LESLIE A. KELLY, et al., Plaintiff, vs. ARRIBA SOFT CORP.,
et al., Defendants.
Case No. SA CV 99-560 GLT[JW]
UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF
CALIFORNIA, SOUTHERN DIVISION
77 F. Supp. 2d 1116; 1999 U.S. Dist. LEXIS 19304; 53
U.S.P.Q.2D (BNA) 1361; Copy. L. Rep. (CCH) P28,014
December 15, 1999, Decided
December 15, 1999, Filed
ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT
On apparent first impression, the Court holds the use by an Internet "visual
search engine" of others' copyrighted images is a prima facia copyright
violation, but it may be justified under the "fair use" doctrine. The Court
finds that, under the particular circumstances of this case, the "fair use"
[*1117] doctrine applies, and the Digital Millennium Copyright Act is not
violated.
Defendant's Motion for Partial Summary Judgment on Plaintiff's First and
Second Claims for Relief is GRANTED. Plaintiff's Motion for Partial Summary
Judgment is DENIED.
I. BACKGROUND
Defendant Ditto (formerly known as Arriba) operates a "visual search engine"
on the Internet. Like other Internet search engines, it allows a user to obtain
a list of related Web [**2] content in response to a search query entered by
the user. Unlike other Internet search engines, Defendant's retrieves images
instead of descriptive text. It produces a list of reduced, "thumbnail" pictures
related to the user's query.
During the period when most of the relevant events in this case occurred,
Defendant's visual search engine was known as the Arriba Vista Image Searcher.
By "clicking" on the desired thumbnail, an Arriba Vista user could view the
"image attributes" window displaying the full-size version of the image, a
description of its dimensions, and an address for the Web site where it
originated. n1 By clicking on the address, the user could link to the
originating Web site for the image. n2
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1 This full-size image was not technically located on Defendant's Web site.
It was displayed by opening a link to its originating Web page. But only the
image itself, and not any other part of the originating Web page, was displayed
on the image attributes page. From the user's perspective, the source of the
image matters less than the context in which it is displayed.
n2 Defendant's current search engine, ditto.com, operates in a slightly
different manner. When a ditto.com user clicks on a thumbnail, two windows open
simultaneously. One window contains the full-size image; the other contains the
originating Web page in full.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**3]
Ditto's search engine (in both of its versions) works by maintaining an
indexed database of approximately two million thumbnail images. These thumbnails
are obtained through the operation of Ditto's "crawler," a computer program that
travels the Web in search of images to be converted into thumbnails and added to
the index. n3 Ditto's employees conduct a final screening to rank the most
relevant thumbnails and eliminate inappropriate images.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n3 Images are briefly stored in full on Defendant's server until the
thumbnail is made; they are then deleted. Joint Stip. P 32. There is no claim
that Defendant provides any access to the full-sized images during this period.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Plaintiff Kelly is a photographer specializing in photographs of California
gold rush country and related to the works of Laura Ingalls Wilder. He does not
sell the photographs independently, but his photographs have appeared in several
books. Plaintiff also maintains two Web sites, one of which
(www.goldrush1849.com) provides a "virtual tour" of California's [**4] gold
rush country and promotes Plaintiff's book on the subject, and the other
(www.showmethegold.com) markets corporate retreats in California's gold rush
country.
In January 1999, around thirty five of Plaintiff's images were indexed by the
Ditto crawler and put in Defendant's image database. As a result, these images
were made available in thumbnail form to users of Defendant's visual search
engine.
After being notified of Plaintiff's objections, Ditto removed the images from
its database, though due to various technical problems some of the images
reappeared a few times. Meanwhile Plaintiff, having sent Defendant a notice of
copyright infringement in January, filed this action in April. Plaintiff argues
its copyrights in the images were infringed by Defendant's actions and also
alleges Defendant violated the Digital Millennium Copyright Act (DMCA) by
removing or altering the copyright management information associated with
Plaintiff's images. n4
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n4 Defendant's request for judicial notice of a Nature article, and Plaintiff
's objection to the request, are both inappropriate. The parties have already
included this article as Exhibit 5 to their Joint Stipulation of Facts.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**5]
[*1118] II. DISCUSSION
These cross motions for summary adjudication present two questions of first
impression. The first is whether the display of copyrighted images by a "visual
search engine" on the Internet constitutes fair use under the Copyright Act. The
second is whether the display of such images without their copyright management
information is a violation of the Digital Millennium Copyright Act.
