[Editor’s Note:  This is the first of a two-part episode on three copyright decisions issued by federal courts in 2018 that relate to the use of photos in news reporting; the second part will be posted next week.]

Picture for a moment a man. Not an ordinary man by any stretch. This man is Tom Brady. Quarterback. Five-time Super Bowl winner. Future Hall of Famer. Husband to a Supermodel. And from all appearances, a good father, and overall a decent person.

Yet this man has a way of courting controversy at all turns. Not drafted until the sixth round, he quickly supplants Drew Bledsoe, a man who many thought would be the future of the New England Patriots, as the team’s quarterback. He succeeds; perhaps too well, as the Patriots become the Evil Empire of the NFL over the past two decades. Yes, Bill Belichick is the lightning rod for most of opposing fans’ ire, but Brady has his haters too. Let’s not forget a little thing called “Deflategate.” Or his statement that his rigid workout regimens and strict (and somewhat quirky) dietary restrictions would allow him to play well into his forties – and keep him eternally young and handsome.

For all these reasons – the fact that he’s apparently found the Fountain of Youth, the on and off field success, the polarizing figure he’s become – it is really easy to picture Tom Brady. The world is filled with pictures of Tom Brady. And one of those pictures has now become extremely controversial in a legal sense.

Which brings us to the heart of the matter – a February 15 decision by Judge Katherine Forrest in Goldman v. Breitbart, News Network LLC. The scene is the Hamptons, July 2, 2016. Tom Brady is seen with Danny Ainge, the general manager and President of the Boston Celtics. They are assumed to be there as part of the Celtics’ pitch to Kevin Durant, the most sought after free agent in the NBA that summer. Another man – this one an ordinary man who goes by the name of Justin Goldman – takes a photo of Brady and uploads it to his Snapchat Story. In 24 hours, that would generally be the end of the story, as the photo would disappear from that platform. But, as a photo of Tom Brady in the Hamptons just as the Celtics are believed to be wooing Kevin Durant will do, this photo goes viral and eventually ends up being uploaded to Twitter by several different people.

Several prominent news outlets, including, among others, Time, Inc (owner of Sports Illustrated), Yahoo, Vox, Gannett, the Boston Globe, NESN, and Breitbart News “embed” the Tweets into their online stories about a possible Celtics-Durant connection.

In this case, none of the defendants – according to Judge Forrest – actually copied and pasted the photo onto their own servers for display on their websites; instead, they follow the now-common practice of embedding content under a process allowed by the platform on which that content is found. Embedding is prevalent today because it is so easy to do and, until now, widely believed to be legal. The user simply needs to add a specific “embed code” to the HTML instructions when seeking to include a certain piece of content in a story. The underlying content – in this case the Tweet containing a picture of Tom Brady and Danny Ainge – remains on the original server – in this case, Twitter – even as it appears on the user’s website.

It’s that last part that has made embedding seem relatively safe from a copyright infringement perspective.  Until now, some courts – with the Ninth Circuit taking the lead – have analyzed embedding under the so-called “Server Test,” which provides that where the underlying photo at issue resides on the original server, the embedding party isn’t violating any of the exclusive rights held by the copyright owner – most notably the reproduction and display rights. The “Server Test” was the theory advanced by the media defendants in Goldman when Goldman sued them (although, notably, not any of the individuals who actually copied Mr. Goldman’s original photo from Snapchat Story and uploaded it to Twitter). Judge Forrester summarized the Server Test by referencing Perfect 10, Inc. v. Google, Inc., the case that adopted that test, which was decided by the United States District Court for the Central District of California in 2006 and affirmed by the Ninth Circuit in 2007. Judge Forrester described that case as holding that images “which were stored on third-party servers and accessed by ‘in-line linking’ – which works, like embedding, based upon the HTML code instructions – were not infringements.”

The Server Test stands in stark contrast to the “Incorporation Test,” a test that had been proposed by the plaintiffs in Perfect 10 and that would define display as “the act of incorporating content into a webpage that is then pulled up by the browser.” The Incorporation Test generally favors copyright owners, as under that test, incorporating content into your website would mean that your website is actually displaying the content in question. The Server Test, by contrast, takes the view that the material is still being displayed solely from the server on which it resides.

