Kelly v. Arriba

http://caselaw.lp.findlaw.com/data2/circs/9th/0055521p.pdf

FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT LESLIE A. KELLY, an individual, dba Les Kelly Publications, dba Les Kelly Enterprises, dba Show No. 00-55521 Me The Gold, D.C. No. Plaintiff-Appellant, CV-99-00560-GLT v. OPINION ARRIBA SOFT CORPORATION, AN ILLINOIS CORPORATION, Defendant-Appellee. Appeal from the United States District Court for the Central District of California Gary L. Taylor, District Judge, Presiding Argued and Submitted September 10, 2001--Pasadena, California Filed February 6, 2002 Before: Betty B. Fletcher, Thomas G. Nelson, and Marsha S. Berzon, Circuit Judges. Opinion by Judge Thomas G. Nelson

T.G. NELSON, Circuit Judge: This case involves the application of copyright law to the vast world of the internet and internet search engines. The plaintiff, Leslie Kelly, is a professional photographer who has copyrighted many of his images of the American West. Some of these images are located on Kelly's web site or other web sites with which Kelly has a license agreement. The defendant, Arriba Soft Corp.,1 operates an internet search engine that displays its results in the form of small pictures rather than the more usual form of text. Arriba obtained its database of pictures by copying images from other web sites. By clicking on one of these small pictures, called "thumbnails," the user can then view a large version of that same picture within the context of the Arriba web page.

To provide this functionality, Arriba developed a computer program that "crawls" the web looking for images to index. This crawler downloads full-sized copies of the images onto Arriba's server.

The second component of the Arriba program occurs when the user double-clicks on the thumbnail. From January 1999 to June 1999, clicking on the thumbnail produced the"Images Attributes" page. This page contained the original full-sized image imported directly from the originating web site, along with text describing the size of the image, a link to the originating web site, the Arriba banner, and Arriba advertising. The process of importing an image from another web site is called inline linking. The image imported from another web site is displayed as though it is part of the current web page, surrounded by the current web page's text and advertising. As a result, although the image in Arriba's Image Attributes page was directly from the originating web site, and not copied onto Arriba's site, the user typically would not realize that the image actually resided on another web site.

From July 1999 until sometime after August 2000, the results page contained thumbnails accompanied by two links: "Source" and "Details." The "Details " link produced a screen similar to the Images Attributes page but with a thumbnail rather than the full-sized image. Alternatively, by clicking on the "Source" link or the thumbnail from the results page, the site produced two new windows on top of the Arriba page. The window in the forefront contained the full-sized image, imported directly from the originating web site. Underneath that was another window displaying the originating web page. This technique is known as framing. The image from a second web site is viewed within a frame that is pulled into the pri-mary site's web page.

This case involves two distinct actions by Arriba that warrant analysis.

The first action consists of the reproduction of Kelly's images to create the thumbnails and the use of those thumbnails in Arriba's search engine.

The second action involves the display of Kelly's images through the inline linking and framing processes when the user clicks on the thumb-nails. Because these actions are distinct types of potential infringement, we will analyze them separately.

A claim of copyright infringement is subject to certain statutory exceptions, including the fair use exception. 8 This exception "permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster."9 The statute sets out four factors to consider in determining whether the use in a particular case is a fair use.

Part 1

1. Purpose and character of the use.

The Supreme Court has rejected the proposition that a commercial use of the copyrighted material ends the inquiry under this factor.12 Instead, [t]he central purpose of this investigation is to see . . . whether the new work merely supersede[s ] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative. 13 The more transformative the new work, the less important the other factors, including commercialism, become. 14

The second part of the inquiry as to this factor involves the transformative nature of the use. We must determine if Arriba's use of the images merely superseded the object of the originals or instead added a further purpose or different character. 16 We find that Arriba's use of Kelly's images for its thumbnails was transformative. Despite the fact that Arriba made exact replications of Kelly's images, the thumbnails were much smaller, lower-resolution images that served an entirely different function than Kelly's original images. Kelly's images are artistic works used for illustrative purposes. His images are used to portray scenes from the American West in an esthetic manner. Arriba's use of Kelly's images in the thumbnails is unrelated to any esthetic purpose. Arriba's search engine functions as a tool to help index and improve access to images on the internet and their related web sites. In fact, users are unlikely to enlarge the thumbnails and use them for artistic purposes because the thumbnails are of much lower resolution than theoriginals; any enlargement results in a significant loss of clar-ity of the image, making them inappropriate as display material.

Furthermore, it would be unlikely that anyone would use Arriba's thumbnails for illustrative or esthetic purposes because enlarging them sacrifices their clarity. Because Arriba's use is not superseding Kelly's use but, rather, has created a different purpose for the images, Arriba's use is transformative.

2. Nature of the copyrighted work.

Published works are more likely to qualify as fair use because the first appearance of the artist's expression has already occurred.30 Kelly's images appeared on the internet before Arriba used them in its search image. When considering both of these elements, we find that this factor only slightly weighs in favor of Kelly.

3. Amount and substantiality of portion used .

This factor will neither weigh for nor against either 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. It was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating web site. If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.

4. Effect of the use upon the potential market for or value of the copyrighted work.

Arriba's use of Kelly's images in its thumbnails does not harm the market for Kelly's images or the value of his images. 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.

