District court denies media company’s motion to dismiss copyright infringement claim, holding embedding video of emaciated polar bear in digital article constituted unauthorized display under Copyright Act, and fair use defense could not be decided without more developed factual record.
Paul Nicklen, a nature photographer and filmmaker, is the author and registered copyright owner of a video of an emaciated polar bear wandering the Canadian Arctic, which he initially posted to his Instagram and Facebook accounts with a caption encouraging his followers to consider the “haunt[ing]” and “soul-crushing” scene, and inviting them to mitigate the negative consequences of climate change. The caption directed those seeking “[t]o license or use [the video] in a commercial player” to contact Caters News.
Sinclair Broadcast Group Inc., a media conglomerate, published an article titled “Starving polar bear goes viral in heartbreaking video,” which embedded the video using Instagram’s application programing interface (API) embed tool. The API tool allowed readers to view the video directly in the article, without having to navigate to Nicklen’s Facebook or Instagram page, and caused the first frame of the video to display within the article even without the user choosing to watch the entire video. The article and video were also allegedly reposted on Sinclair’s television stations’ websites. Sinclair did not obtain a license or seek Nicklen’s consent to use the video, and ignored a takedown notice issued by Nicklen.
Nicklen sued Sinclair and affiliated companies for copyright infringement, alleging that Sinclair infringed his copyright in the video by embedding it on Sinclair’s websites using the Instagram API. On Sinclair’s motion to dismiss, the district court identified the “fundamental issue” as whether “embedding a video ‘displays’ the video within the meaning of the Copyright Act,” and held that it does.
The Copyright Act defines the “display” of a work to mean “showing a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.” The court found that, under the Copyright Act, a defendant “violates an author’s exclusive right to display an audiovisual work publicly when the defendant without authorization causes a copy of the work, or individual images of the work, to be seen—whether directly or by means of any device or process known in 1976 or developed thereafter.” Therefore, a person displays a work even when causing a copy of the work to be shown. After considering the Copyright Act’s text and legislative history, the court held that embedding a video on a website displays that video because “to embed a video is to show the video or individual images of the video nonsequentially by means of a device or process.”
The court declined to adopt the Ninth Circuit’s “server rule,” which states that images that are embedded and therefore remain on a third-party server and are not fixed in the memory of the defendant’s computer servers are not displayed. The court held that the server rule is contrary to the text and legislative history of the Copyright Act, because it would effectively reduce the display right to the limited right of first publication. The court ultimately held that “[w]hen a user opens up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not, the Ninth Circuit’s approach is inapt.” The court also rejected Sinclair’s argument that an author wishing to control how his or her work is shown should refrain from sharing it on social media. Consequently, the court held that Nicklen plausibly alleged that the Sinclair defendants violated his display right by embedding the video without authorization.
Sinclair also argued that it did not infringe Nicklen’s copyright because the fair use doctrine protects its use of the video. The district court rejected that argument as well, finding that the balance of the four fair use factors favored Nicklen.
The first factor—the purpose and character of the use—weighed in favor of Sinclair, according to the court. While the use of the video was commercial because it was displayed on for-profit websites, the court acknowledged it could be considered transformative if the purpose of the news report was to convey information to the public accurately. Under existing case law, a news article, such as the one published by Sinclair, can be deemed as transformative where the photograph itself is the subject of a story. Because Sinclair was reporting on the popularity of the video and not using the video to illustrate a story about climate change, the first factor weighed in favor of fair use.
The second factor—the nature of the copyrighted work—did not weigh strongly either for or against fair use. Even though factual or previously published works are entitled to thinner copyright protection, the court could not make a determination as to whether the video was created for news-gathering or artistic purposes.
The third factor—the amount and substantiality of the portion used—weighed in favor of Nicklen, because Sinclair embedded the entire video on its websites when it could have simply embedded images from the video or screenshots of the number of “likes” and “comments” on the original posting in order to tell the story of the video’s popularity.
The fourth factor, the effect of the use on the market, also weighed against fair use. The court acknowledged that it is unlikely that a news article regarding a viral video would threaten to deprive the rights holder of significant revenues, because the news article serves a different purpose and no one interested in purchasing the work would find the news article an adequate substitute. Nevertheless, the court found that Sinclair’s use of the video would harm the licensing market for Nicklen’s video, because it would eliminate the need of news outlets to license the video directly from Nicklen.
The court ultimately held that, on balance, the fair use factors weighed in favor of Nicklen. It noted, however, that courts rarely make fair use determinations at the motion to dismiss stage, because the inquiry is “fact-driven.” The court therefore denied Sinclair’s motion to dismiss on fair use grounds, but explained that the fair use analysis could benefit from a better-developed factual record.
Summary prepared by Tal Dickstein and Ava Badiee
Chair, Intellectual Property Protection; Chair, Luxury Brands; Deputy Chair, Advanced Media and Technology