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Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`ALEXIS HUNLEY, et al.,
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`Plaintiffs,
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`v.
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`INSTAGRAM, LLC,
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`Case No. 21-cv-03778-CRB
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`
`ORDER GRANTING MOTION TO
`DISMISS
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`
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`
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`Defendant.
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`A copyright owner “has the exclusive right” to “display” a copyrighted image or
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`video “publicly.” 17 U.S.C. § 106(5). To “display” a copyrighted image or video means
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`“to show a copy of it, either directly or by means of . . . any other device or process.” Id.
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`§ 101. “Copies” are “material objects . . . in which a work is fixed by any method . . . and
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`from which the work can be perceived, reproduced, or otherwise communicated, either
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`directly or with the aid of a machine or device.” Id. And a work is “fixed in a tangible
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`medium of expression when its embodiment in a copy . . . , by or under the authority of the
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`author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or
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`otherwise communicated for a period of more than transitory duration.” Id.
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`The Ninth Circuit has applied these statutory definitions of the terms “display,”
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`“copy,” and “fixed” to determine when a website that shows a copyrighted image has
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`violated a copyright owner’s exclusive display right. See Perfect 10, Inc. v. Amazon.com,
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`Inc., 508 F.3d 1146, 1160 (9th Cir. 2007). Under Perfect 10, an “image is a work that is
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`‘fixed’ in a tangible medium of expression, for purposes of the Copyright Act, when
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`embodied (i.e., stored) in a computer’s server (or hard disk, or other storage device).” Id.
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`(internal quotation marks omitted). If a website publisher does not “store” an image or
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`Northern District of California
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`United States District Court
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`Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 2 of 5
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`video in the relevant sense, the website publisher does not “communicate a copy” of the
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`image or video and thus does not violate the copyright owner’s exclusive display right. Id.
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`at 1160–61. This rule is known as the “server test.” See Mot. to Dismiss (dkt. 16) at 1;
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`Opp. (dkt. 25) at 7.
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`Here, Plaintiffs Alexis Hunley and Matthew Brauer (collectively, Hunley) are suing
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`Defendant Instagram, LLC for copyright infringement. See Compl. (dkt. 1) at 19–22.
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`Instagram is a social media platform that enables users like Hunley to share photographs
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`and videos. Id. ¶ 1. Hunley does not assert that Instagram violates Hunley’s exclusive
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`display right by showing photographs that Hunley shares. Id. ¶ 2–3. Instead, Hunley
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`asserts that an Instagram feature (an “embedding tool”) enables third-party websites to
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`display copyrighted photos or videos posted to an Instagram account. Id. And according
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`to Hunley, offering this tool makes Instagram secondarily liable for those third parties’
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`copyright infringement. Id. 19–22. Instagram has moved to dismiss Hunley’s complaint.
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`See Mot. to Dismiss.
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`The parties’ dispute hinges on a single legal question. The parties agree that
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`Instagram is not a direct copyright infringer. See Mot. to Dismiss at 1; Opp. at 1. They
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`also agree that to assert secondary liability claims against Instagram, Hunley must show
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`“some underlying direct infringement by a third party.” See Opp. at 7 (quoting Louis
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`Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F.Supp.2d 1098, 1104 (N.D. Cal.
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`2008)). And the parties agree that third parties using Instagram’s embedding tool do not
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`store the images and videos embedded on their websites on their own servers or other
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`storage devices, because Instagram stores those images and videos. See id. at 8; Mot. to
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`Dismiss at 1; Compl. ¶¶ 34–35. The parties disagree about whether those third parties
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`have nonetheless violated Instagram users’ exclusive display rights, such that Instagram
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`could be secondarily liable for copyright infringement. See Mot. to Dismiss at 1; Opp. at
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`6.
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`Under Perfect 10, the third parties do not violate Instagram users’ exclusive display
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`rights. See 508 F.3d at 1160–61. Because they do not store the images and videos, they
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`2
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 3 of 5
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`do not “fix” the copyrighted work in any “tangible medium of expression.” See 17 U.S.C.
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`§ 101. Therefore, when they embed the images and videos, they do not display “copies” of
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`the copyrighted work. Id.; see Perfect 10, 508 F.3d at 1160.
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`Hunley argues that Perfect 10’s server test does not apply here. The Court
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`disagrees.
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`First, Hunley argues that the server test should not apply to third-party websites that
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`embed images and videos shared on social media because Perfect 10 addressed a “search
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`engine” and reflected a “highly fact-driven . . . policy judgment.” Opp. at 8–9 (emphasis
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`omitted). That is wrong. Perfect 10 relied on the “plain language of the statute,” not
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`policy considerations, to craft a test for “when a computer displays a copyrighted work”
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`under 17 U.S.C. § 106(5). See 508 F.3d at 1160. Hunley relies on an out-of-circuit district
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`court decision rejecting the server test and suggesting that Perfect 10 should be “cabined”
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`to the search engine context, or contexts in which an Internet user must click a hyperlink to
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`view an image. See Nicklen v. Sinclair Broadcasting Group, Inc., et al, 2021 WL 3239510
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`(S.D.N.Y. July 30, 2021). But unlike the U.S. District Court for the Southern District of
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`New York, this Court is not free to ignore Ninth Circuit precedent. And in purporting to
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`establish a test for when a computer displays a copyrighted image, Perfect 10 did not state
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`or indicate that its holding was limited to the unique facts presented there. 1 Thus, this
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`Court must faithfully apply Perfect 10 absent a contrary Ninth Circuit or Supreme Court
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`ruling.
