Cowboys’ Lament: Kelly v. ArribaSoft

Copyright law, cheesy photographs and tacky web pages – perfect together.

“With each revision and new law, the size of the uncharted frontier was further curtailed. The map is almost fully drawn now. Sheriffs are posted around nearly every corner. Cowboys, beware.”

Lace curtains are going up, horses are stabled and the frontier that once was the Internet has been tamed. The cowboys of those rough-and-ready days of the last century had better learn their manners if they want to stay off the one-way road marked “Sunset.”

On 6 February 2002 the Ninth Circuit Court of Appeals released its decision in the case, Kelly v Arriba Soft Corp., overturning a Federal District Court decision from 1999. Why should we care? Here’s some background to the story.

Leslie Kelly is a photographer who markets his images of the American West. He publishes some of his photos on websites he manages, and sometimes co-markets with travel and event services, booksellers and tourism sites. One of his sites, for example, provides images and narrative on the California Gold Rush of 1849 and offers tours of historic Gold Rush sites.

By examining reports of activity at his sites, Kelly discovered that a webcrawler had been visiting. He tracked it down and found a web-based service, owned by Arriba Soft, Inc. Arriba offered an Internet “visual search engine” that delivered the results of a user’s search in an array of links appearing as small, low-quality thumbnail images, instead of the customary list of text-based links. This meant, for example, that someone searching Arriba’s engine for “California Gold Rush 1849” would get a page of Gold-Rush-related thumbnail images in response, each thumbnail a link to a larger image elsewhere on the Internet. One or more of those might link to Kelly’s web-based images of the Gold Rush.

Kelly and his lawyers identified two violations of his copyrights in his pictures: his images were being taken twice by Arriba – both as thumbnails and as the underlying larger images. This was true, Kelly maintained, even though technically only the thumbnails actually resided on Arriba’s website in the search results. The larger, better-quality images that Arriba provided when a user clicked on a thumbnail did not actually leave their various homesites across the Internet; however, to the user, they appeared to, because Arriba linked deep into Kelly’s (and others’) sites, to the locations of the larger, better-quality images, and, through the use of html frames, failed to make it clear to the user. In other words, by using html’s link and frame technologies, Arriba seemed to imply that those larger images came from its website. Arriba was also putting its advertisers’ messages on the screens with those other-people’s-images, further muddying the streams of commerce.

In the following fictitious example, a company named AbraSearch made a visual search engine, incorporating thumbnails made from independent photographer Cadabra’s travel images of the rustic American Southwest. An advertiser at the AbraSearch site, Ala Auto Insurance, bought space for its advertising to appear with certain search results involving tourism and scenery.

AbraSearch Imaginary Search for “American Southwest scenery” yielded four Imaginary results:

Four thumbnail images from the American Southwest

The catch is, these thumbnail images were created by Abra’s automated crawler and processing routines from larger images located at Cadabra’s website. Abra’s advertisers, Ala Auto Insurance, help pay for Abra’s search website. The facts that Cadabra is the photographer, and that he posts larger, better-quality versions of these pictures at his own commercial website, are missing from Abra’s presentation.

Cadabra’s (also fictitious) site runs ads from Ala’s competition, Cazzamm Carr Coverage. If the user had gone directly to Cadabra’s own site, a larger image of the cactus flowers (not preceded by a thumbnail) would have appeared a little differently, perhaps like this:

Cadabra's image of desert cactus

Instead, from the array of thumbnails resulting from the make-believe Abra search, clicking on the cactus-flower thumbnail would have taken the user to a screen containing the following plugs for Abra Search and Ala Auto Insurance, with the mentions of Cadabra the photographer and Cazzamm the insurers nowhere to be seen:

AbraSearch unauthorized use of Cadabra's larger image

Kelly and his lawyers claimed his copyright was violated, each time Arriba created a thumbnail – unauthorized reproduction – and each time it framed one of Kelly’s larger images – unauthorized public display – in the context of Arriba’s site.

