Perfect 10, Inc. v. Amazon

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

PERFECT 10, INC., a California 

corporation,

Plaintiff-Appellant, No. 06-55405

v.  D.C. No.

AMAZON.COM, INC., a corporation; CV-05-04753-AHM

A9.COM INC., a corporation,

Defendants-Appellees.



PERFECT 10, INC., a California 

corporation,

Plaintiff-Appellant, No. 06-55406

v.  D.C. No.

CV-04-09484-AHM

GOOGLE INC., a corporation,

Defendant-Appellee.



PERFECT 10, INC., a California 

corporation,

Plaintiff-Appellee, No. 06-55425

v.  D.C. No.

CV-04-09484-AHM

GOOGLE INC., a corporation,

Defendant-Appellant.



15441

15442 PERFECT 10 v. AMAZON.COM

PERFECT 10, INC., a California 

corporation,

Plaintiff-Appellant, No. 06-55759

v.  D.C. No.

CV-04-09484-AHM

GOOGLE INC., a corporation,

Defendant-Appellee.



PERFECT 10, INC., a California 

corporation,

Plaintiff-Appellee, No. 06-55854

v.  D.C. No.

CV-04-09484-AHM

GOOGLE INC., a corporation,

Defendant-Appellant.



PERFECT 10, INC., a California  No. 06-55877

corporation,

Plaintiff-Appellee, D.C. No.

v.  CV-04-09484-AHM

AMENDED

GOOGLE INC., a corporation,

OPINION

Defendant-Appellant.



Appeal from the United States District Court

for the Central District of California

A. Howard Matz, District Judge, Presiding

Argued and Submitted

November 15, 2006—Pasadena, California

Filed May 16, 2007

Amended December 3, 2007

PERFECT 10 v. AMAZON.COM 15443

Before: Cynthia Holcomb Hall, Michael Daly Hawkins, and

Sandra S. Ikuta, Circuit Judges.

Opinion by Judge Ikuta

PERFECT 10 v. AMAZON.COM 15447

COUNSEL

Russell J. Frackman and Jeffrey D. Goldman, Mitchell, Sil-

berberg & Knupp LLP, Los Angeles, California, Jeffrey N.

Mausner, Berman, Mausner & Resser, Los Angeles, Califor-

nia, Daniel J. Cooper, Perfect 10, Inc., Beverly Hills, Califor-

nia, for plaintiff-appellant Perfect 10, Inc.

Andrew P. Bridges and Jennifer A. Golinveaux, Winston &

Strawn LLP, San Francisco, California, Gene C. Schaerr,

Winston & Strawn LLP, Washington, DC, for defendant-

appellee and cross-appellant Google Inc.

15448 PERFECT 10 v. AMAZON.COM

Mark T. Jansen & Anthony J. Malutta, Townsend and Town-

send and Crew LLP, San Francisco, California, for

defendants-appellees Amazon.com and A9.com, Inc.

Fred von Lohmann, Electronic Frontier Foundation, San Fran-

cisco, California, for amicus curiae Electronic Frontier Foun-

dation, American Library Association, Medical Library

Association, American Association of Law Libraries, Associ-

ation of Research Libraries, and Special Libraries Association

in support of Google Inc.

Victor S. Perlman, of counsel, American Society of Media

Photographers; Nancy E. Wolff, of counsel, Cowan, DeBaets,

Abrahams & Sheppard, LLP; Robert W. Clarida and Jason D.

Sanders, Cowan, Liebowitz & Latman, P.C., New York, New

York, for amicus curiae American Society of Media Photog-

raphers, Inc., Picture Archive Council of America, Inc.,

British Association of Picture Libraries and Agencies, Inc.,

Stock Artists Alliance, The Graphic Artists Guild, American

Society of Picture Professionals and National Press Photogra-

phers, in support of Perfect 10 on issue of Google’s liability

for the display of full-size images.

Eric J. Schwartz and Steven J. Metalitz, Smith & Metalitz

LLP, Washington, DC, for amicus curiae Motion Picture

Association of America, Inc. in support of Perfect 10.

Jonathan Band, Jonathan Band PLLC, Washington, DC, for

amicus curiae NetCoalition, Computer and Communications

Industry Association, U.S. Internet Service Provider Associa-

tion, Consumer Electronics Association, Home Recording

Rights Coalition, Information Technology Association of

America, and Internet Commerce Coalition in support of

Google Inc.

Kenneth L. Doroshow and Linda J. Zirkelbach, Recording

Industry Association of America, Washington, DC; Jacque-

line C. Charlesworth, National Music Publishers’ Association,

PERFECT 10 v. AMAZON.COM 15449

Washington, DC; Robert W. Clarida, Richard S. Mandel and

Jonathan Z. King, Cowan, Liebowitz & Latman, P.C., New

York, New York, for amicus curiae Recording Industry Asso-

ciation of America and National Music Publishers’ Associa-

tion in support of neither party.

