Thumbnails - Fair Use or
Copyright Infringement - Kelly v. Arriba Soft
United States District Court,
Central District of California Southern Devision
December 15, 1999
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 facie 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"
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.
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 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.(1) By clicking on the address, the user
could link to the originating Web site for the image.(2)
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.(3) Ditto's employees conduct a final
screening to rank the most relevant thumbnails and eliminate inappropriate
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 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.(4)
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, 105 S.Ct. 2218, 85 L.Ed.2d
588 (1985); Fisher v. Dees, 794 F.2d 432, 436 (9th Cir.1986).
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 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
"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:
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 copyrighted work as a
(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) ("[b]ecause 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.
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 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, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (citation omitted).
"[T]he 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." Id. at 579, 114 S.Ct. 1164.
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.(5) 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.(6)
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."(7)
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. ¶¶ 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 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.
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 the former works are copied." Campbell,
supra 510 U.S. at 586, 114 S.Ct. 1164. Artistic works like Plaintiff's
photographs are part of that core. The Court finds the second factor weighs
against fair use.
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 inquiry will harken back to the first of the statutory factors, for ...
the extent of permissible copying varies with the purpose and character of the
use." Id. at 586-F87, 114 S.Ct. 1164.
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 of the search engine.(8)
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.
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, 114 S.Ct. 1164
The relevant market is
Plaintiff's Web sites as a whole. The photographs are used to promote the
products sold by Plaintiff's 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 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 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.
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
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 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.
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."(9)
Section 1202(a) prohibits falsification of copyright management information with
the intent to aid copyright infringement. Section 1202(b) prohibits, unless
authorized, several forms of knowing removal or alteration of copyright
management information.(10) Section 1203 creates a
federal civil action for violations of these provisions.
Defendant violated § 1202(b) by displaying thumbnails of Plaintiff's images
without displaying the corresponding copyright management information consisting
of standard copyright notices in the surrounding text. Joint Stip. of Facts,
¶¶ 64-69. Because these notices do not appear in the images themselves, the
Ditto crawler did not include them when it indexed the images.(11)
Id. ¶ 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
Section 1202(b)(1) does
not apply to 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 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.(12)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.(13)
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. 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.
Gary L. Taylor,
United States District Judge
Dec. 15, 1999
1. 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.
2. 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.
3. Images are briefly stored in
full on Defendant's server until the thumbnail is made; they are then deleted.
Joint Stip. ¶ 32. There is no claim that Defendant provides any access to the
full-sized images during this period.
4. 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.
5. 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
6. 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. ¶ 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.
7. 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. ¶
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
8. 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
9. "Copyright management
information" is defined, in relevant part, as:
[A]ny 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
(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.
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].
11. 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., ¶¶ 72-73. Plaintiff's allegations of DMCA violations are
inapplicable to this image.
12. 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.
13. 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