DMCA 512(c) Safe Harbor Doesn’t Apply to Photo Embedding–Great Bowery v. Best Little Sites

This case involves Annie Leibovitz photos, represented by licensing and enforcement agency Trunk Archive. Allegedly, users of (CBM) embedded the Leibovitz photos into the site by linking to the images hosted on third-party sites. Once CBM learned of the links (via the complaint), CBM disabled them.

Embedding and the Server Test

The Utah federal judge is persuaded by the Perfect 10 v. Google Ninth Circuit’s “server” test, which says that 106 violations take place on the hosting server, not on third-party services embedding links to the file:

[the 9th Circuit’s decision in] Perfect 10 offers a straightforward, bright-line test for determining whether images displayed on a website violate the Copyright Act. Applied here, if the Subject Images were not stored on CBM Defendants’ servers or on servers that they controlled, then CBM Defendants have a possible defense to infringement….

the images were not stored on CBM Defendants’ systems. They were fixed on a third-party server and displayed on users’ computer screens. For this reason, the “display” of the images on CBM’s website—even through the process of embedding—did not automatically create infringement

A reminder that the server test is on appeal in the Ninth Circuit (in two cases: Hunley v. Instagram–oral arguments were in February–and Miller v. 4Internet). So this court is adopting a test that the Ninth Circuit could walk away from imminently.

512 Safe Harbor

CBM also argued that it qualified for the 512(c) safe harbor, but this goes sideways. After all, the point of the server test is that CBM isn’t hosting the files, so Trunk Archive challenged if CBM was “storing” the files at users’ directions. This isn’t a hard call: the court says “Simply put, the safe harbor defense requires an underlying act of user-directed storage….Because they disclaim ownership and control over the systems containing the Subject Images, CBM Defendants cannot now rely on the safe harbor defense.”

But…if CBM users are linking to the infringing files and CBM is not hosting them, wouldn’t 512(d) apply? The court says that CBM didn’t argue 512(d) and therefore the defense is waived. CBM could have argued 512(c)/512(d) in the alternative–if Trunk Archive was pressing down on the storage issue, it would have seemingly conceded CBM’s eligibility for 512(d). I’m confused why the defense would place its bets exclusively on 512(c).

Case citation: Great Bowery v. Best Little Sites, 2023 WL 3212619 (D. Utah May 3, 2023)