OPINION

IKUTA, Circuit Judge:

In this appeal, we consider a copyright owner’s efforts to

stop an Internet search engine from facilitating access to

infringing images. Perfect 10, Inc. sued Google Inc., for

infringing Perfect 10’s copyrighted photographs of nude mod-

els, among other claims. Perfect 10 brought a similar action

against Amazon.com and its subsidiary A9.com (collectively,

“Amazon.com”). The district court preliminarily enjoined

Google from creating and publicly displaying thumbnail ver-

sions of Perfect 10’s images, Perfect 10 v. Google, Inc., 416

F. Supp. 2d 828 (C.D. Cal. 2006), but did not enjoin Google

from linking to third-party websites that display infringing

full-size versions of Perfect 10’s images. Nor did the district

court preliminarily enjoin Amazon.com from giving users

access to information provided by Google. Perfect 10 and

Google both appeal the district court’s order. We have juris-

diction pursuant to 28 U.S.C. § 1292(a)(1).1

1

Google argues that we lack jurisdiction over the preliminary injunction

to the extent it enforces unregistered copyrights. Registration is generally

a jurisdictional prerequisite to a suit for copyright infringement. See 17

U.S.C. § 411. But section 411 does not limit the remedies a court can

grant. Rather, the Copyright Act gives courts broad authority to issue

injunctive relief. See 17 U.S.C. § 502(a). Once a court has jurisdiction

over an action for copyright infringement under section 411, the court may

grant injunctive relief to restrain infringement of any copyright, whether

registered or unregistered. See, e.g., Olan Mills, Inc. v. Linn Photo Co., 23

F.3d 1345, 1349 (8th Cir. 1994); Pac. & S. Co., Inc. v. Duncan, 744 F.2d

1490, 1499 n.17 (11th Cir. 1984). Because at least some of the Perfect 10

images at issue were registered, the district court did not err in determin-

ing that it could issue an order that covers unregistered works. Therefore,

we have jurisdiction over the district court’s decision and order.

15450 PERFECT 10 v. AMAZON.COM

The district court handled this complex case in a particu-

larly thoughtful and skillful manner. Nonetheless, the district

court erred on certain issues, as we will further explain below.

We affirm in part, reverse in part, and remand.

I

Background

Google’s computers, along with millions of others, are con-

nected to networks known collectively as the “Internet.” “The

Internet is a world-wide network of networks . . . all sharing

a common communications technology.” Religious Tech. Ctr.

v. Netcom On-Line Commc’n Servs., Inc., 923 F. Supp. 1231,

1238 n.1 (N.D. Cal. 1995). Computer owners can provide

information stored on their computers to other users con-

nected to the Internet through a medium called a webpage. A

webpage consists of text interspersed with instructions written

in Hypertext Markup Language (“HTML”) that is stored in a

computer. No images are stored on a webpage; rather, the

HTML instructions on the webpage provide an address for

where the images are stored, whether in the webpage publish-

er’s computer or some other computer. In general, webpages

are publicly available and can be accessed by computers con-

nected to the Internet through the use of a web browser.

Google operates a search engine, a software program that

automatically accesses thousands of websites (collections of

webpages) and indexes them within a database stored on

Google’s computers. When a Google user accesses the

Google website and types in a search query, Google’s soft-

ware searches its database for websites responsive to that

search query. Google then sends relevant information from its

index of websites to the user’s computer. Google’s search

engines can provide results in the form of text, images, or vid-

eos.

The Google search engine that provides responses in the

form of images is called “Google Image Search.” In response

PERFECT 10 v. AMAZON.COM 15451

to a search query, Google Image Search identifies text in its

database responsive to the query and then communicates to

users the images associated with the relevant text. Google’s

software cannot recognize and index the images themselves.

Google Image Search provides search results as a webpage of

small images called “thumbnails,” which are stored in

Google’s servers. The thumbnail images are reduced, lower-

resolution versions of full-sized images stored on third-party

computers.

When a user clicks on a thumbnail image, the user’s

browser program interprets HTML instructions on Google’s

webpage. These HTML instructions direct the user’s browser

to cause a rectangular area (a “window”) to appear on the

user’s computer screen. The window has two separate areas

of information. The browser fills the top section of the screen

with information from the Google webpage, including the

thumbnail image and text. The HTML instructions also give

the user’s browser the address of the website publisher’s com-

puter that stores the full-size version of the thumbnail.2 By

following the HTML instructions to access the third-party

webpage, the user’s browser connects to the website publish-

er’s computer, downloads the full-size image, and makes the

image appear at the bottom of the window on the user’s

screen. Google does not store the images that fill this lower

part of the window and does not communicate the images to

the user; Google simply provides HTML instructions direct-

ing a user’s browser to access a third-party website. However,

the top part of the window (containing the information from

the Google webpage) appears to frame and comment on the

bottom part of the window. Thus, the user’s window appears

2

The website publisher may not actually store the photographic images

used on its webpages in its own computer, but may provide HTML

instructions directing the user’s browser to some further computer that

stores the image. Because this distinction does not affect our analysis, for

convenience, we will assume that the website publisher stores all images

used on its webpages in the website publisher’s own computer.

