California Court Stalls Google’s Display of “Perfect 10” Thumbnails
 
March 29, 2006
 
Suzanne Elizabeth Rollier - Chicago

Web giant Google likely infringed on a magazine publisher’s copyright by posting thumbnail images of the publisher’s photos of nude models, a San Francisco federal judge has found.

People wishing to view nude photographs of publisher Perfect 10’s “natural” models must either pay $7.99 for a Perfect 10 magazine or become a monthly subscriber to perfect10.com for $25.50 per month. A third option, made available in the United Kingdom after Perfect 10 initially filed its suit against Google, is to pay a fee to download to a cell phone a reduced image of a Perfect 10 photograph. Perfect 10 sells approximately 6,000 of the reduced sized images per month through an authorized licensee.

Reduced images of the photographs also have been available at no charge through Google’s popular “Image” search function. Google Image scours the Internet for textual clues to images that are responsive to a user’s query, then displays the images in a grid with links to the Web sites that contain the pictures. A Google Image search for “Perfect 10” or the name of a Perfect 10 model can turn up photographs from Web sites that are not authorized to display them. The Google user then may view the pictures and even download them to a cell phone at no charge.

Perfect 10 sought a preliminary injunction against Google to stop Google’s display of these images. U.S. District Court Judge Howard Matz granted the injunction on February 17, 2006, finding that Google’s display was not excused under the fair use exception to copyright law. Judge Matz distinguished an earlier U.S. Ninth Circuit Court of Appeals decision, Kelly v. Arriba Soft Corp. There, the Court found that another search engine’s thumbnails of a photographer’s pictures was a protected fair use, as it did not supplant the need for the original work or exploit the work for profit, and that display benefited the public by enhancing information gathering on the Internet.

In contrast, Judge Matz found that Google’s use supersedes Perfect 10’s use because it allows a Google user to download images to a cell phone for free rather than purchase the same images from Perfect 10 or its licensee. The Court also found that Google most likely profits from displaying the images through its advertising-partner program, where Google receives a cut when a user clicks through to an advertisement posted on a third-party Web site. The Court recognized the benefit Google provides to the public yet found it likely that, weighed against these other factors, Perfect 10 would succeed in showing that Google violated its copyright by displaying the thumbnails.

The Court rejected Perfect 10’s argument that Google violated Perfect 10’s copyright through the use of in-line linking, or “framing.” When a Google Image user clicks on a thumbnail, he or she will next see the Web site that contains the full-sized image and a white “frame” containing the Google Image logo. A user therefore may believe that the entire content of the Web site belongs to Google, yet that content has never left the Web site host’s server. But the judge agreed with Google’s argument that the image remains “displayed” on the host’s server, not Google’s, and therefore under prevailing law regarding framing claims, Google could not be held liable. The Court also agreed with Google that Perfect 10 did not meet its burden of establishing that it is likely Google was secondarily liable for guiding users to infringing Web sites.

Finding that Perfect 10 faced irreparable harm in the face of Google’s continued display of thumbnail images of its photographs, the judge granted its motion for preliminary injunction on this narrow issue but asked the parties to jointly draft the injunction in such a way to protect the competing interests of the copyright holder and the promoter of access to information.

For more information, e-mail Suzanne E. Rollier at suzanne.rollier@hklaw.com or call toll free, 1-888-688-8500.