FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`ALEXIS HUNLEY; MATTHEW
`SCOTT BRAUER, Individually and
`On Behalf of All Others Similarly
`Situated,
`
`
`
`
` v.
`
`INSTAGRAM, LLC,
`
`
`
`
`Plaintiffs-Appellants,
`
`
` No. 22-15293
`
`D.C. No. 3:21-cv-
`03778-CRB
`
`
`OPINION
`
`
`
`
`
` Defendant-Appellee.
`
`Appeal from the United States District Court
`for the Northern District of California
`Charles R. Breyer, District Judge, Presiding
`
`Argued and Submitted February 6, 2023
`San Francisco, California
`
`Filed July 17, 2023
`
`Before: Jay S. Bybee and Patrick J. Bumatay, Circuit
`Judges, and Richard D. Bennett,* District Judge.
`
`Opinion by Judge Bybee
`
`* The Honorable Richard D. Bennett, United States District Judge for the
`District of Maryland, sitting by designation.
`
`
`
`
`
`
`
`

`

`2
`
`
`
`
`
`HUNLEY V. INSTAGRAM, LLC
`
`SUMMARY**
`
`Copyright
`
`The panel affirmed the district court’s dismissal of an
`action brought by two photographers under the Copyright
`Act alleging that Instagram, LLC, violated their exclusive
`display right by permitting third-party sites to embed the
`photographers’ Instagram content.
`The panel held that, under Perfect 10 v. Amazon, 508
`F.3d 1146 (9th Cir. 2007), Instagram could not be liable for
`secondary infringement because embedding a photo does not
`"display a copy" of the underlying image. Perfect 10 set
`forth the “Server Test,” which provides that a copy of a
`photographic image is not displayed when it is not fixed in a
`computer’s memory. The panel held that Perfect 10 did not
`restrict the application of the Server Test to a specific type
`of website, such as search engines. Arguments that
`Perfect10 is inconsistent with the Copyright Act are
`foreclosed by Perfect 10 outside of an en banc
`proceeding. And Perfect 10 was not effectively overturned
`by American Broadcasting Co. v. Aereo, 573 U.S. 431
`(2014), which held that a streaming provider infringed
`broadcasters’ exclusive right of public performance.
`
`
`
`
`** This summary constitutes no part of the opinion of the court. It has
`been prepared by court staff for the convenience of the reader.
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`3
`
`COUNSEL
`
`Solomon B. Cera (argued) and Pamela A. Markert, Cera
`LLP, San Francisco, California; Todd Friedman and Adrian
`R. Bacon, Law Offices of Todd M. Friedman P.C.,
`Woodland Hills, California; James H. Bartolomei III,
`Duncan Firm P.A., Little Rock, Arkansas; Bryan D. Hoben,
`Hoben Law, Peekskill, New York; for Plaintiffs-Appellants.
`Joseph C. Gratz (argued) and Ragesh K. Tangri, Morrison
`and Foerster LLP, San Francisco, California; Annie A. Lee,
`Durie Tangri LLP, San Francisco, California; Allyson R.
`Bennett, Morrison and Foerster LLP, Los Angeles,
`California; for Defendant-Appellee.
`Stephen M. Doniger, Doniger/Burroughs PC, Venice,
`California; Michael P. Manapol, Beverly Hills, California;
`Mickey H. Osterreicher and Alicia Wagner Calzada,
`National Press Photographers Association, Athens, Georgia;
`for Amici Curiae American Photographic Artists, National
`Press Photographers Association, The Graphic Artists Guild,
`and Five Other Photography and Media Licensing
`Organizations.
`Rebecca Tushnet, Lex Lumina PLLC, New York, New
`York, for Amici Curiae Google LLC, Pinterest Inc., Twitter
`Inc., and the Wikimedia Foundation Inc.
`Amy Mason Saharia and D. Shayon Ghosh, Williams &
`Connolly LLP, Washington, D.C., for Amicus Curiae
`Internet Society.
`Mitchell L. Stoltz and Cara Gagliano, Electronic Frontier
`Foundation, San Francisco, California; Alexandra
`Sternburg, Computer & Communications
`Industry
`Association, Washington, D.C.; Rachel B. Leswing, Authors
`
`
`
`

