Fair Use on the Web – A Whole New Ballgame?

Posted on 11/01/2000
In Intellectual Property

by Robert W. Clarida

In Kelly v. Arriba Soft Corp., No. SA CV 99-560GLT[JW], 1999 U.S. Dist. LEXIS 19304 (C.D. Cal. Dec. 15, 1999),  the Central District of California recently made headlines by granting summary judgment to the makers of a “visual search engine” built around a database of more than two million digital images copied without authorization from third-party websites.  Although the use of the images clearly violated the artists’ exclusive rights under § 106, the court held that the search engine was a transformative fair use of the copyrighted works.  If the decision is affirmed on appeal, it could be a first indication that the courts are willing to recognize a much broader scope for fair use on the Web than they have in connection with conventional print and broadcast media.

Photographer Leslie Kelly brought the action after thirty-five of his photos were placed into the Arriba database without his permission.  Like the other images in the database, the photos were obtained by operation of an automated  “crawler” which sought out images on the Web.  The captured images, including Kelly’s,  were copied onto Arriba’s server, reduced to “thumbnail” form, then sorted and indexed by Arriba personnel.  A visitor to the Arriba site could access the images by typing in a query, then clicking on the desired thumbnail to view a full-size display of the image.

Turning to the first factor of the fair use analysis, i.e., the purpose and character of the defendant’s use, the court noted that even though Arriba’s use of the images was commercial, Kelly’s photos “did not represent a significant element of that commerce, nor were they exploited in any special way.  They were reproduced as a result of defendant’s generally indiscriminate method of gathering images.”  In other words, Arriba did not advertise or attempt to capitalize on the Kelly photos per se, it merely happened to have them in its database along with millions of other images.

Moreover, the defendant’s intention of compiling a comprehensive index of creative work made the result “transformative,” in the court’s view, because

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.  The character of the thumbnail index is not esthetic but functional; its purpose is not to be artistic, but comprehensive.

Id. at *10.

A similar argument was rejected by the Second Circuit recently in Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998), which held that the transmission of radio programming to distant cities by telephone, for purposes such as allowing sponsors to verify the airing of ads, was not transformative because the defendant did not transform the plaintiff’s works, but merely repackaged them in a different format.  In reaching this result, Infinity Broadcast echoed the en banc Sixth Circuit panel in Princeton University Press v. Michigan Document Serv., 99 F.3d 1381 (6th Cir. 1996), cert. den., 137 L. Ed. 2d 495 (1997) which held in 1996 that compiling photocopied articles and book chapters into college “course packs” was not transformative.

Without addressing the caselaw on transformative use,  the Arriba decision simply concluded that “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.”  Id. at *16.  Further, the court considered the transformative nature of Arriba’s use “the most significant factor favoring Defendant.” Id. Thus, with very little analysis, the court seems to have declared that a different, more lenient approach to fair use must apply to a “new enterprise” such as an internet search engine, simply because it is “evolving.”

The court repeated this reasoning under the fourth fair use factor, the likelihood of harm to the market for plaintiff’s work.  Even after acknowledging that defendant’s site allows users to “deep link” to plaintiff’s site without going through his home page, the court found no evidence of “harm or adverse impact.”  In conclusion, the court noted that “the first and fourth factors . . .  weigh in favor of a finding of fair use 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.” Id. at *15.

Whatever the “established importance of search engines” may be, and whatever relevance that may have to copyright law, the reasoning of Arriba marks a significant departure from prior decisions, particularly with respect to transformative use. Whether the decision is ultimately seen as a watershed or an anomaly will depend largely on whether the Ninth Circuit, and other courts around the country, agree with Arriba that copyright owners should have no recourse against  those who wish to profit by “organizing and providing access to” their works on the Web.

© 2000  Cowan, Liebowitz & Latman, P.C.


This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.