Getty v. Microsoft: Flagrant Infringement or a New Fair Use Frontier?

October 21, 2014

By Elena Kravtsoff, Esq.

On September 4, 2014, Getty Images, Inc. [Getty] filed a lawsuit in the Southern District Court of New York against Microsoft Corporation [Microsoft] over the Bing Image Widget, whose beta version was released less than two weeks earlier. The lawsuit seeks to “enjoin Defendant Microsoft from infringing and facilitating the massive infringement of Plaintiff’s copyrights through [the Widget].” In its complaint, Getty describes itself as “one of the world’s largest providers of commercial visual content and the leading provider of commercial images online, representing more than eighty million unique works of digital imagery.” According to Getty, the Widget allows website publishers to display images collected by the Bing Image Search without attribution of, much less the permission of the copyright owners. Moreover, says Getty, the Widget financially benefits Microsoft by promoting the Bing Search Engine. As discussed below, Microsoft adamantly disagrees. The parties exchanged a flurry of briefs in September and October. As of the date of this blog’s publication, Getty’s motion for a preliminary injunction has been denied since the court was satisfied that Microsoft disabled the Widget and indicated that it does not intend to re-launch it, and the court’s decision on Microsoft’s motion to dismiss remains to be seen.

The Bing Image Widget is no longer publically available, but based on common denominators in Getty’s and Microsoft’s descriptions of the service, the Widget is a snippet of code that an individual building a website can program into his or her webpage. The website builder then runs an image search, and images responsive to his or her query (found through Microsoft’s Bing Search Engine) are displayed through the Widget, in either a collage or a slideshow format. Thumbnail images for the collage format are pulled directly from the image copies saved by the Bing Search Engine and stored on Microsoft’s servers. Images displayed in the slideshow view are funneled through the Widget from the websites that host them and are not copied or stored by Microsoft. Screenshots of the collage and slideshow displays are available in both parties’ pleadings.

Getty and Microsoft’s consensus on what the Widget is and what is does ends with this basic description. According to Getty, Microsoft infringes on Getty’s exclusive rights to reproduce and publically display copyrighted works that are allotted to it by 17 U.S.C. § 106(1), (5). Microsoft, Getty argues, advertises to publishers that the image display powered by the Widget “enhances your web site… and provides your users with beautiful, configurable image galleries and slideshows.” Getty explains that it itself offers an “Embed” feature, which allows non-commercials users to display millions of Getty’s images on their website for free. Notably, when users populate their websites with images through Getty’s “Embed” feature—which, like the Widget, is a snippet of code—the images are automatically attributed and link to Getty’s website, allowing individuals to license the images for commercial use. Getty agues that the Bing Image Widget is similar to the “Embed” feature, but that instead of properly attributing the images, it boasts Bing’s logo, and, at least in the collage view, it directs users to the Bing Search Engine, rather than the copyright owner’s site. Getty argues that Microsoft and Widget users benefit through the Widget’s unauthorized display of images, while Getty suffers financial harm as its images are being illegally used without appropriate compensation to Getty or its clients. Getty states that since the Widget utilizes the images pulled by the Bing Search Engine, “Defendant has turned the entirety of the world’s online images into little more than a vast, unlicensed ‘clip art’ collection for the benefit of those website publishers who implement the Bing Image Widget, all without seeking permission from the owners of copyrights in those images.”

Both parties note in their briefs that courts have previously decided that when search engines crawl the Internet and make thumbnail copies of images, it’s fair use. Thus it is not surprising that in its memorandum in opposition, Microsoft emphasizes the key role of the Bing Search Engine in providing the thumbnail images to the Widget. Microsoft argues that Getty erroneously “conflates” the thumbnail library with the operation of the Widget, which, it says, does not create its own thumbnails and only helps users access the images created by the search engine (whose creation was fair use). Getty states that the Widget is not marketed or used as a search engine, and therefore a fair use defense is not applicable (“According to Defendant, once a fair use copy has been made for one purpose, that copy can apparently be used for any purpose whatsoever, even if that purpose would not have excused the copying as fair use in the first instance. Defendant’s position… finds no support in the law – or even in common sense.”)