Kelly took Arriba to federal court in California. Initially, the result did not favor the photographer: In December 1999 the District Judge granted summary judgment for Arriba, telling Kelly that a full trial was not necessary – it was clear that Arriba had done Kelly no actionable wrong under the Copyright Act or the Digital Millennium Copyright Act (“DMCA”) as Kelly had alleged.

Kelly persisted, however, and appealed that District Court decision to the Ninth Circuit Court, where a three-judge panel in Pasadena, California heard arguments from the parties in September 2001. The decision came down in February 2002, the date of this writing.

This Ninth Circuit decision in Kelly v Arriba Soft is likely to be influential. It may help stabilize the rules on public access to thumbnails of larger images. It has been unclear whether taking a small, low-quality image derived from a higher-quality image protected by copyright was an infringement of the copyrightholder’s rights. Now an influential Circuit Court has clarified that issue, at least on these facts: “The creation and use of the thumbnails in the search engine is a fair use….” [Opinion at 1958]

“Fair use” is a legal term, and can be a powerful defense against a claim of copyright infringement. Fair use is defined by statute and periodically deconstructed and interpreted in case law. Here’s a basic example: If I quote three sentences from a book that I’m reviewing, it’s fair use of the copyrighted book’s material – the copyright in the book retains its integrity and has not been infringed by my taking of a small portion for purposes of reviewing it. If, on the other hand, I copy four chapters verbatim out of a six-chapter book and put the four-chapter versions up for sale to the public, I’ve created the potential for some real harm and a defense of “fair use” won’t get me far when the book’s author and/or publisher and/or distributors take me to court for copyright infringement.

United States copyright law examines four factors in a fair-use analysis: 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. [17 U.S.C. § 107] Citing a previous Supreme Court case holding that 80’s rap group 2LiveCrew’s recycling of portions of Roy Orbison’s Oh, Pretty Woman music recording was a parody, so “transformative” that no infringement of the earlier work had occurred, the appeals court in Kelly v Arriba Soft found the creation and use of thumbnails at Arriba’s search site was also transformative and so fell within the boundaries of fair use.

The court reasoned that Arriba’s use of the thumbnails improved access to information on the Internet; Kelly’s use, in contrast, served his artistic expression. Arriba’s use was transformative, then, because it created a different purpose – informational, not aesthetic – for the images. The court explained, “The thumbnails do not stifle artistic creativity because they are not used for illustrative or artistic purposes and therefore do not supplant the need for the originals. In addition, they benefit the public by enhancing information gathering techniques on the internet.” [Opinion at 1966]

In the first decision, later overturned, the District Court not only determined that the thumbnails were fair use of Kelly’s images – that opinion went on to say the larger-size, better-quality images that appeared in html frames at Arriba’s site also constituted fair use of Kelly’s images. That’s where the appeals court differed – it determined Arriba had infringed Kelly’s copyrights by linking to and framing the larger images at Arriba’s site. The court found that such behavior created a public display of Kelly’s copyrighted work, cutting into Kelly’s market for his images.

Kelly displays his images at his websites in order to attract business: by selling web space to advertisers, by selling images to buyers and by selling or licensing images to other websites and stock photo houses. The court explained, “By giving users access to Kelly’s full-sized images on its own web site, Arriba harms all of Kelly’s markets. Users will no longer have to go to Kelly’s web site to see the full-sized images, thereby deterring people from visiting his web site. In addition, users would be able to download the full-sized images from Arriba’s site and then sell or license the images themselves, reducing Kelly’s opportunity to sell or license his own images…. These actions would result in substantial adverse effects to the potential markets for Kelly’s original works.” [Opinion at 1976-77]

Shortly after the decision was released, both sides generated soundbites indicating that good had prevailed over bad. Arriba’s lead attorney, Judith Jennison, endorsed the thumbnails portion of the ruling, saying “We think that’s absolutely the right decision for copyright law and the Internet.”