15452 PERFECT 10 v. AMAZON.COM

to be filled with a single integrated presentation of the full-

size image, but it is actually an image from a third-party web-

site framed by information from Google’s website. The pro-

cess by which the webpage directs a user’s browser to

incorporate content from different computers into a single

window is referred to as “in-line linking.” Kelly v. Arriba Soft

Corp., 336 F.3d 811, 816 (9th Cir. 2003). The term “framing”

refers to the process by which information from one computer

appears to frame and annotate the in-line linked content from

another computer. Perfect 10, 416 F. Supp. 2d at 833-34.

Google also stores webpage content in its cache.3 For each

cached webpage, Google’s cache contains the text of the web-

page as it appeared at the time Google indexed the page, but

does not store images from the webpage. Id. at 833. Google

may provide a link to a cached webpage in response to a

user’s search query. However, Google’s cache version of the

webpage is not automatically updated when the webpage is

revised by its owner. So if the webpage owner updates its

webpage to remove the HTML instructions for finding an

infringing image, a browser communicating directly with the

webpage would not be able to access that image. However,

Google’s cache copy of the webpage would still have the old

HTML instructions for the infringing image. Unless the

owner of the computer changed the HTML address of the

infringing image, or otherwise rendered the image unavail-

able, a browser accessing Google’s cache copy of the website

3

Generally, a “cache” is “a computer memory with very short access

time used for storage of frequently or recently used instructions or data.”

United States v. Ziegler, 474 F.3d 1184, 1186 n.3 (9th Cir. 2007) (quoting

MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 171 (11th ed. 2003)). There

are two types of caches at issue in this case. A user’s personal computer

has an internal cache that saves copies of webpages and images that the

user has recently viewed so that the user can more rapidly revisit these

webpages and images. Google’s computers also have a cache which serves

a variety of purposes. Among other things, Google’s cache saves copies

of a large number of webpages so that Google’s search engine can effi-

ciently organize and index these webpages.

PERFECT 10 v. AMAZON.COM 15453

could still access the image where it is stored on the website

publisher’s computer. In other words, Google’s cache copy

could provide a user’s browser with valid directions to an

infringing image even though the updated webpage no longer

includes that infringing image.

In addition to its search engine operations, Google gener-

ates revenue through a business program called “AdSense.”

Under this program, the owner of a website can register with

Google to become an AdSense “partner.” The website owner

then places HTML instructions on its webpages that signal

Google’s server to place advertising on the webpages that is

relevant to the webpages’ content. Google’s computer pro-

gram selects the advertising automatically by means of an

algorithm. AdSense participants agree to share the revenues

that flow from such advertising with Google.

Google also generated revenues through an agreement with

Amazon.com that allowed Amazon.com to in-line link to

Google’s search results. Amazon.com gave its users the

impression that Amazon.com was providing search results,

but Google communicated the search results directly to Ama-

zon.com’s users. Amazon.com routed users’ search queries to

Google and automatically transmitted Google’s responses

(i.e., HTML instructions for linking to Google’s search

results) back to its users.

Perfect 10 markets and sells copyrighted images of nude

models. Among other enterprises, it operates a subscription

website on the Internet. Subscribers pay a monthly fee to view

Perfect 10 images in a “members’ area” of the site. Subscrib-

ers must use a password to log into the members’ area.

Google does not include these password-protected images

from the members’ area in Google’s index or database. Per-

fect 10 has also licensed Fonestarz Media Limited to sell and

distribute Perfect 10’s reduced-size copyrighted images for

download and use on cell phones.

15454 PERFECT 10 v. AMAZON.COM

Some website publishers republish Perfect 10’s images on

the Internet without authorization. Once this occurs, Google’s

search engine may automatically index the webpages contain-

ing these images and provide thumbnail versions of images in

response to user inquiries. When a user clicks on the thumb-

nail image returned by Google’s search engine, the user’s

browser accesses the third-party webpage and in-line links to

the full-sized infringing image stored on the website publish-

er’s computer. This image appears, in its original context, on

the lower portion of the window on the user’s computer

screen framed by information from Google’s webpage.

Procedural History. In May 2001, Perfect 10 began notify-

ing Google that its thumbnail images and in-line linking to the

full-size images infringed Perfect 10’s copyright. Perfect 10

continued to send these notices through 2005.

On November 19, 2004, Perfect 10 filed an action against

Google that included copyright infringement claims. This was

followed by a similar action against Amazon.com on June 29,

2005. On July 1, 2005 and August 24, 2005, Perfect 10 sought

a preliminary injunction to prevent Amazon.com and Google,

respectively, from “copying, reproducing, distributing, pub-

licly displaying, adapting or otherwise infringing, or contrib-

uting to the infringement” of Perfect 10’s photographs;

linking to websites that provide full-size infringing versions

of Perfect 10’s photographs; and infringing Perfect 10’s

username/password combinations.

