Embedding Online Content in Light of a Weakened "Server Test" and the UK's TuneIn Decision
On November 1, 2019, the High Court of England and Wales issued a decision in Warner Music UK Ltd. v. TuneIn Inc., a case that addressed whether a website that curated internet radio content was liable under UK law for providing its users with embedded links to radio streams freely available elsewhere on the internet.  EWHC (CH) 2923. The High Court's decision, which relied heavily on Court of Justice of the European Union precedent, reveals important contrasts with American copyright law's approach to embedded linking and is therefore an important guidepost for American businesses with a British (or European) web presence. This Advisory analyzes the differences between American and UK law regarding embedded linking revealed by the TuneIn decision, and considers the consequences of the decision for American companies.
Embedded Linking vs. Hosting Content
Understanding the debate around embedding content requires understanding how embedding differs from its alternative—direct hosting of online content. A website or other internet-based service "hosts" content stored in files on the organization's servers. So, a webpage containing images hosted by a company will contain HTML code that directs a visitor's browser to retrieve the image files directly from the company's server. This is called hosting.
Alternatively, a website may provide a visitor with a link to content that is not hosted on the organization's servers, but is stored on servers owned by someone else. In its simplest form, the link will be visible to the user, the user will click on the link, and the user's browser will open the third-party webpage housing the pertinent content. "Embedding" (also known as "inline linking") allows a website to provide visitors with access to content hosted on third-party webpages and servers without noticeably navigating away to these third-party webpages. This is achieved via HTML code on the primary webpage that directs visitors' browsers to operate in the background to retrieve the content from its third-party location and to embed the content as part of the primary webpage's overall display.
The American "Server Test"
Perfect 10, Inc. v. Amazon.com, Inc.
In 2007, the United States Court of Appeals for the Ninth Circuit issued Perfect 10, Inc. v. Amazon.com, Inc., which provided a framework for understanding the differences in copyright liability for direct hosting and embedding unauthorized images on websites. 508 F.3d 1146 (9th Cir. 2007).
The core of the Perfect 10 holding addressed Google's liability for (a) hosting thumbnail-sized versions of Perfect 10's copyrighted images and (b) embedding links to full-sized versions of these images, in each case as part of Google's Image Search function. Perfect 10 claimed that these practices violated its exclusive rights to publicly display and distribute copies of its works. Although the Copyright Act separately prohibits the making of unauthorized copies of a work, the Ninth Circuit's analysis of the public display right relied heavily on the physical location of the image files being displayed. The court reasoned that a website publicly displays a copy of a work only when the site communicates to visitors' computer screens the image file stored on the website's own servers. Google was thus publicly displaying the thumbnail images stored on its servers (although the court subsequently held that Google was likely to succeed in its fair use defense, based on the important transformative purpose of the search function). On the other hand, Google was not publicly displaying the full-sized images when it communicated HTML code to visitors' computers that allowed the visitors' browsers to access the image files stored on third-party websites' servers. This was the case even if Google's HTML code directed visitors' browsers to access the image files and arrange them together with other Google materials as part of a Google webpage layout—i.e., where the images were embedded. In that case, as with other types of linking, Google was merely providing information on the location of the image file, and it was the interaction of a visitor's browser with a third-party website that led to a display. The court similarly held that Google was not distributing copies of the Perfect 10 images where it did not possess copies of the image files and was merely providing HTML instructions regarding where the image files could be accessed.
Goldman v. Breitbart News Network, LLC
The "server test" established in Perfect 10 stood for the next 11 years as fertile soil for the blossoming of an internet economy filled with websites and platforms whose business models assumed that inline linking did not violate the US Copyright Act. In 2018, however, the Goldman v. Breitbart News Network, LLC decision cast doubt on the unassailability of the by-now widespread practice of inline linking. 302 F. Supp. 3d 585 (S.D.N.Y. 2018). In Goldman, the district court addressed whether the defendant news organizations had violated the plaintiff's public display right by embedding links in their online articles to Twitter postings that had reproduced, without authorization, a photo the plaintiff had taken and posted to Snapchat. Visitors to each defendants' pertinent webpage would see on their computer screen the defendant's article text accompanied by the Tweet containing the unauthorized image. The court in Goldman refused to apply the Ninth Circuit's "server test" for distinguishing embedding from the direct hosting of images, and instead held that the Copyright Act does not require that a party possess a copy of an image in order to display it. The Copyright Act's broad definition of "public display" includes the communication of an image "by any device or process", and by providing HTML instructions that directed web browsers to retrieve image files from third-party servers and embed them within the defendants' news articles, the defendants were implementing such a device or process. The court also thought the "server test" was no longer viable in light of the Supreme Court's recent decision in American Broadcasting Cos., Inc. v. Aereo, Inc., which had rejected the notion that copyright liability could be avoided based on technical workarounds invisible to consumers and rights holders alike. 573 U.S. 431 (2014). The court reasoned that Aereo supported holding defendant news organizations liable regardless of invisible technicalities like server location, where the practical effect of embedding the unauthorized Tweets was that the defendants' webpages appeared to be displaying the infringing image.
