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Link Decision - Leslie A. Kelly v.
Arriba Soft Corporation
United States Court of Appeals for
the Ninth Circuit
decided July 7, 2003
The Opinion filed February 6, 2002, slip op.
1953, and appearing at 280 F.3d 934 (9th Cir.
2002), is withdrawn. It may not be cited as
precedent by or to this court or any district court
of the Ninth Circuit.
Therefore, Appellee’s petition for rehearing
and the petition for rehearing en banc are
DENIED as moot.
T.G. NELSON, Circuit Judge:
This case involves the application of copyright
law to the vast world of the internet and
internet search engines. The plaintiff,
Leslie Kelly, is a professional photographer who has copyrighted
many of his images of the American West. Some of
these images are located on Kelly’s web site or other web sites
with which Kelly has a license agreement. The defendant, Arriba
Soft Corp.,1 operates
an internet search engine that displays its
results in the form of small pictures rather than
the more usual form of text. Arriba obtained its database of
pictures by copying images from other web sites. By clicking on
one of these small pictures, called "thumbnails," the user
can then view a large version of that same picture within the
context of the Arriba web page. When Kelly
discovered that his photographs were part of Arriba’s
search engine database, he brought a claim against Arriba
for copyright infringement. The district court found that
Kelly had established a prima facie case of copyright infringement
based on Arriba’s unauthorized reproduction and
display of Kelly’s works, but that this reproduction and display
constituted a non-infringing "fair use" under Section 107
of the Copyright Act. Kelly appeals that decision, and we affirm
in part and reverse in part. The creation and use of the thumbnails
in the search engine is a fair use. However, the district
court should not have decided whether the display of the
larger image is a violation of Kelly’s exclusive right to publicly
display his works. Thus, we remand for further proceedings consistent
with this opinion.
The search engine at issue in this case is
unconventional in that it displays the
results of a user’s query as "thumbnail" images.
When a user wants to search the internet for information on
a certain topic, he or she types a search term into a search
engine, which then produces a list of web sites that contain
information relating to the search term. Normally, the list
of results is in text format. The Arriba search engine, however, produces
its list of results as small pictures. To
provide this service, Arriba developed a computer program that
"crawls" the web looking for images to index. This crawler
downloads full-sized copies of the images onto Arriba’s server.
The program then uses these copies to generate smaller,
lower-resolution thumbnails of the images. Once the thumbnails
are created, the program deletes the full-sized originals
from the server. Although a user could copy these thumbnails
to his computer or disk, he cannot increase the resolution
of the thumbnail; any enlargement would result in a
loss of clarity of the image. The second
component of the Arriba program occurs when the
user double-clicks on the thumbnail. From January 1999 to
June 1999, clicking on the thumbnail produced the "Images Attributes"
page. This page used in-line linking to display the original
full-sized image, surrounded by text describing the size
of the image, a link to the original web site, the Arriba banner,
and Arriba advertising. In-line linking
allows one to import a graphic from a source website
and incorporate it in one’s own website, creating the appearance
that the in-lined graphic is a seamless part of the second
web page.2 The
in-line link instructs the user’s browser
to retrieve the linked-to image from the source website and
display it on the user’s screen, but does so without leaving
the linking document.3 Thus,
the linking party can incorporate the linked
image into its own content. As a result, although
the image in Arriba’s Images Attributes page came directly
from the originating web site and was not copied onto Arriba’s
server, the user would not realize that the image actually
resided on another web site.
From July 1999 until sometime after August 2000,
the results page contained thumbnails
accompanied by two links: "Source"
and "Details." The "Details" link produced a screen similar
to the Images Attributes page but with a thumbnail rather
than the full-sized image. Alternatively, by clicking on the
"Source" link or the thumbnail from the results page, the site
produced two new windows on top of the Arriba page. The
window in the forefront contained solely the full-sized image.
This window partially obscured another window, which
displayed a reduced-size version of the image’s originating web
page. Part of the Arriba web page was visible underneath
both of these new windows.4
In January 1999, Arriba’s crawler visited web
sites that contained Kelly’s photographs.