The district court consolidated the two actions and heard

both preliminary injunction motions on November 7, 2005.

The district court issued orders granting in part and denying

in part the preliminary injunction against Google and denying

the preliminary injunction against Amazon.com. Perfect 10

and Google cross-appealed the partial grant and partial denial

of the preliminary injunction motion, and Perfect 10 appealed

the denial of the preliminary injunction against Amazon.com.

PERFECT 10 v. AMAZON.COM 15455

On June 15, 2006, the district court temporarily stayed the

preliminary injunction.

II

Standard of Review

We review the district court’s grant or denial of a prelimi-

nary injunction for an abuse of discretion. A&M Records, Inc.

v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). The dis-

trict court must support a preliminary injunction with findings

of fact, which we review for clear error. Earth Island Inst. v.

U.S. Forest Serv., 442 F.3d 1147, 1156 (9th Cir. 2006). We

review the district court’s conclusions of law de novo. Nap-

ster, 239 F.3d at 1013.

[1] Section 502(a) of the Copyright Act authorizes a court

to grant injunctive relief “on such terms as it may deem rea-

sonable to prevent or restrain infringement of a copyright.” 17

U.S.C. § 502(a). “Preliminary injunctive relief is available to

a party who demonstrates either: (1) a combination of proba-

ble success on the merits and the possibility of irreparable

harm; or (2) that serious questions are raised and the balance

of hardships tips in its favor. These two formulations repre-

sent two points on a sliding scale in which the required degree

of irreparable harm increases as the probability of success

decreases.” Napster, 239 F.3d at 1013 (internal quotation and

citation omitted).

[2] Because Perfect 10 has the burden of showing a likeli-

hood of success on the merits, the district court held that Per-

fect 10 also had the burden of demonstrating a likelihood of

overcoming Google’s fair use defense under 17 U.S.C. § 107.

Perfect 10, 416 F. Supp. 2d at 836-37. This ruling was errone-

ous. At trial, the defendant in an infringement action bears the

burden of proving fair use. See Campbell v. Acuff-Rose Music,

Inc., 510 U.S. 569, 590 (1994). Because “the burdens at the

preliminary injunction stage track the burdens at trial,” once

15456 PERFECT 10 v. AMAZON.COM

the moving party has carried its burden of showing a likeli-

hood of success on the merits, the burden shifts to the non-

moving party to show a likelihood that its affirmative defense

will succeed. Gonzales v. O Centro Espirita Beneficente

Uniao do Vegetal, 546 U.S. 418, 429 (2006); see also Abbott

Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1201 (Fed. Cir.

2007) (to defeat a motion for preliminary injunctive relief in

a patent infringement case, the non-moving party must estab-

lish a likelihood of success in proving its defenses of invalid-

ity or unenforceability); PHG Techs., LLC v. St. John Cos.,

469 F.3d 1361, 1365 (Fed. Cir. 2006). Accordingly, once Per-

fect 10 has shown a likelihood of success on the merits, the

burden shifts to Google to show a likelihood that its affirma-

tive defenses will succeed.

[3] In addition to its fair use defense, Google also raises an

affirmative defense under title II of the Digital Millennium

Copyright Act (“DMCA”), 17 U.S.C. § 512. Congress

enacted title II of the DMCA “to provide greater certainty to

service providers concerning their legal exposure for infringe-

ments that may occur in the course of their activities.” Ellison

v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (internal

quotation omitted). Sections 512(a) through (d) limit liability

for (respectively): “(1) transitory digital network communica-

tions; (2) system caching; (3) information residing on systems

or networks at the direction of users; and (4) information loca-

tion tools.” Id. at 1077. A service provider that qualifies for

such protection is not liable for monetary relief and may be

subject only to the narrow injunctive relief set forth in section

512(j). 17 U.S.C. § 512(a). If Perfect 10 demonstrates a likeli-

hood of success on the merits, Google must show a likelihood

of succeeding in its claim that it qualifies for protection under

title II of the DMCA.4

4

Perfect 10 argues that we are bound by the language and structure of

title II of the DMCA in determining Google’s liability for copyright

infringement. We have noted that the DMCA does not change copyright

law; rather, “Congress provided that [the DMCA’s] limitations of liability

PERFECT 10 v. AMAZON.COM 15457

III

Direct Infringement

Perfect 10 claims that Google’s search engine program

directly infringes two exclusive rights granted to copyright

holders: its display rights and its distribution rights.5 “Plain-

tiffs must satisfy two requirements to present a prima facie

case of direct infringement: (1) they must show ownership of

the allegedly infringed material and (2) they must demonstrate

apply if the provider is found to be liable under existing principles of law.”

