Recent Technology Provides New Use for Thumbnails and Stronger Protection for Copyright Owners

In a recent copyright infringement case in the U.S. District Court for the Central District of California, online provider of adult photos, Perfect 10, was granted a preliminary injunction stopping Google from using Perfect 10's photographs in thumbnail-sized copies that were stored on Google's server.

In a previous case regarding thumbnails, the Ninth Circuit acknowledged the public benefit of a search engine and considered the display of thumbnails as merely incidental in the commercial operation of the search engine and, therefore, the commercial nature of such a use was not enough to overcome a fair use defense. So, not surprisingly, Google claimed that its use of the thumbnail-sized photographs was allowed under the "fair use" doctrine. However, in this case Perfect 10 pointed to its successful and substantial marketing of thumbnail-sized photos to cell phone owners who paid to download the thumbnails for display in their cell phones, a use not contemplated in the earlier cases. This new market and new commercial use for thumbnail photos, coupled with Google's commercial use and benefits, tipped the fair use scale, however slightly, in favor of Perfect 10.

Perfect 10 also tried to stop Google from in-line linking to websites that display the full-size versions of the photos. In this effort, Perfect 10 first asserted a theory of direct infringement. In determining the issue of direct infringement, the Court adopted and applied the "server" test, which says that, for purposes of the "display" element of direct infringement, it is the website on which the content is stored and by which it is served that "displays" the content, not the website that merely in-line links to the storing website. In contrast to the thumbnail-sized photos, Google did not store the full-size images on its server. Rather, Google merely in-line linked to other's websites that stored the full-size images. Perfect 10 also tried to stop Google's use based on secondary liability, but the Court found that Perfect 10 would not likely succeed on this claim because Google does not materially contribute, encourage and assist the infringement. The Court distinguished Google from Napster by noting that, unlike Napster, Google helps users locate all types of information, not just the allegedly infringing content.

This case demonstrates that the result of the application of the fair use exception may change with commercial and technological developments, and as the exception is narrowed, the scope of copyright owners' rights will expand. Accordingly, users of copyrighted materials should be cautious in relying on the fair use doctrine as a defense.