The crawler copied thirtyfive of Kelly’s
images to the Arriba database. Kelly had never given
permission to Arriba to copy his images and objected when
he found out that Arriba was using them. Arriba deleted the
thumbnails of images that came from Kelly’s own websites and placed those
sites on a list of sites that it would not crawl
in the future. Several months later, Arriba received Kelly’s
complaint of copyright infringement, which identified other
images of his that came from third-party web sites. Arriba
subsequently deleted those thumbnails and placed those
third-party sites on a list of sites that it would not crawl in
The district court granted summary judgment in
favor of Arriba. Kelly’s motion for partial
summary judgment asserted that Arriba’s use
of the thumbnail images violated his display, reproduction,
and distribution rights. Arriba crossmoved for summary
judgment. For the purposes of the motion, Arriba conceded
that Kelly established a prima facie case of infringement. However,
it limited its concession to the violation of the display
and reproduction rights as to the thumbnail images. Arriba
then argued that its use of the thumbnail images was a
The district court did not limit its decision to
the thumbnail images alone. The court granted
summary judgment to Arriba, finding that its
use of both the thumbnail images and the full-size images
was fair. In doing so, the court broadened the scope
of Kelly’s original motion to include a claim for infringement
of the full-size images. The court also broadened the
scope of Arriba’s concession to cover the prima facie case for
both the thumbnail images and the full-size images. The court
determined that two of the fair use factors weighed heavily
in Arriba’s favor. Specifically, the court found that the
character and purpose of Arriba’s use was significantly transformative
and the use did not harm the market for or value
of Kelly’s works. Kelly now appeals this decision.
II. We review
a grant of summary judgment de novo.5 We
also review the court’s finding of fair use,
which is a mixed question of law and fact, by
this same standard.6 "In
doing so, we must balance the nonexclusive
factors set out in 17 U.S.C. § 107."
district court’s decision in this case involves two distinct actions
by Arriba that warrant analysis. The first action consists
of the reproduction of Kelly’s images to create the thumbnails
and the use of those thumbnails in Arriba’s search engine.
The second action involves the display of Kelly’s larger
images when the user clicks on the thumbnails. We conclude
that, as to the first action, the district court correctly found
that Arriba’s use was fair. However, as to the second action,
we conclude that the district court should not have reached
the issue because neither party moved for summary judgment
as to the full-size images and Arriba’s response to Kelly’s
summary judgment motion did not concede the prima facie
case for infringement as to those images.
An owner of a copyright has the exclusive right
to reproduce, distribute, and publicly
display copies of the work.8 To establish a claim of copyright infringement by
reproduction, the plaintiff must show
ownership of the copyright and copying by the
defendant.9 As to the
thumbnails, Arriba conceded that Kelly
established a prima facie case of infringement of Kelly’s
claim of copyright infringement is subject to certain statutory
exceptions, including the fair use exception.10 This exception "permits courts to avoid rigid
application of the copyright statute when, on
occasion, it would stifle the very creativity
which that law is designed to foster."11 The
statute sets out four factors to consider in
determining whether the use in a particular
case is a fair use.12 We
must balance these factors in light of the
objectives of copyright law, rather than view
them as definitive or determinative tests. 13 We now turn to
the four fair use factors.
1. Purpose and character of the use.
Supreme Court has rejected the proposition that a commercial
use of the copyrighted material ends the inquiry under
this factor.14 Instead,
[t]he central purpose of this investigation is to
see . . . whether the new work merely
supersede[s] 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.15
The more transformative the new work, the less
important the other factors, including
is no dispute that Arriba operates its web site for commercial
purposes and that Kelly’s images were part of Arriba’s
search engine database. As the district court found, while
such use of Kelly’s images was commercial, it was more
incidental and less exploitative in nature than more traditional types
of commercial use.17 Arriba
was neither using Kelly’s images to
directly promote its web site nor trying to profit
by selling Kelly’s images. Instead, Kelly’s images were among
thousands of images in Arriba’s search engine database. Because
the use of Kelly’s images was not highly exploitative,
the commercial nature of the use weighs only slightly
against a finding of fair use.