Ellison, 357 F.3d at 1077 (emphasis and internal quotation omitted). As

a result, “[c]laims against service providers for direct, contributory, or

vicarious copyright infringement, therefore, are generally evaluated just as

they would be in the non-online world.” Id.; see also 17 U.S.C. § 512(l)

(“The failure of a service provider’s conduct to qualify for limitation of

liability under this section shall not bear adversely upon the consideration

of a defense by the service provider that the service provider’s conduct is

not infringing under this title or any other defense.”). Therefore, we must

consider Google’s potential liability under the Copyright Act without ref-

erence to title II of the DMCA.

5

17 U.S.C. § 106 states, in pertinent part:

Subject to sections 107 through 122, the owner of copyright

under this title has the exclusive rights to do and to authorize any

of the following:

(1) to reproduce the copyrighted work in copies or phonore-

cords;

....

(3) to distribute copies or phonorecords of the copyrighted

work to the public by sale or other transfer of ownership, or

by rental, lease, or lending;

....

(5) in the case of literary, musical, dramatic, and choreo-

graphic works, pantomimes, and pictorial, graphic, or sculp-

tural works, including the individual images of a motion

picture or other audiovisual work, to display the copyrighted

work publicly . . . .

15458 PERFECT 10 v. AMAZON.COM

that the alleged infringers violate at least one exclusive right

granted to copyright holders under 17 U.S.C. § 106.” Napster,

239 F.3d at 1013; see 17 U.S.C. § 501(a). Even if a plaintiff

satisfies these two requirements and makes a prima facie case

of direct infringement, the defendant may avoid liability if it

can establish that its use of the images is a “fair use” as set

forth in 17 U.S.C. § 107. See Kelly, 336 F.3d at 817.

Perfect 10’s ownership of at least some of the images at

issue is not disputed. See Perfect 10, 416 F. Supp. 2d at 836.

The district court held that Perfect 10 was likely to prevail

in its claim that Google violated Perfect 10’s display right

with respect to the infringing thumbnails. Id. at 844. How-

ever, the district court concluded that Perfect 10 was not

likely to prevail on its claim that Google violated either Per-

fect 10’s display or distribution right with respect to its full-

size infringing images. Id. at 844-45. We review these rulings

for an abuse of discretion. Napster, 239 F.3d at 1013.

A. Display Right

In considering whether Perfect 10 made a prima facie case

of violation of its display right, the district court reasoned that

a computer owner that stores an image as electronic informa-

tion and serves that electronic information directly to the user

(“i.e., physically sending ones and zeroes over the [I]nternet

to the user’s browser,” Perfect 10, 416 F. Supp. 2d at 839) is

displaying the electronic information in violation of a copy-

right holder’s exclusive display right. Id. at 843-45; see 17

U.S.C. § 106(5). Conversely, the owner of a computer that

does not store and serve the electronic information to a user

is not displaying that information, even if such owner in-line

links to or frames the electronic information. Perfect 10, 416

F. Supp. 2d at 843-45. The district court referred to this test

as the “server test.” Id. at 838-39.

Applying the server test, the district court concluded that

Perfect 10 was likely to succeed in its claim that Google’s

PERFECT 10 v. AMAZON.COM 15459

thumbnails constituted direct infringement but was unlikely to

succeed in its claim that Google’s in-line linking to full-size

infringing images constituted a direct infringement. Id. at

843-45. As explained below, because this analysis comports

with the language of the Copyright Act, we agree with the dis-

trict court’s resolution of both these issues.

[4] We have not previously addressed the question when a

computer displays a copyrighted work for purposes of section

106(5). Section 106(5) states that a copyright owner has the

exclusive right “to display the copyrighted work publicly.”

The Copyright Act explains that “display” means “to show a

copy of it, either directly or by means of a film, slide, televi-

sion image, or any other device or process . . . .” 17 U.S.C.

§ 101. Section 101 defines “copies” as “material objects,

other than phonorecords, in which a work is fixed by any

method now known or later developed, and from which the

work can be perceived, reproduced, or otherwise communi-

cated, either directly or with the aid of a machine or device.”

Id. Finally, the Copyright Act provides that “[a] work is

‘fixed’ in a tangible medium of expression when its embodi-

ment in a copy or phonorecord, by or under the authority of

the author, is sufficiently permanent or stable to permit it to

be perceived, reproduced, or otherwise communicated for a

period of more than transitory duration.” Id.

[5] We must now apply these definitions to the facts of this

case. A photographic image is a work that is “ ‘fixed’ in a tan-

gible medium of expression,” for purposes of the Copyright

Act, when embodied (i.e., stored) in a computer’s server (or

hard disk, or other storage device). The image stored in the

computer is the “copy” of the work for purposes of copyright

law. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d

511, 517-18 (9th Cir. 1993) (a computer makes a “copy” of

a software program when it transfers the program from a third

party’s computer (or other storage device) into its own mem-

ory, because the copy of the program recorded in the com-

puter is “fixed” in a manner that is “sufficiently permanent or

15460 PERFECT 10 v. AMAZON.COM

stable to permit it to be perceived, reproduced, or otherwise

communicated for a period of more than transitory duration”

(quoting 17 U.S.C. § 101)). The computer owner shows a

copy “by means of a . . . device or process” when the owner

uses the computer to fill the computer screen with the photo-

graphic image stored on that computer, or by communicating

the stored image electronically to another person’s computer.