Arriba's use of Kelly's images also would not harm Kelly's ability to sell or license his full-sized images. Arriba does not sell or license its thumbnails to other parties. Anyone who downloaded the thumbnails would not be successful selling the full-sized images because of the low-resolution of the thumbnails. There would be no way to view, create, or sell a clear, full-sized image without going to Kelly's web sites. Therefore, Arriba's creation and use of the thumbnails does not harm the market for or value of Kelly's images. This fator weighs in favor of Arriba.

Having considered the four fair use factors and found that two weigh in favor of Arriba, one is neutral, and one weighs slightly in favor of Kelly, we conclude that Arriba's use of Kelly's images as thumbnails in its search engine is a fair use.

Part 2

The second part of our analysis concerns Arriba's inline linking to and framing of Kelly's full-sized images. This use of Kelly's images does not entail copying them but, rather, importing them directly from Kelly's web site. Therefore, it cannot be copyright infringement based on the reproduction of copyrighted works as in the previous discussion. Instead, this use of Kelly's images infringes upon Kelly's exclusive right to "display the copyrighted work publicly."

1. Public display right.

The legislative history of the Act makes clear that "[s]ince`copies' are defined as including the material object `in which the work is first fixed,' the right of public display applies to original works of art as well as to reproductions of them."39 By inline linking and framing Kelly's images, Arriba is showing Kelly's original works without his permission.

By making Kelly's images available on its web site, Arriba is allowing public access to those images. The ability to view those images is unrestricted to anyone with a computer and internet access.

Looking strictly at the language of the Act and its legislative history, it appears that when Arriba imports Kelly's images into its own web page, Arriba is infringing upon Kelly's public display right. The limited case law in this area supports this conclusion.

No cases have addressed the issue of whether inline linking or framing violates a copyright owner's public display rights. However, in Playboy Enterprises, Inc. v. Webbworld, Inc.,44 the court found that the owner of an internet site infringed a magazine publisher's copyrights by displaying copyrighted images on its web site.45 The defendant, Webbworld, down-loaded material from certain newsgroups, discarded the text and retained the images, and made those images available to its internet subscribers.Playboy owned copyrights to many of the images Webbworld retained and displayed. The court found that Webbworld violated Playboy's exclusive right to display its copyrighted works, noting that allowing subscribers to view copyrighted works on their computer monitors while online was a display.47 The court also discounted the fact that no image existed until the subscriber downloaded it. The image existed in digital form, which made it available for decoding as an image file by the subscriber, who could view the images merely by visiting the Webbworld site.

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 argues that Kelly offered no proof that anyone ever saw his images and, therefore, there can be no display. We dispose of this argument, as did the court in Webbworld, because 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.

In a similar case, Playboy Enterprises, Inc. v. Russ Hardenburgh, Inc.,49 the court held that the owner of an electronic bulletin board system infringed Playboy's copyrights by displaying copyrighted images on its system.

Both of these cases highlighted the fact that the defendants took an active role in creating the display of the copyrighted images. The reason for this emphasis is that several other cases held that operators of bulletin board systems and internet access providers were not liable for copyright infringement. 54 These cases distinguished direct infringement from contributory infringement and held that where the defendants did not take any affirmative action that resulted in copying copyrighted works, but only maintained a system that acted as a passive conduit for third parties' copies, they were not liable for direct infringement.

Like the 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.

2. Fair use of full-sized images.

Purpose and Character of Use

Placing the images in a "frame" or locating them near text that specifies the size and originating web site is not enough to create new expression or meaning for the images. In sum, Arriba's full-sized images superseded the object of Kelly's images.60 Because Arriba has not changed the purpose or character of the use of the images, the first factor favors Kelly.

The analysis of the second factor, the nature of the copy-righted work, is the same as in the previous fair use discussion because Kelly's images are still the copyrighted images at issue. Therefore, as before, this factor slightly weighs in favor of Kelly.

The third fair use factor turns on the amount of the work displayed and the reasonableness of this amount in light of the purpose for the display.61 Arriba displayed the full images, which cuts against a finding of fair use.

Marketing

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 deter-ring people from visiting his web site. In addition, users would be able to download the full-sized images from Arriba's site and then sell or license those images themselves, reducing Kelly's opportunity to sell or license his own images.

In conclusion, all of the fair use factors weigh in favor of Kelly. Therefore, the doctrine of fair use does not sanction Arriba's display of Kelly's images through the inline linking or framing processes that puts Kelly's original images within the context of Arriba's web site.

CONCLUSION

We hold that Arriba's reproduction of Kelly's images for use as thumbnails in Arriba's search engine is a fair use under the Copyright Act.

We also hold that Arriba's display of Kelly's full-sized images is not a fair use and thus violates Kelly's exclusive right to publicly display his copyrighted works.

The district court's opinion is affirmed as to the thumbnails and reversed as to the display of the full-sized images. We remand with instructions to determine damages for the copyright infringement and the necessity for an injunc-tion. Each party shall bear its own costs and fees on appeal. AFFIRMED in part, REVERSED in part, and REMANDED.

• First time an appellate court has addressed inline linking and framing.
• Potential to influence laws about linking and framing without permission

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