The second part of the inquiry as to this factor
involves the transformative nature of the use.
We must determine if Arriba’s use of the
images merely superseded the object of the originals
or instead added a further purpose or different character. 18 We find that Arriba’s use of Kelly’s images for
its thumbnails was transformative.
Arriba made exact replications of Kelly’s images,
the thumbnails were much smaller, lower-resolution images
that served an entirely different function than Kelly’s original
images. Kelly’s images are artistic works intended to inform
and to engage the viewer in an aesthetic experience. His
images are used to portray scenes from the American West
in an aesthetic manner. Arriba’s use of Kelly’s images in
the thumbnails is unrelated to any aesthetic purpose. Arriba’s
search engine functions as a tool to help index and improve
access to images on the internet and their related websites. In fact, users are
unlikely to enlarge the thumbnails and use
them for artistic purposes because the thumbnails are of much
lower-resolution than the originals; any enlargement results
in a significant loss of clarity of the image, making them
inappropriate as display material.
Kelly asserts that because Arriba reproduced his
exact images and added nothing to them,
Arriba’s use cannot be transformative.
Courts have been reluctant to find fair use when
an original work is merely retransmitted in a different medium.19 Those cases are inapposite, however, because the resulting use of the copyrighted work in those cases
was the same as the original use. For
instance, reproducing music CDs in computer
MP3 format does not change the fact that both formats
are used for entertainment purposes. Likewise, reproducing news
footage into a different format does not change the
ultimate purpose of informing the public about current affairs.
Even in Infinity Broadcast Corp. v. Kirkwood,20
where the retransmission
of radio broadcasts over telephone lines was for
the purpose of allowing advertisers and radio stations to check
on the broadcast of commercials or on-air talent, there was
nothing preventing listeners from subscribing to the service for
entertainment purposes. Even though the intended purpose
of the retransmission may have been different from the
purpose of the original transmission, the result was that people
could use both types of transmissions for the same purpose.
case involves more than merely a retransmission of
Kelly’s images in a different medium. Arriba’s use of the images
serves a different function than Kelly’s use — improving
access to information on the internet versus artistic expression.
Furthermore, it would be unlikely that anyone would
use Arriba’s thumbnails for illustrative or aesthetic purposes
because enlarging them sacrifices their clarity. Because
Arriba’s use is not superseding Kelly’s use but, rather,
has created a different purpose for the images, Arriba’s use
Comparing this case to two recent cases in the
Ninth and First Circuits reemphasizes the
functionality distinction. In Worldwide
Church of God v. Philadelphia Church of God, Inc., 21 we
held that copying a religious book to create a new book
for use by a different church was not transformative. 22 The second church’s use of the book was merely to
make use of the same book for another church
audience. The court noted that "where
the use is for the same intrinsic purpose as [the
copyright holder’s] . . . such use seriously weakens a claimed
fair use." 23
On the other hand, in Núńez
v. Caribbean International News Corp., 24 the
First Circuit found that copying a photograph that
was intended to be used in a modeling portfolio and
using it instead in a news article was a transformative use. 25 By putting a copy of the photograph in the newspaper,
the work was transformed into news, creating
a new meaning or purpose for the work. The
use of Kelly’s images in Arriba’s search
engine is more analogous to the situation in Núńez because Arriba has created a new purpose for the
images and is not simply superseding Kelly’s
The Copyright Act was intended to promote
creativity, thereby benefitting the artist
and the public alike. To preserve the
potential future use of artistic works for purposes of teaching, research,
criticism, and news reporting, Congress created the
fair use exception. 26 Arriba’s use of Kelly’s images promotes the
goals of the Copyright Act and the fair use exception. 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.
 In Sony
Computer Entertainment America, Inc. v. Bleem, 27
we held that when Bleem copied "screen shots"
from Sony computer games and used them in its
own advertising, it was a fair use. 28 In finding that the first factor weighed in favor of Bleem, we noted that "comparative advertising
redounds greatly to the purchasing public’s
benefit with very little corresponding loss
to the integrity of Sony’s copyrighted material." 29 Similarly, this first factor weighs in favor of
Arriba due to the public benefit of the
search engine and the minimal loss of
integrity to Kelly’s images.