17 U.S.C. § 101. In sum, based on the plain language of the

statute, a person displays a photographic image by using a

computer to fill a computer screen with a copy of the photo-

graphic image fixed in the computer’s memory. There is no

dispute that Google’s computers store thumbnail versions of

Perfect 10’s copyrighted images and communicate copies of

those thumbnails to Google’s users.6 Therefore, Perfect 10 has

made a prima facie case that Google’s communication of its

stored thumbnail images directly infringes Perfect 10’s dis-

play right.

[6] Google does not, however, display a copy of full-size

infringing photographic images for purposes of the Copyright

Act when Google frames in-line linked images that appear on

a user’s computer screen. Because Google’s computers do not

store the photographic images, Google does not have a copy

of the images for purposes of the Copyright Act. In other

words, Google does not have any “material objects . . . in

which a work is fixed . . . and from which the work can be

perceived, reproduced, or otherwise communicated” and thus

cannot communicate a copy. 17 U.S.C. § 101.

[7] Instead of communicating a copy of the image, Google

provides HTML instructions that direct a user’s browser to a

6

Because Google initiates and controls the storage and communication

of these thumbnail images, we do not address whether an entity that

merely passively owns and manages an Internet bulletin board or similar

system violates a copyright owner’s display and distribution rights when

the users of the bulletin board or similar system post infringing works. Cf.

CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004).

PERFECT 10 v. AMAZON.COM 15461

website publisher’s computer that stores the full-size photo-

graphic image. Providing these HTML instructions is not

equivalent to showing a copy. First, the HTML instructions

are lines of text, not a photographic image. Second, HTML

instructions do not themselves cause infringing images to

appear on the user’s computer screen. The HTML merely

gives the address of the image to the user’s browser. The

browser then interacts with the computer that stores the

infringing image. It is this interaction that causes an infringing

image to appear on the user’s computer screen. Google may

facilitate the user’s access to infringing images. However,

such assistance raises only contributory liability issues, see

Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545

U.S. 913, 929-30 (2005), Napster, 239 F.3d at 1019, and does

not constitute direct infringement of the copyright owner’s

display rights.

Perfect 10 argues that Google displays a copy of the full-

size images by framing the full-size images, which gives the

impression that Google is showing the image within a single

Google webpage. While in-line linking and framing may

cause some computer users to believe they are viewing a sin-

gle Google webpage, the Copyright Act, unlike the Trade-

mark Act, does not protect a copyright holder against acts that

cause consumer confusion. Cf. 15 U.S.C. § 1114(1) (provid-

ing that a person who uses a trademark in a manner likely to

cause confusion shall be liable in a civil action to the trade-

mark registrant).7

7

Perfect 10 also argues that Google violates Perfect 10’s right to display

full-size images because Google’s in-line linking meets the Copyright

Act’s definition of “to perform or display a work ‘publicly.’ ” 17 U.S.C.

§ 101. This phrase means “to transmit or otherwise communicate a perfor-

mance or display of the work to . . . the public, by means of any device

or process, whether the members of the public capable of receiving the

performance or display receive it in the same place or in separate places

and at the same time or at different times.” Id. Perfect 10 is mistaken.

Google’s activities do not meet this definition because Google transmits

or communicates only an address which directs a user’s browser to the

location where a copy of the full-size image is displayed. Google does not

communicate a display of the work itself.

15462 PERFECT 10 v. AMAZON.COM

Nor does our ruling that a computer owner does not display

a copy of an image when it communicates only the HTML

address of the copy erroneously collapse the display right in

section 106(5) into the reproduction right set forth in section

106(1). Nothing in the Copyright Act prevents the various

rights protected in section 106 from overlapping. Indeed,

under some circumstances, more than one right must be

infringed in order for an infringement claim to arise. For

example, a “Game Genie” device that allowed a player to

alter features of a Nintendo computer game did not infringe

Nintendo’s right to prepare derivative works because the

Game Genie did not incorporate any portion of the game

itself. See Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc.,

964 F.2d 965, 967 (9th Cir. 1992). We held that a copyright

holder’s right to create derivative works is not infringed

unless the alleged derivative work “incorporate[s] a protected

work in some concrete or permanent ‘form.’ ” Id. In other

words, in some contexts, the claimant must be able to claim

infringement of its reproduction right in order to claim

infringement of its right to prepare derivative works.

