Emmerich Newspapers, Inc. v. Particle Media, Inc.

Fifth Circuit declines to adopt Ninth Circuit’s “server test” for determining whether linking or embedding content online violates copyright owner’s display right, instead holding that embedding website did not itself “transmit” the content that resided on the copyright owner’s server and therefore did not engage in an unauthorized public display, and court holds that although URLs are not categorically excluded from qualifying as copyright management information (CMI) under the DMCA, the functional nature of URLs sets high bar for CMI status. 

Emmerich Newspapers Inc., which owns and publishes more than 26 local news publications in Mississippi, Arkansas and Louisiana, sued Particle Media Inc., operator of the NewsBreak news aggregator app and website, alleging that Particle infringed Emmerich’s exclusive display rights under the Copyright Act by “framing” Emmerich’s articles within the NewsBreak app. Emmerich also claimed Particle violated the Digital Millenium Copyright Act (DMCA) by removing Emmerich’s URLs—which Emmerich argued constituted copyright management information (CMI) under the DMCA—when displaying Emmerich’s articles in Full-Text View under Particle’s own URLs.

The NewsBreak aggregator app and website collects local and national news content into a single newsfeed for users. Particle maintained licensing partnerships with certain publishers that permitted it to host partner content on its own servers in exchange for shared advertising revenue, but Emmerich was not among those partner publishers. For nonpartner publishers like Emmerich, the NewsBreak app displayed articles in Framed View—an in-line linking format in which users clicked a thumbnail from the NewsBreak newsfeed, after which the app opened an in-app browser frame that populated with the live content retrieved directly from the publisher’s own servers. The articles at issue appeared within a NewsBreak-branded frame that included NewsBreak’s own navigation elements, “like, comment, and share” buttons, and advertisements, allowing users to view the Emmerich article without necessarily realizing they had left the NewsBreak environment. Separately, from 2019 to 2021, certain Emmerich articles appeared on Android devices in Full-Text View, under which the articles were fully reproduced on NewsBreak’s own servers using Particle-controlled URLs, while Emmerich’s identifying URL information was removed. Particle characterized Full-Text View as the result of a software glitch that it corrected once discovered.

Emmerich filed two suits against Particle in 2023, which were later consolidated, asserting claims of copyright infringement related to more than 33,000 articles (subsequently narrowed to approximately 5,900), contending that Particle’s Framed View infringed Emmerich’s exclusive right under Section 106(5) to display its copyrighted works publicly, and that Particle’s Full-Text View removed Emmerich’s URLs in violation of the DMCA’s protections for CMI under Section 1202 of the Copyright Act.

On cross-motions, the district court granted summary judgment in favor of Emmerich on its Full-Text View copyright infringement claim, relying on a prior finding in earlier litigation between the parties that Full-Text View did not constitute fair use, but also granted summary judgment to Particle on the Framed View display-right claim and the DMCA claim. The district court certified two questions for interlocutory appeal: (1) whether the server test is the proper standard for evaluating display-right infringement under Section 106(5) and (2) whether URLs can constitute CMI under Section 1202.

The Fifth Circuit began by analyzing the statutory text of Section 106(5), which grants copyright owners the exclusive right “to display the copyrighted work publicly.” Parsing the nested definitions in Section 101, the court distilled the operative statutory language to “show a fixed work by transmitting it to the public.” The court then reviewed the Ninth Circuit’s “server test” as developed in Perfect 10, Inc. v. Amazon.com, Inc., under which an entity that does not store and serve copyrighted content from its own servers is not “displaying” that content, even if it in-line links to or frames the material. The Fifth Circuit surveyed subsequent authority addressing the server test, including the Ninth Circuit’s reaffirmation of the doctrine in Hunley v. Instagram, LLC, the Seventh Circuit’s parallel reasoning in Flava Works, Inc. v. Gunter, and district court decisions declining to adopt the test, including the Southern District of New York’s decision in Goldman v. Breitbart News Network, LLC and the Northern District of Texas’ decision on Leader’s Institute, LLC v. Jackson.

The court concluded that the server test improperly relied on the statutory term “fixed.” Under the Copyright Act, a work is fixed if it is “embodied” in a medium for “more than transitory duration.” But that definition does not impose a possession or storage requirement. The court reasoned that equating fixation with server possession stretched the Copyright Act’s plain language beyond its limits, because content displayed through embedded links may still be sufficiently permanent or stable to meet the statutory definition of “fixed.”