2. Nature of the copyrighted work.
that are creative in nature are closer to the core of
intended copyright protection than are more fact-based works." 30 Photographs
that are meant to be viewed by the public for
informative and aesthetic purposes, such as Kelly’s, are
generally creative in nature. The fact that a work is published or
unpublished also is a critical element of its nature. 31 Published works are more likely to qualify as fair
use because the first appearance of the
artist’s expression has already occurred.
images appeared on the internet before Arriba
used them in its search image. When considering both of
these elements, we find that this factor weighs only slightly in
favor of Kelly.
3. Amount and substantiality of portion used.
"While wholesale copying does not preclude
fair use per se, copying an entire work
militates against a finding of fair use." 33 However, the extent of permissible copying varies
with the purpose and character of the use. 34 If
the secondary user only copies as much as is
necessary for his or her intended use, then
this factor will not weigh against him or her.
factor neither weighs for nor against either party because,
although Arriba did copy each of Kelly’s images as a
whole, it was reasonable to do so in light of Arriba’s use of the
images. It was necessary for Arriba to copy the entire image
to allow users to recognize the image and decide whether
to pursue more information about the image or the originating
web site. If Arriba only copied part of the image, it
would be more difficult to identify it, thereby reducing the usefulness
of the visual search engine.
of the use upon the potential market for or value of
the copyrighted work.
This last factor requires courts to consider
"not only the extent of market harm
caused by the particular actions of the alleged
infringer, but also ‘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.’ "35 A
transformative work is less likely to have an
adverse impact on the market of the original than
a work that merely supersedes the copyrighted work. 36
Kelly’s images are related to several potential
markets. One purpose of the photographs is to
attract internet users to his web site, where
he sells advertising space as well as books and
travel packages. In addition, Kelly could sell or license his
photographs to other web sites or to a stock photo data-base, which
then could offer the images to its customers.
use of Kelly’s images in its thumbnails does not
harm the market for Kelly’s images or the value of his images.
By showing the thumbnails on its results page when users
entered terms related to Kelly’s images, the search engine
would guide users to Kelly’s web site rather than away from
it. Even if users were more interested in the image itself rather
than the information on the web page, they would still have
to go to Kelly’s site to see the full-sized image. The thumbnails
would not be a substitute for the full-sized images because
the thumbnails lose their clarity when enlarged. If a user
wanted to view or download a quality image, he or she would
have to visit Kelly’s web site. 37
This would hold true whether
the thumbnails are solely in Arriba’s database or are more
widespread and found in other search engine databases.
use of Kelly’s images also would not harm Kelly’s
ability to sell or license his full-sized images. Arriba does
not sell or license its thumbnails to other parties. Anyone who
downloaded the thumbnails would not be successful selling full-sized
images enlarged from the thumbnails because of the
low resolution of the thumbnails. There would be no way to
view, create, or sell a clear, full-sized image without going to
Kelly’s web sites. Therefore, Arriba’s creation and use of the
thumbnails does not harm the market for or value of Kelly’s
images. This factor weighs in favor of Arriba.
Having considered the four fair use factors and
found that two weigh in favor of Arriba, one
is neutral, and one weighs slightly in favor
of Kelly, we conclude that Arriba’s use of Kelly’s
images as thumbnails in its search engine is a fair use. As
mentioned above, the district court granted summary judgment
to Arriba as to the full-size images as well. However, because
the court broadened the scope of both the parties’ motions
for partial summary judgment and Arriba’s concession
on the prima facie case, we must reverse this portion of
the court’s opinion.
With limited exceptions that do not apply here, a
district court may not grant summary judgment
on a claim when the party has not requested
it. 38 The
parties did not move for summary judgment as
to copyright infringement of the full-size images.