`

`4
`
`HUNLEY V. INSTAGRAM, LLC
`
`Alliance, Berkeley, California; for Amici Curiae Electronic
`Frontier Foundation, Computer & Communications Industry
`Association, American Library Association, Association of
`Research Libraries, Association of College & Research
`Libraries, Authors Alliance, and the Organization for
`Transformative Works.
`
`
`OPINION
`
`
`BYBEE, Circuit Judge:
`
`This copyright dispute tests the limits of our holding in
`Perfect 10 v. Amazon, 508 F.3d 1146 (9th Cir. 2007) in light
`of the Supreme Court’s subsequent decision in American
`Broadcasting Companies, Inc. v. Aereo, 573 U.S. 431
`(2014). Plaintiffs-appellees Alexis Hunley and Matthew
`Scott Brauer (collectively “Hunley”) are photographers who
`sued defendant Instagram for copyright infringement.
`Hunley alleges that Instagram violates their exclusive
`display right by permitting third-party sites to embed the
`photographers’ Instagram content. See 17 U.S.C. § 106(5).
`The district court held that Instagram could not be liable for
`secondary infringement because embedding a photo does not
`“display a copy” of the underlying images under Perfect 10.
`We agree with the district court that Perfect 10
`forecloses relief in this case. Accordingly, we affirm.
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`5
`
`I. FACTS AND PROCEEDINGS
`
`A. Facts
`1. The Background
`Instagram is a social media platform where users share
`photo and video content to their followers. Users with public
`profiles grant Instagram a royalty-free sublicense to display
`their photos. Instagram’s infrastructure also allows third-
`party websites to “embed” public Instagram posts.
`Embedding1 is a method that allows a third-party website
`(the embedding website) to incorporate content directly from
`the website where it originally appeared (the host website).
`Websites are created using instructions written in Hypertext
`Markup Language (“HTML”). Perfect 10, 508 F.3d at 1155.
`HTML is a text-only code, meaning that the underlying
`HTML instructions cannot contain images. Instead, when a
`website wants to include an image, “the HTML instructions
`on the web[site] provide an address for where the images are
`stored, whether in the web[site] publisher’s computer or
`some other computer.” Id.
`through a web browser
`Users access a website
`application. Id. When a web creator wants to include an
`image on a website, the web creator will write HTML
`instructions that direct the user’s web browser to retrieve the
`image from a specific location on a server and display it
`according to the website’s formatting requirements. When
`the image is located on the same server as the website, the
`HTML will include the file name of that image. So for
`example, if the National Parks Service wants to display a
`
`
`1 We have sometimes referred to embedding as “in-line linking” or
`“framing.”
`
`
`
`