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`Second, Hunley argues that American Broadcasting Cos. v. Aereo, Inc. is such a
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`ruling. See Opp. at 13 (citing 573 U.S. 431 (2014)). But Aereo is not “clearly
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`1 The same goes for Leader’s Institute, LLC v. Jackson, another out-of-circuit district court
`decision that both rejected Perfect 10 and attempted to artificially confine Perfect 10 to its facts.
`See 2017 WL 5629514, at *11 (N.D. TX. Nov. 22, 2017). And to the extent that another court in
`this district has suggested (in dicta) that Perfect 10 applies only in “the context of search engines,”
`Free Speech Systems, LLC v. Menzel, 390 F. Supp. 3d 1162, 1172 (N.D. Cal. 2019), this Court
`disagrees. Furthermore, Perfect 10 addressed technology remarkably similar to the technology at
`issue here. In Perfect 10, Google used HyperText Markup Language (HTML) code to show
`Internet users images stored by other websites. See 508 F.3d at 1159–60. Here, third parties use
`HTML code to show Internet users images stored by Instagram. See Compl. ¶ 2.
`3
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 4 of 5
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`irreconcilable” with Perfect 10’s “reasoning or theory.” See Miller v. Gammie, 335 F.3d
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`889, 893 (9th Cir. 2003). In Aereo, the Supreme Court addressed another exclusive right:
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`a copyright owner’s “exclusive right to perform the copyrighted work publicly.” 573 U.S.
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`at 435 (quoting 17 U.S.C. § 106(4)) (internal quotation marks and alterations omitted).
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`That exclusive performance right includes the right to “transmit or otherwise communicate
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`a performance . . . of the [copyrighted] work . . . to the public, by means of any device or
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`process, whether the members of the public capable of receiving the performance
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`. . . receive it in the same place or in separate places and at the same time or at different
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`times.” Id. at 436 (quoting 17 U.S.C. § 101) (alterations in original). Aereo offered
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`subscribers broadcast television programming over the Internet. See id. The data that
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`Aereo streamed “to each subscriber” comprised “the data from [the subscriber’s] own
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`personal copy, made from the broadcast signals received from the particular antenna
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`allotted to him.” Id. at 437. Aereo argued that it did not “perform” copyrighted works
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`because “Aereo’s equipment simply respond[ed] to its subscribers’ directives.” Id. at 438.
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`After noting that the statute’s “language . . . does not clearly indicate when an entity
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`‘performs,’” the Supreme Court determined—based on the statute’s evident purpose—that
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`“an entity that engages in activities like Aereo’s performs.” Id. at 438–49 (alterations
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`omitted). Aereo also argued that it did not perform copyrighted works “publicly” because,
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`technically, each performance was “capable of being received by one and only one
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`subscriber.” Id. at 445. The Supreme Court similarly rejected this argument as
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`inconsistent with the statute’s apparent “regulatory objectives.” Id. at 446.
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`Aereo does not clearly contradict Perfect 10. As discussed above, Perfect 10
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`purported to interpret the statutory display right’s “plain language.” 508 F.3d at 1160.
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`Indeed, Perfect 10’s server test followed from the Ninth Circuit’s synthesis of various
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`statutory definitions relevant to the display right. See id. (citing 17 U.S.C. §§ 101, 106(5)).
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`Aereo addressed different statutory language, relevant to the performance right, and
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`acknowledged that this other language was ambiguous. See 573 U.S. at 439. To resolve
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`that ambiguity, Aereo relied on legislative purposes unique to the performance right. See
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`4
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 5 of 5
`Case 3:21-cv-03778-CRB Document 27 Filed 09/17/21 Page 5of5
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`at 440—43
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`id.
`
`(evaluating
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`the
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`modern
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`and statutory history underlying
`specific legislative
`Because Aereo addressed 17 U.S.C.
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`the
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`§ 106(4)’s ambiguous
`
`irreconcilable with Perfect 10’s
`
`of 17 U.S.C.
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`performance right).
`language,it is not
`clearly
`§ 106(5)’s plain language. See 508 F.3d at 1160. That
`Perfect 10’s server
`the Ninth Circuit continues to
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`interpretation
`explains why, years after Aereo,
`in an
`
`test—including
`opinion
`Storage Servs., LLC, 2021 WL
`
`apply
`this month. See, e.g., Bell v. Wilmott
`published just
`4097499, at *5 (9th Cir. 2021).
`Hunley’s view, the Ninth Circuit’s server test
`at 8.
`to the Ninth Circuit and the
`is free to
`present that argument
`Court. But this Court is not free to
`
`In
`
`See Opp.
`
`Hunley
`
`Supreme
`
`misinterprets
`
`the
`
`Copyright
`
`Act.
`
`artificially
`
`narrow or overrule
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`binding
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`precedent.
`
`*
`
`For the
`
`days
`
`IT IS SO ORDERED.
`
`reasons, the Court concludes that oral argument is unnecessary
`foregoing
`wishesto file an amended
`and grants Instagram’s motion to dismiss. If
`Hunley
`ofthe date ofthis order.
`Hunley may do so within 30
`Dated: September 17, 2021
`
`complaint,
`
`A
`
`CHARLES R. BREYER
`United States District
`
`Judge
`
`CoOoSNDnAN
`
`>W
`
`ole
`wW
`
`Court
`District
`States
`United
`
`DistrictofCalifornia
`Northern
`
`

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