rulings in the history of the internet, the Perfect 10 v Google ruling.

The ruling established the “server test,” which allowed sites to embed copyright-protected content without infringement. Since the site wasn’t hosting the content, it wasn’t responsible for “displaying” it under this test.

It was a rare bright-line rule under copyright. Many tech advocates cheered the rule, and many rightsholders have decried it.

However, new decisions have chipped away at the server test over the past decade. Several other courts have challenged it, including a major Supreme Court decision.

But now, it may be facing its biggest threat yet. A district court within the Tenth Circuit rejected the server test, setting the stage for another challenge to the controversial rule.

To understand why this is so important, we must examine the history of the server test and the background of this latest case.

The Origins of the Server Test

In the Perfect 10 v Google case, adult content company Perfect 10 accused Google of copyright infringement over its Google Image Search feature. The feature allowed users to search thumbnails of images and then click to get original photos.

However, some of those images were created by Perfect 10 and were used without permission.

The court found that Google wasn’t liable for copyright infringement in its decision. Since Google hotlinked the full-sized images, they weren’t stored on Google’s servers. As such, the court said Google was not displaying the images and was not liable.

That, in turn, created the server test. It simply states that embedding an image (or other content) is not the same as displaying it on your site. This ruling paved the way for embedding a wide variety of content, including YouTube videos, social media posts and more.

The ruling stood largely unchallenged for about seven years. But that was about to change.

The Aereo Decision and Aftermath

However, things took a turn in June 2014 when the Supreme Court ruled against the TV streaming service Aereo.

Aereo was a service that used a series of tiny antennae to stream over-the-air broadcast TV to users. Broadcasters sued, but Aereo claimed to be non-infringing. They claimed that their use of one antenna per customer meant that their service was fully legal.

The Supreme Court disagreed. It said that Aereo functions as a cable company and that the technological distinctions weren’t relevant. While the case didn’t directly address the server test, the server test is such a “technological distinction,” and the writing was on the wall.

In February 2018, a New York district court ruled that embedding a tweet is a potential copyright infringement. In July 2021, another New York court found similar in a case over Facebook embedding. Both cases highly cited Aereo.

However, in July 2023, the server test survived a challenge as the Ninth Circuit reaffirmed it in a case over Instagram embedding. Even then, the court expressed reluctance to do so. It said the Aereo case wasn’t relevant since it dealt with the performance right, not the display right.

It also said it couldn’t overturn the server test without an en banc hearing. However, the plaintiffs were denied an en banc hearing when they sought one. As such the server test was alive and well, but only in the Ninth Circuit.

However, now, there may be an even bigger challenge to the test.

A New Challenger Approaches

The case pits Trunk Archive against the site comicbookmovie.com (CBM), its owner and two of its authors.

According to the decision (embedded below), Trunk Archive has the exclusive rights to a series of photographs taken by celebrity photographer Annie Leibovitz. This collection included images of actors featured in two separate Star Wars films.

Vanity Fair published those images in two separate articles, one in 2017 and one in 2019.

Between October 2017 and January 2020, CBM published fifteen articles featuring those images. Mark Cassidy authored nine of them, and Joshua Wilding authored the other six. Both Cassidy and Wilding are considered users of the site, not employees.

However, rather than downloading the images and reuploading them, Cassidy and Wilding embedded the photos in the articles using HTML code. As such, they argued the articles were non-infringing under the server test.

Initially, the court agreed. It sided with the defendants and backed the server test. However, when Trunk Archive filed for summary judgment, the court reconsidered and vacated its own previous opinion on embedding.

In his ruling, Judge David Barlow said:

The court now finds the “server” test to be unpersuasive. The Perfect 10 court reasoned that Google did not “display” the copyrighted works at issue through embedded links because it did not possess a copy of the works on its servers. But possession of a physical copy is not a prerequisite to displaying a copyrighted work. Instead, the plain text of the Act makes clear that “[t]o ‘display’ a work means to show a copy of it, either directly or by . . . any other device or process[.]”

It’s an incredibly strong condemnation of the server test, and it may pose the biggest challenge to the test yet.

Why This Decision Matters

This decision has largely flown under the radar. I only heard about it yesterday. However, there are two key reasons that it’s going to be a case to watch.

1. It’s a Reconsideration: It’s relatively rare for courts to vacate their own decisions on reconsideration. Judge Barlow originally upheld the server test but reversed course on reconsideration and did so with a very scathing rebuke.
2. It’s in the Tenth Circuit: The Tenth Circuit is one of the many circuits where the server rule hasn’t been significantly discussed. However, district courts previously treated the Perfect 10 ruling as precedent, even if they were outside the Ninth Circuit. That, as this ruling makes clear, is no longer the case.

While the Tenth Circuit could possibly overturn this decision, it would have to find reasons to do so and explain why Judge Barlow’s reasoning was, in their mind, wrong. That seems to be a tall order given the amount of examination he has given the question in his decision.

Ultimately, it’s extremely rare for a district court judge to set aside precedent, even from another circuit, especially upon reconsideration. It’s a bold stand against the server test and one that may be another nail in the coffin for it.

Bottom Line

One of the major shifts in copyright over the past 20 years has been that courts have taken less interest in how something works and are looking at whether the outcome is infringing. The Aereo ruling is the poster child for that shift.

However, the server test remained even as the Aereo ruling pushed courts away from focusing on technological distinctions. Even as judges in other circuits rebuked the server test wholesale, in the Ninth, it remained unquestioned.

Now, it’s being strongly questioned in another circuit. While it may not be the final death knell for the server test, it is another crack in the armor.

It’s becoming increasingly difficult to justify this rule. However, barring a Supreme Court decision, it’s unlikely to be killed off completely. That said, a major challenge in another circuit is bad news for the test, posing a real challenge for any court to justify it.

This will be a case to watch, as it will likely be appealed. Simply put, what happens next may determine the future of the server test.

Note: This article was updated to correct an error that Utah is in the Tenth Circuit, not the Ninth. Big thanks to Scott Alan Burroughs for the heads-up!

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