`

`6
`
`HUNLEY V. INSTAGRAM, LLC
`
`photo of Joshua Tree National Park located on its own
`server, it will write HTML instructions directing the browser
`to display the image file, <img src=“Joshua_Tree.jpg”>, and
`the browser will retrieve and display the photo, hosted by the
`NPS server. By contrast, if an external website wants to
`include an image that is not located on its own servers, it will
`use HTML instructions to “embed” the image from another
`website’s server. To do so, the embedding website creator
`will use HTML instructions directing the browser to retrieve
`and display an image from an outside website rather than an
`image file. So if the embedding website wants to show the
`National Park Service’s Instagram post featuring Joshua
`Tree National Park—content that is not on the embedding
`website’s same server—it will direct the browser to retrieve
`and display content from the Instagram’s server. The HTML
`instructions that direct a browser to embed an external social
`media post look something like this:
`
`<blockquote class="instagram-media" data-instgrm-captioned data-
`instgrm-
`permalink="https://www.instagram.com/p/Cso5eUUvWC4/?utm_sourc
`e=ig_embed&amp;utm_campaign=loading" data-instgrm-version="14"
`style=" background:#FFF; border:0; border-radius:3px; box-shadow:0 0
`1px 0 rgba(0,0,0,0.5),0 1px 10px 0 rgba(0,0,0,0.15); margin: 1px; max-
`width:540px; min-width:326px; padding:0; width:99.375%; width:-
`webkit-calc(100%
`-
`2px); width:calc(100%
`-
`2px);"><div
`style="padding:16px;">
`<a
`href="https://www.instagram.com/p/Cso5eUUvWC4/?utm_source=ig_e
`mbed&amp;utm_campaign=loading"
`style=" background:#FFFFFF;
`line-height:0; padding:0 0;
`text-align:center;
`text-decoration:none;
`width:100%;"
`target="_blank"> <div style=" display: flex; flex-
`direction: row; align-items: center;"> <div style="background-color:
`#F4F4F4; border-radius: 50%; flex-grow: 0; height: 40px; margin-right:
`14px; width: 40px;"></div> <div style="display: flex; flex-direction:
`column;
`flex-grow: 1;
`justify-content: center;"> <div
`style="
`background-color: #F4F4F4; border-radius: 4px; flex-grow: 0; height:
`14px; margin-bottom: 6px; width: 100px;"></div> <div style="
`background-color: #F4F4F4; border-radius: 4px; flex-grow: 0; height:
`14px; width: 60px;"></div></div></div><div style="padding: 19%
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`7
`
`0;"></div> <div style="display:block; height:50px; margin:0 auto 12px;
`width:50px;"><svg width="50px" height="50px" viewBox="0 0 60 60"
`version="1.1"
`xmlns="https://www.w3.org/2000/svg"
`xmlns:xlink="https://www.w3.org/1999/xlink"><g
`stroke="none"
`stroke-width="1"
`fill="none"
`fill-rule="evenodd"><g
`transform="translate(-511.000000,
`-20.000000)"
`.
`.
`fill="#000000"><g><path d="M556.869,30.41.
`. <div style="
`background-color: #F4F4F4; border-radius: 50%; flex-grow: 0; height:
`20px; width: 20px;"></div> <div style=" width: 0; height: 0; border-top:
`2px solid transparent; border-left: 6px solid #f4f4f4; border-bottom: 2px
`solid
`transparent;
`transform:
`translateX(16px)
`translateY(-4px)
`rotate(30deg)"></div></div><div style="margin-left: auto;"> <div
`style=" width: 0px; border-top: 8px solid #F4F4F4; border-right: 8px
`solid transparent; transform: translateY(16px);"></div> <div style="
`background-color: #F4F4F4; flex-grow: 0; height: 12px; width: 16px;
`transform: translateY(-4px);"></div> <div style=" width: 0; height: 0;
`border-top: 8px solid #F4F4F4; border-left: 8px solid transparent;
`transform: translateY(-4px) translateX(8px);"></div></div></div> <div
`style="display: flex; flex-direction: column; flex-grow: 1; justify-
`content: center; margin-bottom: 24px;"> <div style=" background-color:
`#F4F4F4; border-radius: 4px; flex-grow: 0; height: 14px; margin-
`bottom: 6px; width: 224px;"></div> <div style=" background-color:
`#F4F4F4; border-radius: 4px; flex-grow: 0; height: 14px; width:
`144px;"></div></div></a><p
`style="
`color:#c9c8cd;
`font-
`family:Arial,sans-serif;
`font-size:14px;
`line-height:17px; margin-
`bottom:0; margin-top:8px; overflow:hidden; padding:8px 0 7px; text-
`align:center;
`text-overflow:ellipsis;
`white-space:nowrap;"><a
`href="https://www.instagram.com/p/Cso5eUUvWC4/?utm_source=ig_e
`mbed&amp;utm_campaign=loading"
`style=" color:#c9c8cd;
`font-
`family:Arial,sans-serif;
`font-size:14px;
`font-style:normal;
`font-
`weight:normal;
`line-height:17px;
`text-decoration:none;"
`target="_blank">A
`post
`shared
`by National Park Service
`(@nationalparkservice)</a></p></div></blockquote> <script async
`src="//www.instagram.com/embed.js"></script>
`
`When the browser follows these HTML instructions, the
`browser will retrieve the image, caption, and formatting
`from the host website and display all these elements
`alongside content from the embedding website. The final
`product will show
`the external
`image “embedded”
`seamlessly into a third-party website.
`
`
`
`