Summary judgment is proper if there is no genuine issue of fact and the
moving party is entitled to a judgment as a matter of law. Fed. R. Civ. Proc.
56(c). If no material historical facts are disputed, the ultimate conclusion to
be drawn on the issue of "fair use" is for the Court and not a jury. Harper &
Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 85 L. Ed. 2d 588, 105
S. Ct. 2218 (1985); Fisher v. Dees, 794 F.2d 432, 436 (9th Cir. 1986).
A. Fair Use
In order to show copyright infringement, Plaintiff must show ownership of a
valid copyright and invasion of one of the exclusive rights of copyright
holders. 17 U.S.C. § 106. Defendant does not dispute the validity of Plaintiff
's copyrights or his ownership of them. Defendant also does not [**6] dispute
it reproduced and displayed Plaintiff's images in thumbnail form without
authorization. Plaintiff thus has shown a prima facie case of copyright
infringement unless the fair use doctrine applies.
"Fair use" is a limitation on copyright owners' exclusive right "to reproduce
the copyrighted work in copies." 17 U.S.C. § 106(1). It is codified at 17
U.S.C. § 107, which provides:
Notwithstanding the provisions of sections 106 and 106A, the fair use
of a copyrighted work, including such use by reproduction in copies or
phonorecords or by any other means specified by that section, for
purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright. In determining whether
the use made of a work in any particular case is a fair use the
factors to be considered shall include--
(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 [**7] copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of
the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of
fair use if such finding is made upon consideration of all the above
factors.
Fair use is an affirmative defense, and defendants carry the burden of proof
on the issue. American Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d
Cir. 1995); Columbia Pictures Ind. v. Miramax Films Corp., 11 F. Supp. 2d 1179,
1187 (C.D. Cal. 1998) ("because fair use is an affirmative defense, Defendants
bear the burden of proof on all of its factors"). Based on an analysis of the
factors, the Court finds there is fair use here.
1. Purpose and Character Of The Use
The first factor considers the nature of the use, including whether the use
is commercial or educational. This, however, does not end the inquiry. "Purpose
and character" also involve an assessment of whether "the new work merely
supersedes 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 [**8] message; it asks, in other words, whether and to
what extent the new work is transformative." Campbell v. Acuff-Rose Music, 510
U.S. 569, 579, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994) (citation omitted).
"The more transformative the new work, the less will be the significance of
other [*1119] factors, like commercialism, that may weigh against a finding of
fair use." Id. at 579.
There is no dispute Defendant operates its Web site for commercial purposes.
Plaintiff's images, however, did not represent a significant element of that
commerce, nor were they exploited in any special way. n5 They were reproduced as
a result of Defendant's generally indiscriminate method of gathering images.
Defendant has a commercial interest in developing a comprehensive thumbnail
index so it can provide more complete results to users of its search engine. The
Ditto crawler is designed to obtain large numbers of images from numerous
sources without seeking authorization. n6 Plaintiff's images were indexed as a
result of these methods. While the use here was commercial, it was also of a
somewhat more incidental and less exploitative nature than more traditional
types of "commercial use." n7
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n5 The use in this case is commercial, but it is unusual and less serious
than many other commercial uses. If, for example, Plaintiff's images were used
without authorization in advertising for Defendant's Web site, a finding of fair
use would be much less likely. [**9]
n6 The parties argue at length about the possibility of blocking the Ditto
crawler from a Web site by use of a "robots.txt" file or other methods.
Defendant posted instructions on its Web site for blocking the Ditto crawler in
March, after Plaintiff's images had already been indexed. Plaintiff's Web sites
have never used any of these blocking methods. Joint Stip. P 34.
