Perfect 10 Gets Perfect Zero On Thumbnail Suit Against Amazon and Google

SAN FRANCISCO – Perfect 10, Inc., the online and print magazine dedicated to "the most beautiful natural women in the world," lost its appeal on Monday of a partially-granted preliminary injunction motion to keep online retailer and search engine Google, Inc. from reproducing thumbnail photos of its models.

At issue were Google Image Search, which works as its name implies, and's search function, which is Google-based. Although Google doesn't search inside Perfect 10's member area, its image search function doesn't discriminate between legal and infringed images it finds in searching the Web, and once Google finds an image, legal or not, it displays a thumbnail of the image – a situation that impelled Perfect 10 to send out letters, beginning in 2001, charging that Google's image search process infringed Perfect 10's copyrights. When Google refused to change its search process, Perfect 10 filed suit against Google just over three years ago, and against shortly after that.

At issue were the language of both the Copyright Act and the Digital Millennium Copyright Act (DMCA), with the former recognizing certain creator rights to images and the latter providing certain defenses against alleged infringement of such creator rights.

"Section 106(5) [of the Copyright Act] states that a copyright owner has the exclusive right 'to display the copyrighted work publicly'," wrote Judge Sandra S. Ikuta for the Ninth Circuit Appeals Court panel. "The Copyright Act explains that 'display' means 'to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process . . . .' Section 101 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.' Finally, the Copyright Act provides that '[a] work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, 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.'" [Citations omitted here and below.]

Both the District Court and the Ninth Circuit panel found that Perfect 10 had a clear copyright to at least some of the images in question, and since Google did reproduce tiny versions of those images ("thumbnails"), the District Court ruled that Perfect 10 would probably succeed in establishing at trial that Google had violated its copyright. The question then became, as the Ninth Circuit framed it, whether Google could show that it could prove "fair use" under the Copyright Act and/or the DMCA as a legitimate defense.

As the Ninth Circuit noted, "Sections 512(a) through (d) [of the DMCA] limit liability for (respectively): '(1) transitory digital network communications; (2) system caching; (3) information residing on systems or networks at the direction of users; and (4) information location tools.'" If Google could prove that its use of Perfect 10's images fell under any of those protected sections, it wouldn't be liable for monetary damages, and "may be subject only to the narrow injunctive relief set forth in section 512(j)," the Ninth Circuit ruled.

The District Court considered whether Google's server stored Perfect 10's images on its system, or merely conveyed the images to a Google user's computer while not retaining an image on its server. It found that Google did indeed store (and therefore "displayed" for copyright purposes) thumbnails, but did not store the full-size images it linked to on third-party computers or servers, and therefore did not legally "display" those. The Ninth Circuit agreed with that analysis.

However, part of the problem is that when Google provides a link to an image, it also shows a larger version of the image on the same page as the link, although the image itself is actually in a separate frame within the Google search result page – a distinction the Ninth Circuit found important.

"Google does not, however, display a copy of full-size infringing photographic images for purposes of the Copyright Act when Google frames in-line linked images that appear on a user’s computer screen," the Ninth Circuit ruled. "Because Google’s computers do not store the photographic images, Google does not have a copy of the images for purposes of the Copyright Act. ... Perfect 10 argues that Google displays a copy of the fullsize images by framing the full-size images, which gives the impression that Google is showing the image within a single Google webpage. While in-line linking and framing may cause some computer users to believe they are viewing a single Google webpage, the Copyright Act, unlike the Trademark Act, does not protect a copyright holder against acts that cause consumer confusion."

The Court ruled that the same logic applies to any cached images that a user's computer may retain. Moreover, it ruled that Perfect 10 could not prove, therefore, that Google was "distributing" Perfect 10's full-sized images, since distribution requires an "actual dissemination" of a copy, which the Court found that Google did not do.

However, Google's use of thumbnails were still at issue.

"Because Perfect 10 has succeeded in showing it would prevail in its prima facie case that Google’s thumbnail images infringe Perfect 10’s display rights, the burden shifts to Google to show that it will likely succeed in establishing an affirmative defense," Judge Ikuta wrote. "Google contends that its use of thumbnails is a fair use of the images and therefore does not constitute an infringement of Perfect 10’s copyright."

When Congress established the "fair use" exception to the copyright law, it set out four factors to consider: "(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;  (2) the nature of the copyrighted work;  (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and  (4) the effect of the use upon the potential market for or value of the copyrighted work." All four factors "are to be explored, and the results weighed together, in light of the purposes of copyright," the Court said, quoting from a U.S. Supreme Court decision, Campbell v. Acuff-Rose Music, Inc..

In making its decision in this case, the Ninth Circuit relied heavily on a previous Ninth Circuit case with similar facts, Kelly v. Arriba Soft Corp., where search engine Arriba provided thumbnails of photographer Kelly's images in response to search queries. However, where the District Court had distinguished the Perfect 10 case from Kelly, the Ninth Circuit, using the above-noted four-factor test, disagreed.

For example, where Perfect 10 had argued that Google's use of thumbnails might provide cellphone users who downloaded the images with free content, the Ninth Circuit, noting that that had not yet happened, ruled that such infringement was incidental when compared with the public benefit accorded Google users in finding imagery on the Internet. It also held that since the images had been previously published on the Web, Perfect 10 had forfeited the "enhanced protection available for an unpublished work"; that it was necessary for Google to use an entire image in order for searchers to identify what full-size image they might be looking for; and that the use of thumbnails did not harm Perfect 10's market for its full-size images.

"In this case, Google has put Perfect 10’s thumbnail images (along with millions of other thumbnail images) to a use fundamentally different than the use intended by Perfect 10," the Ninth Circuit concluded. "In doing so, Google has provided a significant benefit to the public. Weighing this significant transformative use against the unproven use of Google’s thumbnails for cell phone downloads, and considering the other fair use factors, all in light of the purpose of copyright, we conclude that Google’s use of Perfect 10’s thumbnails is a fair use. ... We conclude that Google is likely to succeed in proving its fair use defense and, accordingly, we vacate the preliminary injunction regarding Google’s use of thumbnail images."

But while the Ninth Circuit absolved Google (and later of any direct liability for infringing on Perfect 10's images, it refrained from doing so on the question of secondary liability.

"The district court also erred in its secondary liability analysis because it failed to consider whether Google and knew of infringing activities yet failed to take reasonable and feasible steps to refrain from providing access to infringing images," the Court ruled. "Therefore we must also reverse the district court’s holding that Perfect 10 was unlikely to succeed on the merits of its secondary liability claims. Due to this error, the district court did not consider whether Google and are entitled to the limitations on liability set forth in title II of the DMCA. The question whether Google and are secondarily liable, and whether they can limit that liability pursuant to title II of the DMCA, raise fact-intensive inquiries, potentially requiring further fact finding, and thus can best be resolved by the district court on remand. We therefore remand this matter to the district court for further proceedings consistent with this decision."

Even with the remand, however, the Ninth Circuit nevertheless vacated the District Court's preliminary injunction against Google using thumbnails of Perfect 10's images, allowing Google Image Search and's version of it to continue to function as it has been. The next step will likely be a trial in District Court on the secondary liability aspects of Google's and's linkage to full-sized Perfect 10 images on third-party sites. As of this writing, no court date on those issues has been set.