`

`8
`
`HUNLEY V. INSTAGRAM, LLC
`
`instructions above,
`the HTML
`illustrated by
`As
`embedding is different from merely providing a hyperlink.
`Hyperlinking gives the URL address where external content
`is located directly to a user. To access that content, the user
`must click on the URL to open the linked website in its
`entirety. By contrast, embedding provides instructions to the
`browser, and the browser automatically retrieves and shows
`the content from the host website in the format specified by
`the embedding website. Embedding therefore allows users
`to see the content itself—not merely the address—on the
`embedding website without navigating away from the site.
`Courts have generally held that hyperlinking does not
`constitute direct infringement. See, e.g., Online Pol’y Grp.
`v. Diebold, Inc., 337 F. Supp. 2d 1195, 1202 n.12 (N.D. Cal.
`2004) (“[H]yperlinking per se does not constitute direct
`infringement because there is no copying, [but] in some
`instances there may be a tenable claim of contributory
`infringement or vicarious liability.”); MyPlayCity, Inc. v.
`Conduit Ltd., 2012 WL 1107648, at *12 (S.D.N.Y. Mar. 20,
`2012) (collecting cases), adhered to on reconsideration,
`2012 WL 2929392 (S.D.N.Y. July 18, 2012).
`From the user’s perspective, embedding is entirely
`passive: the embedding website directs the user’s own
`browser to the Instagram account and the Instagram content
`appears as part of the embedding website’s content. The
`embedding website appears to the user to have included the
`copyrighted material in its content. In reality, the embedding
`website has directed the reader’s browser to retrieve the
`public Instagram account and juxtapose it on the embedding
`website.
` Showing
`the Instagram content
`is almost
`instantaneous.
`Importantly, the embedding website does not store a
`copy of the underlying image. Rather, embedding allows
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`9
`
`multiple websites to incorporate content stored on a single
`server simultaneously. The host server can control whether
`embedding is available to other websites and what image
`appears at a specific address. The host server can also delete
`or replace the image. For example, the National Park
`Service could replace the picture of Joshua Tree at
`<Joshua_Tree.jpg> with a picture of Canyonlands National
`Park. So long as the HTML instructions from the third-party
`site instruct the browser to retrieve the image located at a
`specific address, the browser will retrieve whatever the host
`server supplies at that location.
`2. This case
`Hunley and Brauer are photographers who own the
`copyrights to several of their works. Both have public
`Instagram profiles where
`they post some of
`their
`photography.
`BuzzFeed News and Time are platforms that share news
`content online. On June 3, 2020, during the Black Lives
`Matter protests, BuzzFeed News published an article titled
`“17 Powerful Pictures Of The Protests Through The Eyes of
`Black Photographers.” As part of that article, BuzzFeed
`embedded one of Hunley’s Instagram posts. The embedded
`image showed Hunley’s Instagram username (called her
`“handle”) followed by Hunley’s photograph, which featured
`the hands of a protestor juxtaposed with a line of police
`officers:
`
`
`
`

`

`10
`
`HUNLEY V. INSTAGRAM, LLC
`
`Hunley owns the copyright to this photograph. BuzzFeed
`did not seek a license from Hunley to display this photo as
`part of its news reporting, nor did BuzzFeed seek
`authorization directly from Instagram.2 BuzzFeed never
`
`
`2 Websites that embed Instagram’s content are bound by Instagram’s
`Platform Policy, and Instagram does not grant third parties a license to
`users’ works. Rather, Instagram maintains that third-party sites have the
`responsibility to seek permission from the copyright holder as “required
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`11
`
`created a copy of or stored the underlying photo. Instead,
`BuzzFeed used HTML, provided by a feature on Instagram’s
`platform, to embed the Instagram post containing the photo,
`which made Hunley’s Instagram post appear on BuzzFeed’s
`website alongside BuzzFeed’s own content.
`Similarly, Time published an article on January 31, 2016,
`titled “These Photographers Are Covering the Presidential
`Campaign on Instagram.” As part of that article, Time
`embedded one of Brauer’s Instagram posts, featuring a
`copyrighted photo of candidate Hillary Clinton:
`
`
`by law.” According to Hunley, no third party obtained permission from
`Instagram to embed copyrighted content.
`
`
`
`