The Goldman decision's rejection of the "server test" surprised many, leading to warnings that broader adoption of the decision would threaten much that had become standard practice on the internet in the wake of Perfect 10. The subsequent settlement of all claims in Goldman means that the Second Circuit did not have a chance to express its views on the viability of the "server test."
The British Approach
While American courts are grappling with the degree to which embedding linked content crosses the line into public display, courts in the UK essentially take this for granted. As observed in TuneIn, UK (and European Union) law provides authors with the exclusive right to authorize the communication of their work to the public, and even providing a clickable link to a third-party webpage containing the work (i.e., the simplest form of linking discussed above) is considered to communicate the work. Where the work is already available to the public at another site, however, as long as the availability elsewhere occurred with the author's permission, the author's rights will only be infringed if the link communicates the work to a "new public" or using "new technical means." Where the work is only already available elsewhere without the author's permission, the linking website will be liable if they knew the prior posting was unlawful, and for-profit-linkers will be rebuttably presumed to have such knowledge.
The High Court applied the foregoing principles to TuneIn Radio, an American company operating an online service available via website or app that aggregates and curates links to more than 100,000 internet radio stations for its users, and provides a searchable index of such stations. Important to the question of liability under UK law, TuneIn users in the UK were provided with UK-specific station categories, search options, and advertising. TuneIn's links to internet radio stations were embedded within the TuneIn site and service—that is, when a user selected a station for streaming, the user's browser would appear to remain on the TuneIn website throughout the streaming process, and TuneIn would continue to provide additional content, such as advertising, to the user.
The court divided its analysis of TuneIn's liability according to four different categories of internet radio stations made available by TuneIn to UK listeners. Specifically, the court considered separately TuneIn's liability for: (1) embedding third-party radio station streams which were already licensed to stream the claimant's sound recordings in the UK; (2) embedding third-party radio station streams which were not licensed by the claimants in any jurisdiction; (3) embedding third-party radio station streams licensed only in territories other than the UK; and (4) communicating to users certain premium stations created exclusively for TuneIn (that were also unlicensed in the UK).
Addressing first those stations licensed only outside of the UK, the court held that the presence of any license at all meant that TuneIn's secondary communication of the station must be analyzed as though the underlying stream was authorized, and thus TuneIn's liability would depend on whether TuneIn communicated the stream to a new public. Relying on TuneIn's targeting of UK users via advertising and UK-specific curation, the court held that TuneIn's UK audience constituted a new public. The court reasoned that the question of communication to a new public should be assessed by comparing the public audience to which the author had consented via the original license with the public to which TuneIn communicated the stream. Although the original license could be deemed to be granting consent to the underlying streams appearing on the internet and thus accessible to all internet users, the court held that the pertinent authors, by licensing their works only outside of the UK, could not be deemed to have consented to the streams being communicated to a specifically targeted UK audience. Accordingly by targeting a UK audience with streams that had heretofore not been targeted at the UK, TuneIn was held to be communicating these streams to a new public—the targeted UK public—and was thus liable for violating the exclusive communication right.
Turning to those stations not licensed in any jurisdiction, the court provided two paths of analysis that arrived at the same result. First, the court mused that streams from unlicensed stations could likewise not be said to have been previously communicated to a targeted UK audience, and thus TuneIn's communication to a targeted UK public would be considered communication to a new public. (It should be noted, however, that there is some awkwardness in describing the targeted UK audience as a new public when there had been no consent for the stream to be communicated to any public—who was the old public? This awkwardness underlines the ill-fitting logic of equating the scope of consent with the question of a "new public.") Second, because the embedded streams had never been licensed, TuneIn was subject to a rebuttable presumption that it knew that such streams were unauthorized. The court held that TuneIn could not rebut this presumption, emphasizing that TuneIn, a service specializing in music streaming, was expected to pay attention to rights clearance issues and even to verify the licensing status of each station it indexed. Accordingly, TuneIn had violated the exclusive communication right by embedding links to the category of unlicensed stations.1
TuneIn was not liable, however, for embedding those streams licensed in the UK. By licensing the streams in the UK, the relevant rights holder was consenting to those streams being targeted at a UK public, and thus TuneIn's act of communication to the targeted UK public was not a communication to a new public. Importantly, the court thought it irrelevant whether the underlying UK license permitted TuneIn's embedding of the stream. Consistent with its analysis regarding the streams licensed only outside of the UK, the court reasoned that as long as the underlying stream was in some sense licensed, the remaining question was not whether TuneIn's embedding was licensed, but merely whether TuneIn's embedding targeted a new public. Because the targeted public of the underlying internet radio station and TuneIn were the same, TuneIn was not liable for making these streams available to its users.
