United States: A Picture Worth a Thousand Lawsuits

Originally published in Managing IP, March 2002

There is a vast body of internet IP law in the US. Much legislation has been passed and numerous judgments made to clarify the uncertainty generated by the new technology. Yet no legislative or judicial authority has addressed the legality of framing or inline linking copyrighted works on others’ websites. That is, not until now.

A recent decision by the US Court of Appeals for the Ninth Circuit leads to the inescapable conclusion that unlicensed inline linking and framing of copyright images violates the public display right of copyright owners and, therefore, in the absence of a legitimate legal defence, constitutes copyright infringement.

On February 6 2002, the Ninth Circuit affirmed in part and reversed in part the ruling of the US District Court for the Central District of California in the case of Kelly v Arriba Soft Corp. In that case, the district court found that the copying of images for use in an image search engine was permissible under the fair-use exceptions in the Copyright Act of 1976. The Ninth Circuit agreed with the district court in finding that the use of low-resolution, thumbnail reproductions of copyrighted images in the results pages of an image search engine is a fair use under the Act. But the display of full-size, full-resolution images of the copyrighted works in frames or inline links on the defendant’s website was not protected under the fair-use exception and infringed the plaintiff’s copyrights.

Copyright is actually a bundle of rights comprising the right to reproduce, distribute, perform, publicly display and create derivative works from the copyrighted work. Infringement of any one of these rights constitutes copyright infringement. Understanding that reproduction or copying is not an essential element of a copyright infringement claim is central to understanding the court’s ruling. Also essential to understanding the ruling are the court’s definitions of ‘inline linking’ and ‘framing’ (see box).

"The process of importing an image from another website is called inline linking. The image imported from another website is displayed as though it is part of the current web page, surrounded by the current web pages’ text and advertising. As a result, although the image in Arriba’s Image Attributes page was directly from the originating website, and not copied onto Arriba’s site, the user typically would not realize that the image actually resided on another website…. Alternatively, by clicking on the ‘Source’ link or the thumbnail from the results page, the site produced two new windows on top of the Arriba page. The window in the forefront contained the full-sized image, imported directly from the originating website. Underneath that was another window displaying the originating web page. This technique is known as framing. The image from a second website is viewed within a frame that is pulled into the primary site’s web page."

The plaintiff in Kelly, a professional photographer, brought suit against the defendant who was an operator of an internet search engine that displayed results in the form of thumbnail images. The defendant obtained its images by copying them from other websites and then creating low-resolution thumbnail reproductions of the images for reproduction on search results pages. Once the search results were served, a user could click on one of the defendant’s thumbnail images and view a full-size, full-resolution version of the image. However, unlike a normal search engine that sends the user to the website with the desired material via a hyperlink, this defendant brought the image back to its website via inline linking and framing technology.

The court observed that an act of copying the images from other websites is copyright infringement. The defendant argued that such use was a fair use under Section 107 of the Copyright Act. The court agreed.

In determining whether or not a use is a fair use, the court must consider four factors:

• the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• the nature of the copyrighted work;
• the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use on the potential market for, or value of, the copyrighted work.

In considering the purpose and character of use, courts focus on whether or not a use is transformative. A use is transformative if it does not merely supersede the original and, instead, adds something new with a further purpose or different character. Here, the court found that the use of the low-resolution thumbnail images was transformative because the defendant used them to improve access to information and not to create artistic impression. The court excused the defendant’s use of the entire image because such use was necessary to enable users to determine whether or not they wanted to view the full image. The remaining fair use factors did not figure prominently in the decision.

The court reached the opposite conclusion on the defendant’s inline linking and framing of the full-size, full-resolution images. This use did not involve copying. Instead, the defendant imported the images directly from the plaintiff’s website to its own site — a violation of the plaintiff’s exclusive public display right. This use was not transformative as the images were provided to users for precisely the same purpose as those provided by the plaintiff. As a result, the defendant’s use was likely to affect the market for the plaintiff’s work.

The Ninth Circuit’s ruling is a clear pronouncement that non-transformative framing of copyrightable images from another website without permission constitutes infringement, unless there is legitimate legal defence. While the public display right invoked by the court is more commonly associated with visual and musical works, nothing in the court’s opinion suggests that it would have reached a different conclusion had the copyrighted work in question been textual in nature. Therefore, website operators in general should keep the Kelly opinion in mind when deciding whether or not to provide inline links to, or frame content from, other websites without permission.