The Server Test is believed to have carried the day since 2006. But Judge Forrester’s decision may be changing that, as she ruled in favor of Justin Goldman, the plaintiff. Judge Forrester reviewed several similar (though not identical) cases from around the country and concluded that the Server Test has really never caught hold outside of the Ninth Circuit (which covers the far western states of Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, and Washington). In fact, she noted, four courts in the Southern District of New York have actually discussed the Server Test, with none of them holding that it applies to the display right in a case involving a claim of direct infringement. Rather, she noted, those other in-district cases either involved application of the distribution right or disputed factual issues that precluded summary judgment were applying the display right in the context of contributory infringement. She concluded her review of decisions from both the Southern District of New York and other jurisdictions as follows:

In sum, this Court is aware of only three decisions outside of the Ninth Circuit considering the display right in light of Perfect 10; one from the Seventh Circuit which adopted the Server Test for contributory liability, one from the Southern District which stated as a factual matter only that Perfect 10 existed, and one from the Northern District of Texas rejecting Perfect 10.

This effectively allowed Judge Forrester to start with a clean slate from which to decide whether the defendant news sites had directly infringed on Goldman’s exclusive right to display his photo. Looking to the plain language of Section 101 of the Copyright Act, she concluded that:

Nowhere does the Copyright Act suggest that possession of an image is necessary in order to display it. Indeed, the purpose and language of the Act support the opposite view. The definitions in § 101 are illuminating. First, to display a work publicly means “to transmit…a…display of the work…by means of any device or process.”17 USC § 101. To transmit a display is to “communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.” Id. (emphasis added). Devices and processes are further defined to mean ones “now known or later developed.” Id.

Thus, it doesn’t matter whether the photo technically resides on Twitter’s servers; what really matters is that the defendants “took active steps to ‘display’ the image on their own sites.”

This rocked the journalism world in particular because embedding has become so commonplace. In fact, when this decision was first issued in February, I shared the defendants’ and amici’s view that “not adopting the Server Test would ‘radically change linking practices, and thereby transform the Internet as we know it.’” After all, I’m firmly on team journalism and know this will have a distinct impact on the ability to easily incorporate important content into publications.

That’s why it’s a good thing I’ve waited until now to write about this case. Though I could claim it was due to just being too busy at the time, the delay was really due to: 1) the fact that I thought the case would quickly be overturned on appeal and 2) my gnawing feeling that this may be the right result.

I’m writing now because on July 17, the United States Court of Appeals for the Second Circuit declined to overturn Judge Forrester’s decision via “interlocutory appeal” (in which an overarching issue is appealed before the case is fully decided), calling an immediate  appeal “unwarranted.”  The effect of that ruling is that, at least for the time being, it will be riskier in the Southern District of New York for online publishers to embed copyrighted content into their web pages.

I’m also writing now because I’ve come full circle as to my view of this result. That’s part of the reason for my Twilight Zone-themed introduction: after a bizarre decision from a federal court that turns a seemingly accepted practice with regard to using photos inside out, I think I’m beginning to understand and agree with this decision. I’m not even sure I know what’s real anymore.

I think it may be right, and I further agree with Judge Forrester’s assessment that, “The Court does not view the results of its decision as having such dire consequences. Certainly given a number of as yet unresolved strong defenses to liability separate from this issue, numerous viable claims should not follow.”

Among those defenses are: 1) whether the photo was effectively released into the public domain; 2) potential claims of licensing and authorization; 3) a defense under the Digital Millennium Copyright Act; 4) limitations on damages due to innocent infringement; and 5) fair use.

It’s this last claim that is the most intriguing, relevant, and heartening, as the breadth of the fair use doctrine seems to have increased over the past several years. This is particularly true for the Second Circuit, which seems to have taken the lead on the concept of “Transformative Fair Use” (largely traced back to the opinion of former Supreme Court Justice David Souter in Campbell v. Acuff-Rose Music, Inc. in which Judge Souter looked at “whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is ‘transformative,’ altering the original with new expression, meaning, or message”). But it’s also true elsewhere, as evidenced by two recent decisions – albeit from a different jurisdiction – that were similarly noteworthy to those who pay attention to such things. Both cases, decided this year within the United States District Court for the Eastern District of Virginia, adopt an expansive view of fair use to the point where they could offset the effect of Goldman v. Breitbart. These cases are Philpot v. Media Research Center Inc. and Brammer v. Violent Hues Productions, LLC.

Tune in next week for the exciting conclusion to “The Copyright Zone.”