After addressing TuneIn's direct liability for communicating the various radio streams to the public, the court moved on to consider whether TuneIn was liable for its role in any direct infringement by the underlying stations not licensed in the UK. The court held TuneIn liable under theories of both authorization and joint tortfeasance applicable under UK law, but most striking was the court's reasoning in holding that the radio stations themselves had committed infringing acts of communication to the public: The court reasoned that because TuneIn's service caused the stations to be communicated to the new targeted-UK public, and because communication to the public was a strict liability tort, the stations were committing acts of UK copyright infringement even if they had no warning regarding TuneIn's behavior and its consequences.
On its face, the TuneIn decision suggests that British courts take a far more expansive approach to the meaning of "communication to the public" than American courts take to the meaning of "public display." Both embedding and more traditional linking to content hosted elsewhere can be a violation under UK law in two distinct cases: (1) where the service provider knew or should have known that the content hosted elsewhere was unauthorized, or (2) even if the content hosted elsewhere was authorized, where the service provider took steps to target its behavior to a segment of the public that had not yet been targeted.
On the other hand, the overall result of the TuneIn decision in the UK shares certain similarities with the Goldman decision from the Southern District of New York, suggesting that the divergent UK and American approaches might not be that far apart in their practical consequences. The embedding at issue in TuneIn—the fact that the user remained on the TuneIn website and continued receiving UK-targeted advertisements during streaming—was important to the court's decision that TuneIn users constituted a new public and thus that an infringing communication had occurred. The TuneIn court's reasoning, however, leaves open the possibility that a service that provides curation of internet radio stations for UK users, but that only provides traditional links to such stations, might still be liable for targeting communications at a new UK public. Similarly, although the Goldman court also emphasized that visitors to the defendants' websites never left the sites to view the infringing Tweets, its reasoning likewise left open whether simply providing traditional links to the infringing Tweets would have qualified as a "device or process" by which the Tweets were eventually displayed on users computers.
The TuneIn approach is arguably even more generous to online embedders than Goldman on another dimension. Although, under the Goldman approach, an online service provider would require their own public display license to authorize embedding content, the TuneIn court's decision permits embedding as long as the content is available with authorization elsewhere, targeted to the same audience, regardless of whether the embedder is itself licensed by the holder of the copyright to the embedded content.
TuneIn is currently on appeal, leaving online content distributors uncertain regarding implementation of the decision's controversial guidelines. If upheld, TuneIn will require service providers to pay additional attention to the geographic scope of their users, and the specificity with which these users are targeted. The decision contemplated a clean division of internet users into various national audiences, based on the reach of the streaming licenses at issue. In a comparable future case, an American business might obtain authorization under only American law to communicate content online. TuneIn instructs that such a business risks being considered liable for communicating the content outside of the United States if foreign users of the service are subjected to targeted advertising or other acts intended to cater to their experience as a foreign audience. And TuneIn leaves open questions for the many internet business in which content, often provided by users, is targeted at, or licensed for communication to, a far less geographically-constrained public. Will follow-on embedders of such content be able to avoid liability on the theory that inline linking to the content will rarely be held to target a new public that was not targeted by the initial communication? Where worldwide licensing and the targeting of an international audience is the norm, the TuneIn analysis might, similar to Perfect 10, find embedding broadly permissible.
The TuneIn decision is also garnering attention for holding that TuneIn's targeting of the UK audience renders foreign internet radio stations strictly liable for communications targeted to the UK public, despite not having themselves lifted a finger towards the UK. If this reasoning is followed, content distributors may be held liable for infringement in the UK even without taking any actions to directly target the UK themselves. To avoid such liability, it may be necessary for a business either to ensure that content licenses include authorization to target a UK audience or to enact technological protection measures that prevent their services from being available in the UK altogether.
© Arnold & Porter Kaye Scholer LLP 2020 All Rights Reserved. This Advisory is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.
The court’s analysis of the fourth category of stations—the TuneIn-exclusive stations—need not be discussed at length, as these exclusive stations could not be said to be embedded in the sense relevant to the court’s decision. Because these stations were not previously communicated at all, TuneIn’s provision of these streams in the UK without a license violated the right of communication to the public.