Perfect 10 v. Google
The Latest Saga

by Joel Hecker Esq.

As you may recall, in my May 2006 column, I reported that Perfect 10 had obtained a preliminary injunction against Google, Inc.

The case, Perfect 10 v. Google, Inc., brought in the United States District Court for the Central District of California, concerns Google’s image search function in the form of thumb nail size images as part of its search engine services.  As stated by the District Court, it “arises out of the increasingly reoccurring conflict between intellectual property rights on the one hand and the dazzling capacity of internet technology to assemble, organize, store, access, and display intellectual property ‘content’ on the other hand”.

Perfect 10 publishes an adult magazine and operates a subscription website which features “high quality, nude photographs of ‘natural’ models”.  It has invested $36 million over the past nine years to develop its brand, which included photographing over 800 models and creating over 6,000 high quality images, which have been registered with the Copyright Office.

KING GOOGLE

Google is of course the king of the search engines.  It indexes web sites on the internet via a web crawler.  Google, as part of its activities, displayed thumb nail versions of images found on the Perfect 10 website.  Google admitted it displayed these thumb nail versions but argued that such use is considered fair use under the Copyright Law.  In particular Google relied upon the prior Ninth Circuit Court of Appeals decision in Leslie Kelly v. Arriba Soft Corp.

NEW MARKET

The District Court, on a preliminary injunction motion, ruled against Google, finding that the use of the thumb nail images in this instance probably constitutes copyright infringement.  The opinion differs from Kelly largely because the District Court determined that Perfect 10 was able to establish that it had created a new market for these thumb nail size images of its nude photos.  This new market arises out of the fast developing technology which permits downloading of images onto cell phones.  The District Court found the availability of the same images in the same size on the Google Image Search would more than likely impact upon Perfect 10's market and therefore decrease its sales.

The Ninth Circuit Court of Appeals has now vacated the preliminary injunction issued against Google’s use of these thumbnail versions of Perfect 10's images, but also reversed the District Court’s denial of Perfect 10's claims that Google was secondarily liable for infringement of Perfect 10's full-size images.

The Circuit Court determined that the thumbnail image use was a fair use, relying heavily upon its prior analysis of the transformative nature of thumbnail images contained in its Kelly decision. The Circuit Court concluded “that the significantly transformative nature of Google’s search engine, particularly in light of its public benefit, outweighs Google’s superceding and commercial uses of the thumbnails in this case.” The Circuit Court also stated that the District Court never actually found that Google’s users downloaded thumbnail images for cell phone use. Therefore, at least according to the Circuit Court, any potential harm to Perfect 10's market is merely hypothetical at this point.

FAILED STEPS

Google’s victory, however, was not complete, since the Circuit Court also determined that Google could be held contributorily liable for in-line linking to full-size infringing images if it had knowledge that infringing Perfect 10's images were available using its search engine, could take simple measures to prevent further damage to Perfect 10's copyrighted works, and failed to take such steps. Since the District Court had not resolved the factual disputes over the adequacy of Perfect 10's notices to Google and Google’s responses thereto, this aspect of the claim was remanded for further consideration.

As is evident, additional evidentiary findings will be required at the District Court level. Under the circumstances, this may lead to further appeals. In addition, since the Ninth Circuit decision is not binding on courts in the other federal circuit courts, we can be sure that this is not the last word.
   

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave , New York NY 10016 . Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.