`

`12
`
`HUNLEY V. INSTAGRAM, LLC
`
`The post showed Brauer’s Instagram post in its entirety.
`Time did not seek a license from Brauer or permission from
`Instagram to display this photo. Because Time embedded
`Brauer’s Instagram post containing the photo, Time never
`stored or made a copy of Brauer’s photo. Instead, the
`embedding instructions caused Brauer’s Instagram post to
`appear on Time’s website alongside Time’s own content.
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`13
`
`B. Proceedings Below
`Hunley and Brauer brought a class action suit against
`Instagram on behalf of other copyright owners whose work
`was “caused to be displayed via Instagram’s embedding tool
`on a third party website without the copyright owner’s
`consent.” Hunley alleged that Instagram’s embedding tool
`violated her exclusive display right under the Copyright Act
`by enabling third-party websites such as BuzzFeed and Time
`to display copyrighted photos posted to Instagram. See 17
`U.S.C. § 106(5). Hunley brought three causes of action
`against Instagram: inducement of copyright infringement,
`contributory
`copyright
`infringement,
`and vicarious
`copyright infringement. Hunley alleged that “Instagram
`intentionally and brazenly encouraged, aided and induced
`third party embedd[ing websites] to cause to be displayed
`copyrighted photos and videos without making any effort to
`control or stop the rampant infringement” while “knowingly
`participating in such conduct.”3
`Hunley conceded that Instagram is not a direct infringer,
`and these theories of secondary liability all rely on the
`existence of direct infringement by BuzzFeed and Time. See
`Perfect 10, Inc. v. Giganews, 847 F.3d 657, 671 (9th Cir.
`2017) (“Giganews”). Hunley thus alleged that third-party
`embedding websites, BuzzFeed and Time, infringed her
`display right even though they did not host or store a copy
`of the underlying image. Hunley sought damages and
`injunctive relief.
`
`
`3 Hunley alleged that Instagram made embedding available to create a
`revenue stream for its photo-sharing platform, and that Instagram “reaps
`billions of dollars annually” from encouraging third parties to embed
`Instagram content.
`
`
`
`