Looking at the Perfect 10 v. Amazon court’s analysis (on which Microsoft relies) of why Google’s thumbnails constitute fair use does not provide a clear-cut answer as to whether the Widget’s use of thumbnails warrants the same conclusion. The Widget’s use of thumbnails could be construed as a new and transformative way to present information to the public, or as blatant infringement that supplies website developers with images they would otherwise have to license. According to 17 U.S.C. § 107:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies… 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 copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The court in Perfect 10 v. Amazon analyzed fair use factors vis-à-vis Google’s thumbnail images and concluded that factors (2) and (4) did not weigh in favor of either party, that factor (2) weighed only slightly in favor of Perfect 10, and that factor (1) weighed in favor of Google because the thumbnails were “highly transformative:”

Indeed, a search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work… We conclude that the significantly transformative nature of Google’s search engine, particularly in light of its public benefit, outweighs Google’s superseding and commercial uses of the thumbnails in this case. In reaching this conclusion, we note the importance of analyzing fair use flexibly in light of new circumstances. We are also mindful of the Supreme Court’s direction that ‘the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use’” (emphasis added).

Microsoft also points out that the Widget does, in a way, direct users to the host website: when the user hovers his or her curser over any of the thumbnail images displayed in the Widget, the web address of the image’s host appears, and in the slideshow mode, the scrolling images are directly linked to their host website, whether it be Getty’s website or the website of another host. Microsoft further argues that the slideshow view in the Widget is the same slideshow view that appears in the Bing Image Search’s “detail view” and that Microsoft does not make any copies of images associated with the slideshow view. Microsoft states: “In other words, the Widget merely provides a location address or pointer, not a copy of the image itself. It is well established that this type of HTML in-line address linking does not constitute copying or display of an image. Indeed, this is precisely the issue that was considered in Perfect 10.” The Perfect 10 v. Amazon court summarized the district court’s “server test:”

“In considering whether Perfect 10 made a prima facie case of violation of its display right, the district court reasoned that a computer owner that stores an image as electronic information and serves that electronic information directly to the user (“i.e., physically sending ones and zeroes over the [I]nternet to the user’s browser”) is displaying the electronic information in violation of a copyright holder’s exclusive display right. See 17 U.S.C. § 106(5). Conversely, the owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner inline links to or frames the electronic information.”

Getty argues that the “server test” that was used in Perfect 10 v. Google and led the district court to determine that Google wasn’t infringing because the images that were produced through its search engine did not reside on its servers does not apply here because the Widget is not being used as a search tool meant to direct users to other website. Aside from this argument, however, Getty does not present a clear explanation as to why the “server test” would not apply to the Widget’s slideshow view.

Another interesting point worth noting is Microsoft’s argument that the Widget only helps website developers do what they can do anyway (“The Widget does not provide search functionality directly; it simply helps automate the coding that the website developer could otherwise do himself in order to display image search results on his websites if the Widget did not exist. [] The Widget just makes that integration of such code easier for the website developer.”). Assuming that the Widget’s functionality is found to be infringing, the fact that website developers could or would have infringed even without the Widget does not help Microsoft. This somewhat strange argument is apparently Microsoft’s segue-way to disputing its role as a volitional actor since the Widget responds to user commands: [N]o alleged infringing actions ever occur unless initiated by the user. This is true for both Slideshow and Collage. As a result, Getty cannot succeed on its claim that Microsoft is a direct infringer.” Getty dismisses this argument as a “red herring” and states that “[Microsoft’s] volitional conduct is immediately apparent from the exclusive control that Defendant exercises over the entire process by which images are selected and displayed through the Bing Image Widget.”

While at first blush Microsoft’s use of copyrighted images within the Widget appears to be a clear-cut case of copyright infringement, the ever-changing nature of the Internet and fair use renders a finding in favor of Getty less than certain. The district court in Perfect 10 v. Google found that Google’s thumbnails were not fair use, which is not an unreasonable conclusion. Yet the circuit court in Perfect 10 v. Amazon pointed out a “highly transformative” perspective on the very same use of thumbnails. Assuming the case at hand does not settle, will the court find a way to regard the Widget’s functionality as transformative and valuable to the public? Stay tuned.

Sources:

Complaint, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Plaintiff’s Memorandum of Law in Support of Order to Show Cause, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Microsoft Corporation’s Memorandum of Law in Opposition to Plaintiff’s Motion for Preliminary Injunction, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Plaintiff’s Replay Memorandum in Support of Motion for Preliminary Injunction, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Order, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Opinion and Order, Getty Images, Inc. v. Microsoft Corp., No. 14-CV-7114 (S.D.N.Y., Sept. 4, 2014).

Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007).

Perfect 10, Inc. v. Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal. 2006).

About the Author: Elena Kravtsoff is an attorney based in Washington, DC. She may be reached at elena.kravtsoff@gmail.com.