[8] Because Google’s cache merely stores the text of web-

pages, our analysis of whether Google’s search engine pro-

gram potentially infringes Perfect 10’s display and

distribution rights is equally applicable to Google’s cache.

Perfect 10 is not likely to succeed in showing that a cached

webpage that in-line links to full-size infringing images vio-

lates such rights. For purposes of this analysis, it is irrelevant

whether cache copies direct a user’s browser to third-party

images that are no longer available on the third party’s web-

site, because it is the website publisher’s computer, rather

than Google’s computer, that stores and displays the infring-

ing image.

B. Distribution Right

The district court also concluded that Perfect 10 would not

likely prevail on its claim that Google directly infringed Per-

PERFECT 10 v. AMAZON.COM 15463

fect 10’s right to distribute its full-size images. Perfect 10,

416 F. Supp. 2d at 844-45. The district court reasoned that

distribution requires an “actual dissemination” of a copy. Id.

at 844. Because Google did not communicate the full-size

images to the user’s computer, Google did not distribute these

images. Id.

Again, the district court’s conclusion on this point is con-

sistent with the language of the Copyright Act. Section 106(3)

provides that the copyright owner has the exclusive right “to

distribute copies or phonorecords of the copyrighted work to

the public by sale or other transfer of ownership, or by rental,

lease, or lending.” 17 U.S.C. § 106(3). As noted, “copies”

means “material objects . . . in which a work is fixed.” 17

U.S.C. § 101. The Supreme Court has indicated that in the

electronic context, copies may be distributed electronically.

See N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001) (a

computer database program distributed copies of newspaper

articles stored in its computerized database by selling copies

of those articles through its database service). Google’s search

engine communicates HTML instructions that tell a user’s

browser where to find full-size images on a website publish-

er’s computer, but Google does not itself distribute copies of

the infringing photographs. It is the website publisher’s com-

puter that distributes copies of the images by transmitting the

photographic image electronically to the user’s computer. As

in Tasini, the user can then obtain copies by downloading the

photo or printing it.

Perfect 10 incorrectly relies on Hotaling v. Church of Jesus

Christ of Latter-Day Saints and Napster for the proposition

that merely making images “available” violates the copyright

owner’s distribution right. Hotaling v. Church of Jesus Christ

of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997); Napster,

239 F.3d 1004. Hotaling held that the owner of a collection

of works who makes them available to the public may be

deemed to have distributed copies of the works. Hotaling, 118

F.3d at 203. Similarly, the distribution rights of the plaintiff

15464 PERFECT 10 v. AMAZON.COM

copyright owners were infringed by Napster users (private

individuals with collections of music files stored on their

home computers) when they used the Napster software to

make their collections available to all other Napster users.

Napster, 239 F.3d at 1011-14.

[9] This “deemed distribution” rule does not apply to

Google. Unlike the participants in the Napster system or the

library in Hotaling, Google does not own a collection of Per-

fect 10’s full-size images and does not communicate these

images to the computers of people using Google’s search

engine. Though Google indexes these images, it does not have

a collection of stored full-size images it makes available to the

public. Google therefore cannot be deemed to distribute cop-

ies of these images under the reasoning of Napster or Hotal-

ing. Accordingly, the district court correctly concluded that

Perfect 10 does not have a likelihood of success in proving

that Google violates Perfect 10’s distribution rights with

respect to full-size images.

C. Fair Use Defense

Because Perfect 10 has succeeded in showing it would pre-

vail in its prima facie case that Google’s thumbnail images

infringe Perfect 10’s display rights, the burden shifts to

Google to show that it will likely succeed in establishing an

affirmative defense. Google contends that its use of thumb-

nails is a fair use of the images and therefore does not consti-

tute an infringement of Perfect 10’s copyright. See 17 U.S.C.

§ 107.

The fair use defense permits the use of copyrighted works

without the copyright owner’s consent under certain situa-

tions. The defense encourages and allows the development of

new ideas that build on earlier ones, thus providing a neces-

sary counterbalance to the copyright law’s goal of protecting

creators’ work product. “From the infancy of copyright pro-

tection, some opportunity for fair use of copyrighted materials

PERFECT 10 v. AMAZON.COM 15465

has been thought necessary to fulfill copyright’s very purpose

. . . .” Campbell, 510 U.S. at 575. “The fair use doctrine thus

‘permits [and requires] 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.’ ” Id. at 577

(quoting Stewart v. Abend, 495 U.S. 207, 236 (1990)) (alter-

ation in original).

Congress codified the common law of fair use in 17 U.S.C.

§ 107, which provides:

Notwithstanding the provisions of sections 106 and

106A, the fair use of a copyrighted work, including

such use by reproduction in copies or phonorecords

or by any other means specified by that section, for

purposes such as criticism, comment, news report-

ing, teaching (including multiple copies for class-

room use), scholarship, or research, is not an

infringement of copyright. In determining whether

the use made of a work in any particular case is a fair

use the factors to be considered shall include—

(1) the purpose and character of the use,

including whether such use is of a commer-

cial nature or is for nonprofit educational

purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the por-

tion 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.