The Ditto crawler has, in the past, apparently visited sites that were
supposed to be blocked. Plaintiff argues this is evidence of bad faith by
Defendant and suggests the fair use defense should as a result be precluded. The
record shows Defendant made efforts to correct problems of this sort when it
became aware of them, and did not act in bad faith.
n7 Defendant also sought to promote a now-discontinued software product
called Arriba Express. Arriba Express allowed users to "vacuum" an entire
originating Web site and store it on their computers simply by pointing at a
thumbnail. Joint Stip. P 45-50, Exh. 18. The images would be stored along with
all content from the originating Web site. Arriba Express served a function
related to that of the search engine, and Defendant's promotion of it represents
a related type of "commercial use."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**10]
The most significant factor favoring Defendant is the transformative nature
of its use of Plaintiff's images. Defendant's use is very different from the use
for which the images were originally created. Plaintiff's photographs are
artistic works used for illustrative purposes. Defendant's visual search engine
is designed to catalog and improve access to images on the Internet. Joint Stip.
PP 27-29, 32. The character of the thumbnail index is not esthetic, but
functional; its purpose is not to be artistic, but to be comprehensive.
To a lesser extent, the Arriba Vista image attributes page also served this
purpose by allowing users to obtain more details about an image. The image
attributes page, however, raises other concerns. It allowed users to view (and
potentially download) full-size images without necessarily viewing the rest of
the originating Web page. At the same time, it was less clearly connected to the
search engine's purpose of finding and organizing Internet content for users.
The presence of the image attributes page in the old version of the search
engine somewhat detracts from the transformative effect of the search engine.
But, when considering purpose and character [**11] of use in a new enterprise
of this sort, it is more appropriate to consider the transformative purpose
rather than the early imperfect means of achieving that purpose. The Court finds
the purpose and character of Defendant's use was on the whole significantly
transformative.
The Court finds the first factor weighs in favor of fair use.
2. Nature of the Copyrighted Work
The second factor in § 107 is an acknowledgment "that some works are closer
to the core of intended copyright protection than others, with the consequence
that fair use is more difficult to establish when [*1120] the former works are
copied." Campbell, supra 510 U.S. at 586. Artistic works like Plaintiff's
photographs are part of that core. The Court finds the second factor weighs
against fair use.
3. Amount And Substantiality of the Portion Used
The third fair use factor assesses whether the amount copied was "reasonable
in relation to the purpose of the copying." Id. The analysis focuses on "the
persuasiveness of a [copier's] justification for the particular copying done,
and the enquiry will harken back to the first of the statutory factors, for . .
. the extent of permissible copying [**12] varies with the purpose and
character of the use." Id. at 586-87.
In the thumbnail index, Defendant used Plaintiff's images in their entirety,
but reduced them in size. Defendant argues it is necessary for a visual search
engine to copy images in their entirety so users can be sure of recognizing
them, and the reduction in size and resolution mitigates damage that might
otherwise result from copying. As Defendant has illustrated in its brief,
thumbnails cannot be enlarged into useful images. Defendant's Memo of P & A, at
3. Use of partial images or images further reduced in size would make images
difficult for users to identify, and would eliminate the usefulness of Defendant
's search engine as a means of categorizing and improving access to Internet
resources.
As with the first factor, the Arriba Vista image attributes page presents a
greater problem because it displayed a full-size image separated from the
surrounding content on its originating Web page. Image attributes (e.g.
dimensions and the address of the originating site) could have been displayed
without reproducing the full-size image, and the display of the full image was
not necessary to the main purposes [**13] of the search engine. n8
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n8 The newer search engine, ditto.com, appears to lessen this problem by
eliminating the image attributes page and simultaneously opening the originating
Web page along with a full-size image.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
If only the thumbnail index were at issue, Defendant's copying would likely
be reasonable in light of its purposes. The image attributes page, however, was
more remotely related to the purposes of the search engine. The Court finds the
third factor weighs slightly against fair use.