`

`14
`
`HUNLEY V. INSTAGRAM, LLC
`
`Instagram filed a motion to dismiss, which the district
`court granted. The district court concluded that our holding
`in Perfect 10 precluded relief to Hunley. To violate the
`public display right, infringers must “display ‘copies’ of the
`copyrighted work.” 17 U.S.C. § 101. According to the
`district court, embedding websites that do not “‘store’ an
`image or video” do not “‘communicate a copy’ of the image
`or video and thus do[] not violate the copyright owner’s
`exclusive display right.” See Perfect 10, 508 F.3d at 1160–
`61. Applying Perfect 10, the district court explained:
`
`[BuzzFeed and Time] do not violate
`Instagram users’ exclusive display rights.
`Because they do not store the images and
`videos, they do not “fix” the copyrighted
`work
`in
`any
`“tangible medium of
`expression.” Therefore, when they embed
`the images and videos, they do not display
`“copies” of the copyrighted work.
`
`And without direct infringement by BuzzFeed or Time,
`Instagram could not be held secondarily liable. The district
`court also rejected Hunley’s arguments that Perfect 10 was
`limited to search engines and that Perfect 10 conflicted with
`the Supreme Court’s decision in Aereo, 573 U.S. 431.
`In February 2022, the district court denied Hunley leave
`to amend because “the deficiency in Hunley’s first two
`complaints cannot be cured.” Hunley’s amended complaint
`still alleged that Instagram’s servers—not those of BuzzFeed
`or Time—hosted the infringing images. The district court
`concluded that the “only fact that matters” for infringement
`purposes is storing the photos on servers, and that because
`Hunley could not remedy this issue, “amendment would be
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`15
`
`futile.” The district court dismissed the action with
`prejudice, and Hunley timely appealed.
`II. JURISDICTION AND STANDARD OF REVIEW
`We have jurisdiction pursuant to 28 U.S.C. § 1291, and
`we review de novo the district court’s dismissal under Rule
`12(b)(6). CallerID4u, Inc. v. MCI Commc'ns Servs. Inc.,
`880 F.3d 1048, 1061 (9th Cir. 2018).
`III. ANALYSIS
`We begin our analysis with the legal framework of the
`Copyright Act, including our interpretation of the Act in
`Perfect 10. We will then consider Hunley’s legal and policy
`arguments for limiting the scope of Perfect 10. We conclude
`by applying Perfect 10 to this case.
`A. The Copyright Act and Perfect 10
`1. The Right of Public Display
`The Copyright Act grants authors the exclusive right “to
`display the copyrighted work publicly.” 17 U.S.C. § 106(5).
`To infringe this exclusive right to public display, the
`infringer must “show a copy of [the work], either directly or
`by means of a film, slide, television image, or any other
`device or process.” 17 U.S.C. § 101 (definition of “display”).
`The Copyright Act defines “copies” as “material objects . . .
`in which a work is fixed by any method now known or later
`developed, and from which the work can be perceived,
`reproduced, or otherwise communicated, either directly or
`with the aid of a machine or device.” Id. (definition of
`“Copies”). For copyright purposes, “copy” does not
`necessarily mean a duplicate of the original, but includes the
`original itself: “The term ‘copies’ includes the material
`object . . . in which the work is first fixed.” Id. (definition of
`
`
`
`

`

`16
`
`HUNLEY V. INSTAGRAM, LLC
`
`“Copies”). And “[a] work is ‘fixed’ in a tangible medium
`of expression when its embodiment in a copy . . . is
`sufficiently permanent or stable to permit it to be perceived,
`reproduced, or otherwise communicated for a period of more
`than transitory duration.” Id. (definition of “fixed”).
`The Copyright Act went through significant amending in
`1976. Those amendments clarified that the public display
`right can also be infringed by a transmission. See Public
`Law 94-533 (Oct. 19, 1976). The amended statute states in
`relevant part:
`
`To perform or display a work “publicly”
`means
`(1) to perform or display it at a place open to
`the public or at any place where a substantial
`number of persons outside of a normal circle
`of a family and its social acquaintances is
`gathered; or
`(2) to transmit or otherwise communicate a
`performance or display of the work to a place
`specified by clause (1) or to the public, by
`means of any device or process, whether the
`members of the public capable of receiving
`the performance or display receive it in the
`same place or in separate places and at the
`same time or at different times.
`
`17 U.S.C. § 101 (definition of “publicly”). Part (2) of this
`definition is know as the Transmit Clause. To “transmit” a
`display means “to communicate it by any device or process
`whereby images or sounds are received beyond the place
`from which they are sent.” Id. (definition of “transmit”). By
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`17
`
`this definition, an internet communication of an image
`necessarily implicates the Transmit Clause. Perfect 10, 508
`F.3d at 1161 n.7. A transmitted image is “fixed” for
`copyright purposes “if a fixation of the work is being made
`simultaneously with its transmission.” 17 U.S.C. § 101
`(definition of “fixed”).
`In sum, infringing the exclusive right of public display
`requires the transmission of a display. For a display to be
`actionable, it must display a copy. A copy means either an
`original or a duplicate that is fixed, and fixation requires
`embodiment in a perceivable format. See generally 17
`U.S.C. § 101.
`2. Perfect 10 Interprets 17 U.S.C. § 106(5)
`In Perfect 10 v. Amazon, Inc., we decided for the first
`time “when a computer displays a copyrighted work for
`purposes of section 106(5),” the right to public display. 508
`F.3d at 1160. In that case, Perfect 10, an online magazine
`that marketed photos of nude models, sued Amazon and
`Google for showing Perfect 10’s copyrighted images on their
`websites. Id. at 1157. Perfect 10 alleged that Google
`infringed its public display right by including pared-down
`thumbnail images in Google Image Search results and by
`embedding full-sized images from third-party websites,
`which posted copyrighted images without permission. Id.
`Google’s embedding feature worked in the following
`manner:
`
`When a user clicks on a thumbnail image, the
`user’s browser program interprets HTML
`instructions
`on Google’s webpage.
`Following these instructions, the browser
`creates a “window”: the infringing image
`
`
`
`