Further, Arriba had no opportunity to contest the prima
facie case for infringement as to the full-size images. 39 Accordingly, we reverse this portion of the district
court’s opinion and remand for further
hold that Arriba’s reproduction of Kelly’s images for
use as thumbnails in Arriba’s search engine is a fair use under
the Copyright Act. However, we hold that the district court
should not have reached whether Arriba’s display of Kelly’s
full-sized images is a fair use because the parties never
moved for summary judgment on this claim and Arriba never
conceded the prima facie case as to the full-size images. The
district court’s opinion is affirmed as to the thumbnails and
reversed as to the display of the full-sized images. We remand
for further proceedings consistent with this opinion. Each
party shall bear its own costs and fees on appeal.
AFFIRMED in part, REVERSED in part, and REMANDED.
Soft has changed its name since the start of this litigation. It is now
known as "Ditto.com."
Sableman, Link Law Revisited: Internet Linking Law at Five Years,
16 BERKELEY TECH. L.J. 1273, 1297 (2001).
L. Dogan, Infringement Once Removed: The Perils of Hyperlinking to
Infringing Content, 87 IOWA L. REV. 829, 839 n.32 (2002).
when a user clicks on the thumbnail, a window of the homepage of the image
appears on top of the Arriba page. There is no window just
containing the image.
Angeles News Serv. v. Reuters Television Int’l. Ltd., 149 F.3d 987, 993 (9th Cir. 1998).
U.S.C. § 106.
Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1151 (9th
Cir. 1986) (quoting 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.01 (1985)).
U.S.C. §§ 106, 107.
Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1399
(9th Cir. 1997) (internal quotation marks omitted).
four factors are: (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.
Seuss, 109 F.3d at 1399.
v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
(internal quotation marks and citation omitted) (alteration in original).
e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1015 (9th
Cir. 2001) ("[C]ommercial use is demonstrated by a showing that repeated
and exploitative unauthorized copies of copyrighted works were made
to save the expense of purchasing authorized copies.").
510 U.S. at 579.
Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998)
(concluding that retransmission of radio broadcast over telephone lines
is not transformative); UMG Recordings, Inc. v. MP3.com, Inc., 92 F.
Supp. 2d 349, 351 (S.D.N.Y. 2000) (finding that reproduction of audio CD
into computer MP3 format does not transform the work); Los Angeles News Serv., 149 F.3d at 993 (finding that
reproducing news footage without editing the
footage "was not very transformative").
F.3d 1110 (9th Cir. 2000).
(internal quotation marks omitted) (alteration and ellipses in original).
F.3d 18 (1st Cir. 2000).
U.S.C. § 107 ("[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use),
scholarship, or research, is not an infringement
of copyright."); see also Campbell, 510 U.S. at 576-77.
F.3d 1022 (9th Cir. 2000).
Records, 239 F.3d at 1016 (citing Campbell, 510 U.S. at 586) (internal
quotation marks omitted).
& Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 564 (1985)
(noting that the scope of fair use is narrower with respect to unpublished works because the author’s right to control the
first public appearance of his work weighs
against the use of his work before its release).
Church of God, 227 F.3d at 1118 (internal quotation marks omitted).
510 U.S. at 586-87.
at 590 (quoting 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.05[A] (1993)) (ellipses in original).
id. at 591 (stating that a work that supersedes the object of the original
serves as a market replacement for it, making it likely that market harm
will occur, but when the second use is transformative, market substitution is less certain).
do not suggest that the inferior display quality of a reproduction is
in any way dispositive or will always assist an alleged infringer in
demonstrating fair use. In this case, however,
it is extremely unlikely that users would
download thumbnails for display purposes, as the quality full-size versions
are easily accessible from Kelly’s web sites. In
addition, we note that in the unique context of photographic images, the
quality of the reproduction may matter more than in other fields of creative endeavor. The appearance of photographic images
accounts for virtually their entire aesthetic
Kilroy v. Ruckelshaus, 738 F.2d 1448, 1452 (9th Cir. 1984).
United States v. Grayson, 879 F.2d 620, 625 (9th Cir. 1989).
to the overview