4. Effect of the Use On The Potential Market or Value
The fourth factor inquiry examines the direct impact of the defendant's use
and also considers "whether unrestricted and widespread conduct of the sort
engaged in by the defendant . . . would result in a substantially adverse impact
on the potential market for the original." Campbell, supra, 510 U.S. at 590
(citation omitted).
The relevant market is Plaintiff's Web sites as a whole. The photographs are
used to promote the products sold by Plaintiff's [**14] Web sites (including
Plaintiff's books and corporate tour packages) and draw users to view the
additional advertisements posted on those Web sites. The fourth factor addresses
not just the potential market for a particular photo, but also its "value." The
value of Plaintiff's photographs to Plaintiff could potentially be adversely
affected if their promotional purposes are undermined.
Defendant argues there is no likely negative impact because its search engine
does not compete with Plaintiff's Web sites and actually increases the number of
users finding their way to those sites.
Plaintiff argues the market for his various products has been harmed.
Defendant's conduct created a possibility that some users might improperly copy
and use Plaintiff's images from Defendant's site. Defendant's search engine also
enabled users to "deep link" directly to the pages containing retrieved images,
and thereby bypass the "front page" of the originating Web site. As a result,
these users would be [*1121] less likely to view all of the advertisements on
the Web sites or view the Web site's entire promotional message. However,
Plaintiff has shown no evidence of any harm or adverse impact.
In the absence [**15] of any evidence about traffic to Plaintiff's Web sites
or effects on Plaintiff's businesses, the Court cannot find any market harm to
Plaintiff. The Defendant has met its burden of proof by offering evidence
tending to show a lack of market harm, and Plaintiff has not refuted that
evidence. The Court finds the fourth factor weighs in favor of fair use.
5. Conclusion--Fair Use
The Court finds two of the four factors weigh in favor of fair use, and two
weigh against it. The first and fourth factors (character of use and lack of
market harm) weigh in favor of a fair use finding because of the established
importance of search engines and the "transformative" nature of using reduced
versions of images to organize and provide access to them. The second and third
factors (creative nature of the work and amount or substantiality of copying)
weigh against fair use.
The first factor of the fair use test is the most important in this case.
Defendant never held Plaintiff's work out as its own, or even engaged in conduct
specifically directed at Plaintiff's work. Plaintiff's images were swept up
along with two million others available on the Internet, as part of Defendant's
efforts to provide [**16] its users with a better way to find images on the
Internet. Defendant's purposes were and are inherently transformative, even if
its realization of those purposes was at times imperfect. Where, as here, a new
use and new technology are evolving, the broad transformative purpose of the use
weighs more heavily than the inevitable flaws in its early stages of
development.
The Court has weighed all of the § 107 factors together. The Court finds
Defendant's conduct constituted fair use of Plaintiff's images. There is no
triable issue of material fact remaining to be resolved on the question of fair
use, and summary adjudication is appropriate. Defendant's motion is GRANTED and
Plaintiff's motion is DENIED as to the copyright infringement claims.
B. Digital Millennium Copyright Act
Enacted on October 28, 1998, the Digital Millennium Copyright Act (DMCA)
implements two earlier World Intellectual Property Organization treaties.
Section 1202 of the DMCA governs "integrity of copyright management information.
" n9 Section 1202(a) prohibits falsification of copyright management information
with the intent to aid copyright infringement. Section 1202(b) prohibits, unless
authorized, [**17] several forms of knowing removal or alteration of copyright
management information. n10 Section 1203 creates a federal civil action for
violations of these provisions.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n9 "Copyright management information" is defined, in relevant part, as:
Any of the following information conveyed in connection with copies .
. . of a work . . . or displays of a work, including in digital form .
. .:
(1) The title and other information identifying the work, including
the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author
of a work.
(3) The name of, and other identifying information about, the
copyright owner of the work, including the information set forth in a
notice of copyright.
17 U.S.C. § 1202 (c).n10 Section 1202(b) provides, in relevant part,
No person shall, without the authority of the copyright owner or the
law--
(1) intentionally remove or alter any copyright management
information,
. . .