`

`18
`
`HUNLEY V. INSTAGRAM, LLC
`
`appeared “in its original context[] on the
`lower portion of the window on the user’s
`computer screen[,] framed by information
`from Google. Google did not host or store
`the image that filled the bottom part of the
`screen, nor did Google communicate the
`images to the user: the browser, following
`directions from Google, accessed the third-
`party website and relayed it to the user.
`
`Id. at 1155–57.
`We interpreted the Copyright Act’s fixation requirement
`and found that an image is “fixed in a tangible medium of
`expression” when it is “embodied (i.e., stored) in a
`computer’s server, (or hard disk, or other storage device).”
`Id. at 1160 (citing MAI Sys. Corp. v. Peak Computer, Inc.,
`991 F.2d 511, 517–18 (9th Cir. 1993)). Applying that
`interpretation, we concluded that a “computer owner shows
`a copy ‘by means of a . . . device or process’ when the owner
`uses the computer to fill the computer screen with the
`photographic image stored on that computer.” Id. (quoting
`17 U.S.C. § 101. And “a person displays a photographic
`image by using a computer to fill a computer screen with a
`copy of the photographic image fixed in the computer's
`memory.” Id. This requirement that a copy be “fixed in the
`computer’s memory” has come to be known as the “Server
`Test.” See id. at 1159 (“The district court referred to this test
`as the ‘server test.’”) (quoting Perfect 10 v. Google, Inc., 416
`F. Supp. 2d 828, 838–39 (C.D. Cal. 2006)); Free Speech
`Sys., LLC v. Menzel, 390 F. Supp. 3d 1162, 1171 (N.D. Cal.
`2019).
`Applying the Server Test to the facts, we concluded that
`Google’s in-line linking (what we now call embedding) did
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`19
`
`not display a “copy” of Perfect 10's copyrighted images as
`that term is defined in the Copyright Act. Id. at 1160–61.
`Because Google did not store a copy of the full-size images,
`but merely embedded them and allowed them to be
`displayed alongside its search results, “Google does not have
`a copy of the images for purposes of the Copyright Act.” Id.
`Without a copy on its servers, “Google transmits or
`communicates only an address which directs a user’s
`browser to the location where a copy of the full-size image
`is displayed. Google does not communicate a display of the
`work itself.” Id. at 1161 n.7. Although “Google may [have]
`facilitate[d] the user’s access to infringing images,” we
`concluded that “such assistance . . . does not constitute direct
`infringement.” Id. at 1161.
`B. Arguments for Limiting the Server Test
`The district court held that Perfect 10 governed this case.
`On appeal, as before the district court, Hunley argues that
`Perfect 10’s Server Test does not determine the outcome in
`this case. First, Hunley argues that the Server Test should
`only apply to search engines such as Google. Second,
`Hunley argues that Perfect 10 is inconsistent with the
`Copyright Act. Third, Hunley argues that Perfect 10
`conflicts with the Supreme Court’s subsequent decision in
`American Broadcasting Co. v. Aereo, 573 U.S. 431 (2014).
`Fourth and finally, Hunley argues that there are policy
`reasons for overruling Perfect 10. We disagree with each of
`these claims, and we will address each in turn.
`1. Whether Perfect 10 should be limited to specific types
`of websites
`Hunley argues that the Server Test should apply only “to
`search engines or other automated, algorithmic indexing
`platforms” and should not extend to “content embedded into
`
`
`
`