The case has been remanded to the District Court, to determine money damages and consider an injunction against Arriba Soft (now Ditto.com). Kelly’s attorney Steven Krongold indicated plans to press on remand for maximum money damages against Arriba for the infringement of the large images. Those higher damages, however, can only be awarded if the court finds Arriba acted with willful disregard of the copyright law. Jennison didn’t seem too worried, saying Kelly never showed evidence that anyone ever viewed or downloaded his pictures from Arriba’s site.

Some of the Ninth Circuit decision’s language as to Arriba’s improper linking to Kelly’s large images is a bit broad, which may necessitate further litigation to zero in on workable rules for the rest of us to follow. That’s the common-law tradition, inherited by the US from Britain, in all its idiosyncratic glory.

In the early days of the Internet, metaphors of the Wild West and the American frontier abounded. Over the waning years of the past century, lawyers and analysts tortured the existing copyright statute, trying to construct from it sound rules to live by that remained consistent with the long line of prior cases interpreting existing statutes. When that was not enough, legislation was introduced, existing statutes were amended, more court cases were heard and sometimes appealed, and the United States copyright law, however bloated and misshapen it may seem to some, remains in charge of much of the world’s intellectual property.

With each revision and new law, the size of the uncharted frontier was further curtailed. The map is almost fully drawn now. Sheriffs are posted around nearly every corner. Cowboys, beware.

Resources

The Ninth Circuit decision, filed 6 February 2002, can be found online (as a pdf document) at plaintiff/appellant Leslie Kelly’s site  [Old Link] http://netcopyrightlaw.com/pdf/0055521.pdf and offline later.

The District Court decision of December 1999, later overturned, can be found online at http://pub.bna.com/ptcj/99-560.htm and offline at Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116 (C.D. Cal. 1999).

Examples of the actual Arriba visual search engine with thumbnail results are no longer available online. The examples provided here, totally fictitious, are only superficially correct as illustrations – alert readers may have noticed that the larger image in the Abra / Ala example had not been “framed” in the html sense, but instead was placed directly into the current html page.

Arriba Soft changed its name to “Ditto.com” after litigation began. It can be searched at http://www.ditto.com It no longer uses html framing. At the homepage of its site, the following language appears: “Ditto.com provides a visual mechanism to search the web using pictures instead of text. Users are directed to the originating web site on which the pictures are located. Should you wish to use any picture, photo or artwork you see during the search process, you must obtain the appropriate permission from the owner of the material.”

Wild West language turned up in a 1997 interview with the founder and CEO of Arriba Soft; it was later mentioned by the friends of court who filed an amici brief in support of Kelly’s appeal. According to one of Kelly’s websites, in the 1997 interview Arriba’s CEO said, “…[T]he net has created a whole new world and the cowboys are back.” [Old Link] http://netcopyrightlaw.com/mediacoverage.asp The friends of court included representatives of the American Society of Media Photographers, Inc., the North American Nature Photography Association, The Authors Guild, Inc. and the National Music Publishers’ Association / Harry Fox Agency.

The Copyright Act of 1976, as amended, is widely available online. [Updated Link]http://www.copyright.gov/title17/
Section 107 of the Copyright Act addresses Fair Use.

The US Supreme Court decided the landmark 2Live Crew case in 1994. It is cited as Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and can be read online athttp://supct.law.cornell.edu/supct/html/92-1292.ZO.html

Jennison was quoted and Krongold’s comments were paraphrased in an article by Brian Krebs, entitled “Court Rules ‘Thumbnail’ Images OK, Full-Sized Copies Not,” dated 7 February 2002 in Newsbytes, online at [Old Link] http://www.newsbytes.com/cgi-bin/udt/im.display.printable?client.id=newsbytes&story.id=174326

Anne M Carley took the photos used in the illustrations for this article. First published, 2002.  Arts4All Newsletter Issue 19.

Copyright © 2002-2015 Anne M Carley / Chenille Media Company. All rights reserved. For questions about the materials, and reprint and other permissions, email us.

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