(3) distribute . . . copies of works . . . knowing that copyright
management information has been removed or altered without authority
of the copyright owner or the law, knowing, or, with respect to civil
remedies under section 1203, having reasonable grounds to know, that
it will induce, enable, facilitate, or conceal an infringement of any
right under [federal copyright law].
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**18]
Plaintiff argues Defendant violated § 1202(b) by displaying thumbnails of
[*1122] Plaintiff's images without displaying the corresponding copyright
management information consisting of standard copyright notices in the
surrounding text. Joint Stip. of Facts, PP 64-69. Because these notices do not
appear in the images themselves, the Ditto crawler did not include them when it
indexed the images. n11 Id. P 70. As a result, the images appeared in Defendant
's index without the copyright management information, and any users retrieving
Plaintiff's images while using Defendant's Web site would not see the copyright
management information.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n11 There was one exception--a version of the "Shasta Rainbow" image obtained
by the Ditto crawler from a third-party Web site. The copyright notice for that
image was incorporated into the image itself (fine print along the edge of the
picture). See Joint Stip., PP 72-73. Plaintiff's allegations of DMCA violations
are inapplicable to this image.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Section 1202(b)(1) does not apply to [**19] this case. Based on the language
and structure of the statute, the Court holds this provision applies only to the
removal of copyright management information on a plaintiff's product or original
work. Moreover, even if § 1202(b)(1) applied, Plaintiff has not offered any
evidence showing Defendant's actions were intentional, rather than merely an
unintended side effect of the Ditto crawler's operation.
Here, where the issue is the absence of copyright management information from
copies of Plaintiff's works, the applicable provision is § 1202(b)(3). To show a
violation of that section, Plaintiff must show Defendant makes available to its
users the thumbnails and full-size images, which were copies of Plaintiff's work
separated from their copyright management information, even though it knows or
should know this will lead to infringement of Plaintiff's copyrights. There is
no dispute the Ditto crawler removed Plaintiff's images from the context of
Plaintiff's Web sites where their copyright management information was located,
and converted them to thumbnails in Defendant's index. There is also no dispute
the Arriba Vista search engine allowed full-size images to be viewed without
[**20] their copyright management information.
Defendant's users could obtain a full-sized version of a thumbnailed image by
clicking on the thumbnail. A user who did this was given the name of the Web
site from which Defendant obtained the image, where any associated copyright
management information would be available, and an opportunity to link there. n12
Users were also informed on Defendant's Web site that use restrictions and
copyright limitations may apply to images retrieved by Defendant's search
engine. n13
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 Through Defendant's current search engine, ditto.com, the user can no
longer open a full-sized image without also opening the site where its copyright
management information is located.
n13 Plaintiff argues Defendant's warnings are insufficient because they do
not appear with the thumbnail images on the search result pages produced by the
search engine. The Arriba Vista Web site only offered a warning if users clicked
on a link to its "Copyright" page. This warning may arguably have been placed in
the wrong place to deter some potential copyright infringers. But this does not
necessarily mean Defendant "knew" or "should have known" for the purposes of a
DMCA violation, especially since Plaintiff offers no evidence of any actual
copyright infringement about which Defendant "should have known."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**21]
Based on all of this, the Court finds Defendant did not have "reasonable
grounds to know" it would cause its users to infringe Plaintiff's copyrights.
Defendant warns its users about the possibility of use restrictions on the
images in its index, and instructs them to check with the originating Web sites
before copying and using those images, even in reduced thumbnail form.
Plaintiff's images are vulnerable to copyright infringement because they are
displayed on Web sites. Plaintiff has not shown users of Defendant's site were
any more likely to infringe his copyrights, any of these users did infringe, or
Defendant should reasonably have expected infringement.
[*1123] There is no genuine issue of material fact requiring a trial on
Plaintiff's DMCA claims, and summary adjudication is appropriate. The Court
finds there was no violation of DMCA § 1202. Defendant's motion is GRANTED and
Plaintiff's motion is DENIED on the DMCA claim.
DATED: December 15, 1999.
GARY L. TAYLOR
UNITED STATES DISTRICT JUDGE