`

`20
`
`HUNLEY V. INSTAGRAM, LLC
`
`from social media platforms.”
`commercial websites
`Hunley’s argument finds no support in our law.
`Perfect 10 did not restrict the application of the Server
`Test to a specific type of website, such as search engines. To
`be sure, in Perfect 10, we considered the technical
`specifications of Google Image Search, including Google’s
`ability to index third-party websites in its search results.
`Perfect 10, 508 F.3d at 1155. We also noted Google’s
`reliance on an automated process for searching vast amounts
`of data:
`
`to create such a search engine, Google
`“automatically accesses thousands of websites . . . and
`indexes them within a database” and “Google’s computer
`program selects the advertising automatically by means of
`an algorithm.” Id. at 1155–56. But in articulating the Server
`Test, we did not rely on the unique context of a search
`engine. Our holding relied on the “plain language” of the
`Copyright Act and our own precedent describing when a
`copy is “fixed” in a tangible medium of expression. Id.
`(citing 17 U.S.C. § 101). We looked to MAI Sys. Corp. v.
`Peak Computer, Inc., for the conclusion that a digital image
`is “fixed” when it is stored in a server, hard disk, or other
`storage device. 991 F.2d 511, 517–18 (9th Cir. 1993).
`Applying
`this
`fixation
`requirement
`to
`the
`internet
`infrastructure, we concluded that in the embedding context,
`a website must store the image on its own server to directly
`infringe the public display right. Perfect 10, 508 F.3d at
`1160.
`We have subsequently applied the Server Test outside
`the search-engine context. For example, in Bell v. Wilmott
`Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021), a
`photographer sued a storage-service website over its use of
`his photo of the Indianapolis skyline. Although the image
`was not shown directly on Wilmott Storage Services’s
`
`

`

`
`
`HUNLEY V. INSTAGRAM, LLC
`
`
`
`21
`
`website, it was visible through a “reverse image search.” Id.
`at 1073. Because it was “undisputed” that the infringing
`photos were stored on Wilmott’s own server, “Wilmott
`transmitted, and therefore displayed, the Indianapolis photo
`without Bell’s permission.” We concluded that the storage
`and display was sufficient to hold Wilmott directly liable
`under the Copyright Act. Id. We have also applied the
`Server Test to blogs, see Perfect 10, Inc. v. Google, Inc., 653
`F.3d 976, 978 (9th Cir. 2011) (noting that “Blogger account
`holders may upload images from the web onto Google’s
`server in order to post them on their blogs, or may use a
`hyperlink to images hosted on other servers.”), and to online
`bulletin boards, Evox Prods., LLC v. Verizon Media, Inc.,
`No. 21-56046, 2022 WL 17430309, at *1–2 (9th Cir. Dec. 6,
`2022) (unpublished) (holding Verizon liable for infringing
`the display right when it stored the image on its Yahoo Autos
`and Tumblr servers after its license with copyright owners
`had expired).
`Hunley points out that other circuits have not adopted the
`Server Test. The statement is true, but of little use to Hunley.
`At least two circuits have referred to the Server Test without
`either endorsing or rejecting it.
` In Soc'y of Holy
`Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 55
`(1st Cir. 2012), the First Circuit cited Perfect 10’s Server
`Test when it noted that the infringing images “were
`embodied in a medium (here, the computer server and
`internet) where they could be perceived . . . by those who
`accessed the server.” Id. The Gregory court declined to
`adopt or reject the Server Test:
`
`Although the question of whether a computer
`has “displayed” a copyrighted work may be a
`difficult one in other contexts, see, e.g.,
`
`
`
`

`

`22
`
`HUNLEY V. INSTAGRAM, LLC
`
`Perfect 10, 508 F.3d at 1160–62, it is beyond
`question here
`that
`the Archbishop has
`“displayed” the Works on his website. We
`need not delineate the outer bounds of the
`scope of the term “display” where, as here,
`the fact that the Works were “displayed” on
`the Archbishop's website is undisputed.
`
`Id. at 55. Similarly, the Seventh Circuit cited with approval
`Perfect 10’s distinction between direct and secondary
`infringement in Flava Works, Inc. v. Gunter, 689 F.3d 754
`(7th Cir. 2012), a public performance case. The Flava
`Works court observed that “myVidster is