Elliott McGucken v. Valnet Amicus Brief

Submitted this on behalf of APA and the other visual associations in our coalition.

Recap from Stephen Doniger, Esquire:

In Elliott McGucken v. Valnet, Inc., award-winning photographer Dr. Elliot McGucken sued Valnet in a Ninth Circuit federal court for infringing his copyright in 36 photographs by displaying them without permission in multiple articles on its website thetravel.com

Had Valnet accomplished this offending display of McGucken photographs by making new copies of them or had McGucken filed suit outside the Ninth Circuit, there would have been little question he could proceed on his claims. But Valnet accomplished the offending display by embedding the images from Dr. McGucken’s Instagram page. Although Instagram does not grant companies like Valnet permission to do this, in 2007 the Ninth Circuit created the so-called “server test” which states that “where the image remains on a third-party’s server and is not fixed in the memory of the infringer’s computer… embedding is not display.” In other words, it is not infringement to show the copyright owner’s original display in a new context through embedding.

After the trial court granted Valnet’s motion to dismiss McGucken’s case on the grounds that its unauthorized embedding of his work is not infringing under the “server test,” McGucken asked the Ninth Circuit to reinstate his case and, in the process, reconsider and abrogate the “server test.” His counsel (Doniger/Burroughs, whose founder Stephen Doniger also represents APA) argued, among other things, that the Copyright Act does not require an infringer to make a copy of an artist’s work to create an unauthorized display and that courts outside the Ninth Circuit have almost uniformly rejected the “server test” as bad law.

Valnet has in turn asked the Ninth Circuit to stay (put a hold on) considering McGucken’s petition until after it rules on another case presently pending before it which also seeks review of the “server test.” In that case (Hunley v. Instagram) two photographers filed a putative class action against Instagram for facilitating infringement of their works through its embedding software. The district court similarly dismissed that case on the grounds that embedding cannot serve as a basis to find infringement, the plaintiffs appealed, a Ninth Circuit panel affirmed the trial court because the “server test” is settled law in that circuit but invited the plaintiffs to seek to have that law reversed through “en banc” review, Plaintiffs sought that review, the matter was fully briefed at the end of last year, and as of this writing is still under consideration.

APA lead a number of visual art organizations in filing an amicus brief in support of the plaintiffs in Hunley v. Instagram. That brief encouraged the Ninth Circuit to get rid of the “server test,” explaining that it is bad law and creates real inequity since copyright holders outside the Ninth Circuit have appreciably greater ability to control the display of their work that copyright holders in the Ninth Circuit. And last week it joined in an amicus brief in support of Dr. McGucken’s petition and against Valnet’s request to stay that petition. That brief reiterates APA’s strong opposition to a “server test” which allows infringers to accomplish through embedding what they could not otherwise accomplish by making new copies and argues that the McGucken case presents a different and equally compelling fact scenario that the Ninth Circuit should consider to determine whether the test should continue to exist.