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Leslie A. Kelly v. Arriba Soft Corporation

No. 00-55521, 280 F.3d 934 (9th Cir., February 6, 2002) withdrawn, -- F.3d --- (9th Cir., July 3, 2003)

The Ninth Circuit Court of Appeals holds that defendant's display on a visual search engine of lower resolution "thumbnails" of copyrighted images appearing elsewhere on the Internet, without the copyright owners' permission, is a protected fair use of those images under the Copyright Act. The court further holds that defendant's display of the full copyrighted image as part of its search engine results, either via inline linking or framing, infringes the copyright owner's right to publicly display the work. Such use of the full images as they appear on the copyright owner's site is not a protected fair use because it is done for the same purpose, to attract viewers, as the copyright owner's own use, and causes injury to the copyright owner by diverting users from his site.

Defendant operates a "visual search engine" which allows users to search for images on the Internet. Images that are responsive to a user's query are presented by defendant's search engine as "thumbnails" separated from the web page on which they were placed by their owners. These "thumbnails" are of a lower resolution and quality than the original copyrighted image from which they are made. From January 1999 to June 1999, a click on the "thumbnail" image resulted in the display of a full-size version of the image as it appeared on the copyright owner's site, as well as a link to the web page from which the image originated. This was accomplished by a process known as inline linking, by which process the image displayed actually was the image appearing on the copyright owner's web site. Defendant thereafter changed its search engine so that from July 1999 until sometime after August 2000, clicking on the "thumbnail" image caused two screens to open. The first screen displayed a full-size version of the thumbnail image in question as it appeared on the copyright owner's web site, and partially blocked from view the second screen. The second screen displayed the full web page on which the image was situated. This was accomplished by framing.

Plaintiff is the owner of the copyright in 35 images, which were included on defendant's site without plaintiff's permission. Plaintiff has posted his images on, and uses them to attract viewers to, his own web site, on which he sells advertising space, as well as books and travel packages. When plaintiff discovered that defendant had placed his images on its search engine he objected, and defendant removed those of plaintiff's images that appeared on his web site from the search engine. Plaintiff subsequently commenced this action for copyright infringement as a result of defendant's use of his images.

Plaintiff established a prima facie claim of copyright infringement by virtue of his ownership of the copyright in images which were copied by defendants.

The court held, however, that defendant's use in its visual search engine of "thumbnails" of plaintiff's images was a permitted fair use. 17 USC §107 sets forth four factors that should be analyzed in determining whether the use in a particular case is a fair use. These factors are the nature of the use of the work, the nature of the copyrighted work itself, the amount and substantiality of the portion used, and the effect of the use upon the potential market for the copyrighted work.

Applying these factors, the court determined the use at issue qualified for protection as a fair use. In reaching this conclusion, the court found that defendant's use was transformative, because defendant used the images for a different purpose than plaintiff -- defendant used the images as part of its efforts to index and improve access to images on the web, while plaintiff used the images to portray the scenery depicted therein in an esthetic manner and to attract viewers to his web site.

The court further pointed to the fact that plaintiff would not be injured by defendant's use of copyrighted images in the thumbnails in support of its fair use determination. Such use does not harm plaintiff, held the court, because the thumbnails were thumbnails were much smaller and of lower resolution than plaintiff's originals. Anyone wishing to use the full images would go to plaintiff's site to obtain the higher quality image available there. If anything, "by showing the thumbnails on its results page when users entered terms related to Kelly's images, the search engine would guide users to Kelly's web site rather than away from it."

The remaining fair use factors, held the court, did not significantly impact its analysis. Thus, while the work was creative in nature, which militated against permitting defendant's use, it had also been published previously, which militated in favor of permitting its use. And while the entire work was copied by defendant, the court held this factor favored neither party because "although Arriba did copy each of Kelly's images as a whole, it was reasonable to do so in light of Arriba's use of the images." The Ninth Circuit accordingly affirmed so much of the decision of the district court which held that the use of plaintiff's images in thumbnails presented in search engine results was a permitted fair use.

The court further held that by displaying full size versions of plaintiff's copyrighted images on its site, via framing and inline linking, defendant had infringed plaintiff's exclusive right to publicly display the copyrighted work. By this use of frames and inline linking, defendant was actually importing the images at issue directly from plaintiff's site, and not making copies thereof in violation of 17 U.S.C. Section 106. However, causing such images to appear on a web site available to the public constituted a public display of plaintiff's works in violation of 17 USC §106(5), which applies to both copies of a work as well as the original itself. Said the court:

Although Arriba does not download Kelly's images to its own server but, rather, imports them directly from other web sites, the situation is analogous to Webbworld. By allowing the public to view Kelly's copyrighted works while visiting Arriba's web site, Arriba created a public display of Kelly's works. ... Arriba made the images available to any viewer that merely visited Arriba's site. Allowing this capability is enough to establish an infringement; the fact that no one saw the images goes to the issue of damages, not liability. ... Like defendants in Webbworld and Hardenburgh, Arriba is directly liable for infringement. Arriba actively participated in displaying Kelly's images by trolling the web, finding Kelly's images, and then having its program inline link and frame those images within its own web site. Without this program, users would not have been able to view Kelly's images within the context of Arriba's site. Arriba acted as more than a passive conduit of the images by establishing a direct link to the copyrighted images. Therefore, Arriba is liable for publicly displaying Kelly's copyrighted images without his permission.

The court rejected defendant's claim that its use of the actual copyrighted images on its site was a permissible fair use. Unlike the use of lower resolution thumbnail versions of these images, the court held that use of the actual images was not transformative, and had no different purpose than the use to which the copyrighted owner was putting the works.

Unlike the use of images for the thumbnails, displaying Kelly's full-sized images does not enhance Arriba's search engine. The images do not act as a means to access other information on the internet but, rather, are likely the end product themselves. Although users of the search engine could link from the full-sized image to Kelly's web site, any user who is solely searching for images would not need to do so. Because the full-sized images on Arriba's site act primarily as illustrations or artistic expression and the search engine would function the same without them, they do not have a purpose different from Kelly's use of them.

The court further found that such use was likely to injure plaintiff by providing users with exactly that which plaintiff sought to provide, and thereby obviating any need they might have to visit plaintiff's site to obtain it. Said the court:

As discussed in the previous fair use analysis, Kelly's market for his images include using them to attract advertisers and buyers to his web site, and selling or licensing the images to other web sites or stock photo databases. By giving users access to Kelly's full-sized images on its own web site, Arriba harms all of Kelly's markets. Users will no longer have to go to Kelly's web site to see the full-sized images, thereby deterring people from visiting his web site.

The remaining fair use factors did not dictate a contrary result and, accordingly, the court rejected defendant's fair use defense, and reversed so much of the decision of the District Court below which held to the contrary.

The full text of the court's decision can be found on a web site maintained by Findlaw.

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