Perfect 10 v. Google

Citation: Perfect 10, Inc. v. Google, Inc., 487 F.3d 701 (9th Cir. 2007).

Factual Background
Google runs a search engine with an option to search specifically for images (known as Google Image Search). The search engine displays pages of search results with small images, or thumbnails, which are smaller and lower quality versions of full-sized images found on the pages listed in the search results. When these thumbnails are clicked Google’s webpage sends a set of HTML instructions to the user’s browser creating two distinct sections on the screen. The top portion contains information provided by Google including the thumbnail that was clicked. The lower portion of the screen is filled with the third-party website that provides the full size image which is accessed by the user’s browser through the HTML instructions provided by Google. Google also stores images temporarily in the cache of their computers and the users’ computers to facilitate faster web-browsing. Amazon had an agreement with Google that allowed users of Amazon’s website to perform searches that resulted in Google’s search results being displayed through in-line linking. Ads are placed on search result pages through Google’s Adsense program.

Perfect 10 operates a subscription based website that makes available copyrighted images of nude models to members. Smaller versions of these copyrighted images are also available for use on cell phones through a distribution agreement with Fonestarz Media Limited.

Perfect 10 alleges that Google’s search engine directly infringes their exclusive rights to display and distribute their full-size and reduced-size (thumbnail) images under the Copyright Act and is contributorily and vicariously liable for linking to infringing third party sites. Perfect 10 also claims that Amazon is secondarily liable for in-line linking to Google’s search results.

Procedural History:
In November of 2004 Perfect 10 filed copyright infringement claims against Google and soon after against Amazon. The district court issued an injunction against Google with respect to the thumbnail images but not as to the full-size images holding that Perfect 10 was likely to succeed only on their direct infringement claims against Google for the reduced size images. The district court also held Google’s use of the thumbnails not to be a fair use distinguishing this case from Kelly v. Arriba Soft Corp. which held that thumbnails in this context are a fair use because of the “transformative nature of a search engine and its benefit to the public”. The district court found Google’s use of thumbnail images to be less transformative than Arriba’s use because “Google’s use superceded Perfect 10’s right to sell its reduced-size images for use on cell phones” and that the revenues generated by Google’s Adsense program weighed against a finding of a transformative use.

Appellate Court
The Appellate Court reversed the district court’s finding that the thumbnail versions of Perfect 10’s images were a direct infringement of Perfect 10’s rights under the Copyright Act; reversed the district court’s holding that Perfect 10 was unlikely to prove a claim of secondary liability, and remanded for a determination of the sufficiency of the notices sent to Google by Perfect 10 and any limitations of liability available to Google and Amazon under Title II of the DMCA.

Section 106(5) gives copyright owners the exclusive right to display their works publicly. Under the Copyright Act to display means to “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process” and defines “copies” as “material objects, other than phonorecords, 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” and that a “work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecords, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”

Section 106(3) of the Copyright Act gives copyright owners the exclusive right to distribute copies of their work to the public.

The Appellate Court determined that Perfect 10 had made a prima facie showing of direct infringement for the thumbnails displayed by Google’s search engine because those images were stored on Google’s computers and communicated to the user. However, since Google did not store copies of the full-size images there could be no display under the Copyright Act and therefore no infringement. “Instead of communicating a copy of the image, Google provides HTML instructions that direct a user’s browser to a website publisher’s computer that stores the full-size photographic image.” Perfect 10 argued that the framing technique used by Google to display search results gave the impression that it was Google, and not the third party website, that was presenting the infringing image but the Appellate Court rejected this argument stating that ultimately Google was only providing HTML instructions to a user’s computer. Furthermore, Google’s cache only stored the text of web pages with HTML instructions that directed computers to associated images and the court found it unlikely that Perfect 10 could make a showing of direct infringement as a result of Google’s caching of infringing websites.

Similarly, the Appellate Court found that Google was not distributing the full-size images so as to infringe on Perfect 10’s rights under the Copyright Act. Merely providing HTML instructions was not enough to constitute a violation and Perfect 10 incorrectly relied on Hotaling v. Church of Jesus Christ of Latter-Day Saints and Napster which held that someone who owns a work and makes it available to the public may be liable under a theory of “deemed distribution”. The court distinguishes those cases by noting that Google does not actually own any of Perfect 10’s full-size images and communicates nothing but HTML instructions to users.