Instead, the court focused on the statutory term “transmit,” defined in Section 101 as “to communicate [a display] by any device or process whereby images or sounds are received beyond the place from which they are sent.” The court held that the critical question was whether the defendant actually transmitted the copyrighted content, not whether it possessed or stored a copy of that content. Analogizing Particle to a “switchboard operator” who cannot connect a call unless the recipient answers the phone, the court found that Particle merely directed users’ browsers to request content from Emmerich’s servers, while Emmerich—as the party hosting and ultimately delivering the content—performed the actual transmission. As the court explained, “[O]ne cannot transmit content it does not have”—a principle the court termed the “transmit requirement.”

The court explained that its transmit requirement involves a two-part inquiry: (1) locating where the transmission originates and (2) determining whether the transmission was permitted. On the first prong, the court drew support from its own precedent in BWP Media USA, Inc. v. T & S Software Associates, Inc., which adopted a volitional-conduct requirement for direct copyright infringement. In BWP Media, the court held that a party whose connection to the alleged infringement is purely passive—such as operating a forum on which users post infringing content—cannot be held liable as a direct infringer. The court found the same reasoning applicable because Particle’s role in operating a platform that received and displayed content transmitted by Emmerich was too attenuated to constitute a direct public display.

As to the second prong—whether the transmission was permitted—the court observed that the internet operates as an “opt-out” system, in which content is publicly accessible by default unless a publisher takes affirmative steps to restrict it, while copyright law operates as an “opt-in” system requiring permission for use. The court found that the transmit requirement helps reconcile this inherent tension by focusing on whether the copyright owner authorized the transmission, drawing on implied license principles discussed in Field v. Google Inc. The court noted that publishers have technological tools to block unwanted embedding and indexing—including paywalls, meta-tags and HTML-based framing restrictions—and explained that the availability and use of such tools may inform whether a transmission was permitted.

The court identified several limiting principles to its ruling. First, the ruling was rendered on interlocutory appeal without the benefit of a full factual record, so the court reserved the question of how the transmit requirement would apply where a copyright owner lacks the technological capability to reject a transmission request. Second, the court identified existing statutory safeguards that continue to protect copyright owners, including the DMCA’s anti-circumvention provisions under Section 1201. Third, the court emphasized that its holding does not foreclose secondary liability theories, which remain available against parties that facilitate, contribute to or profit from infringement.

On the DMCA claim, the Court of Appeals considered whether URLs can qualify as CMI under Section 1202(c), which protects certain categories of identifying information “conveyed in connection with” copyrighted works. The court reversed the district court’s categorical holding that URLs can never constitute CMI but set a high bar for URL-based CMI claims.

The court analyzed URLs under three provisions of Section 1202(c). First, addressing Section 1202(c)(3), which covers the “name of, and other identifying information about, the copyright owner,” the court held that a URL’s domain name cannot, standing alone, establish CMI status because it may not correspond to the actual copyright owner. The court pointed to the facts of the case to illustrate that disconnect, where Emmerich’s individual publications had assigned their copyright interests to the parent company, and so the domain name did not correspond to the name of the copyright owner.

Second, with respect to Section 1202(c)(1), which protects the “title and other information identifying the work,” the court acknowledged similarities to its prior decision in Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, L.P., holding that PDF filenames may constitute CMI. The court nevertheless distinguished URLs, reasoning that a URL’s website descriptor may not correspond to the title of the copyrighted work, that URLs primarily serve a locational rather than identifying function, and that the variability of URL formatting limits their ability to reliably communicate identifying information about a copyrighted work.

Third, as to Section 1202(c)(7), which protects “links to such information,” the court agreed with Particle that the link contemplated by the statute refers to a link directing users from copyrighted content to a separate source containing CMI. The court reasoned that it would be circular to treat a URL that locates the copyrighted work as itself constituting CMI under Section 1202(c)(7).

The court did not categorically foreclose that URLs could qualify as CMI in appropriate circumstances, emphasizing that the inquiry is inherently fact-specific. The court identified several factors relevant to that determination, including whether the domain name corresponds to the copyright owner, whether the copyright covers the website as a whole or only specific pages, whether the URL is sufficiently stable and, above all, whether the URL clearly conveys CMI to the viewer.

On the question of whether removal of a qualifying URL could violate Section 1202(b)(1), the court recognized the potentially wide-reaching implications of such a holding, given the prevalence of URL shortening and proxy use on the internet. The court remanded for further factual development, including consideration of whether a meaningful distinction exists between using a URL shortener that strips purported CMI and framing content under a different URL that omits the original URL entirely.

The court remanded the case for further factual development on both issues consistent with the opinion.

Summary prepared by Tal Dickstein and Jeff Prystowsky