15466 PERFECT 10 v. AMAZON.COM

The fact that a work is unpublished shall not itself

bar a finding of fair use if such finding is made upon

consideration of all the above factors.

17 U.S.C. § 107.

We must be flexible in applying a fair use analysis; it “is

not to be simplified with bright-line rules, for the statute, like

the doctrine it recognizes, calls for case-by-case analysis. . . .

Nor may the four statutory factors be treated in isolation, one

from another. All are to be explored, and the results weighed

together, in light of the purposes of copyright.” Campbell, 510

U.S. at 577-78; see also Kelly, 336 F.3d at 817-18. The pur-

pose of copyright law is “[t]o promote the Progress of Science

and useful Arts,” U.S. CONST. art. I, § 8, cl. 8, and to serve

“ ‘the welfare of the public.’ ” Sony Corp. of Am. v. Universal

City Studios, Inc., 464 U.S. 417, 429 n.10 (quoting H.R. Rep.

No. 2222, 60th Cong., 2d Sess. 7 (1909)).

In applying the fair use analysis in this case, we are guided

by Kelly v. Arriba Soft Corp., which considered substantially

the same use of copyrighted photographic images as is at

issue here. See 336 F.3d 811. In Kelly, a photographer brought

a direct infringement claim against Arriba, the operator of an

Internet search engine. The search engine provided thumbnail

versions of the photographer’s images in response to search

queries. Id. at 815-16. We held that Arriba’s use of thumbnail

images was a fair use primarily based on the transformative

nature of a search engine and its benefit to the public. Id. at

818-22. We also concluded that Arriba’s use of the thumbnail

images did not harm the photographer’s market for his image.

Id. at 821-22.

In this case, the district court determined that Google’s use

of thumbnails was not a fair use and distinguished Kelly. Per-

fect 10, 416 F. Supp. 2d at 845-51. We consider these distinc-

tions in the context of the four-factor fair use analysis.

PERFECT 10 v. AMAZON.COM 15467

[10] Purpose and character of the use. The first factor, 17

U.S.C. § 107(1), requires a court to consider “the purpose and

character of the use, including whether such use is of a com-

mercial nature or is for nonprofit educational purposes.” The

central purpose of this inquiry is to determine whether and to

what extent the new work is “transformative.” Campbell, 510

U.S. at 579. A work is “transformative” when the new work

does not “merely supersede the objects of the original cre-

ation” but rather “adds something new, with a further purpose

or different character, altering the first with new expression,

meaning, or message.” Id. (internal quotation and alteration

omitted). Conversely, if the new work “supersede[s] the use

of the original,” the use is likely not a fair use. Harper & Row

Publishers, Inc. v. Nation Enters., 471 U.S. 539, 550-51

(1985) (internal quotation omitted) (publishing the “heart” of

an unpublished work and thus supplanting the copyright hold-

er’s first publication right was not a fair use); see also Wall

Data Inc. v. L.A. County Sheriff’s Dep’t, 447 F.3d 769,

778-82 (9th Cir. 2006) (using a copy to save the cost of buy-

ing additional copies of a computer program was not a fair use).8

8

We reject at the outset Perfect 10’s argument that providing access to

infringing websites cannot be deemed transformative and is inherently not

fair use. Perfect 10 relies on Video Pipeline, Inc. v. Buena Vista Home

Entm’t, Inc., 342 F.3d 191 (3d Cir. 2003), and Atari Games Corp. v. Nin-

tendo of Am. Inc., 975 F.2d 832, 843 (Fed. Cir. 1992). But these cases, in

essence, simply apply the general rule that a party claiming fair use must

act in a manner generally compatible with principles of good faith and fair

dealing. See Harper & Row, 471 U.S. at 562-63. For this reason, a com-

pany whose business is based on providing scenes from copyrighted mov-

ies without authorization could not claim that it provided the same public

benefit as the search engine in Kelly. See Video Pipeline, 342 F.3d at

198-200. Similarly, a company whose overriding desire to replicate a com-

petitor’s computer game led it to obtain a copy of the competitor’s source

code from the Copyright Office under false pretenses could not claim fair

use with respect to its purloined copy. Atari Games, 975 F.2d at 843.

Unlike the alleged infringers in Video Pipeline and Atari Games, who

intentionally misappropriated the copyright owners’ works for the purpose

of commercial exploitation, Google is operating a comprehensive search

engine that only incidentally indexes infringing websites. This incidental

15468 PERFECT 10 v. AMAZON.COM

As noted in Campbell, a “transformative work” is one that

alters the original work “with new expression, meaning, or

message.” Campbell, 510 U.S. at 579. “A use is considered

transformative only where a defendant changes a plaintiff’s

copyrighted work or uses the plaintiff’s copyrighted work in

a different context such that the plaintiff’s work is trans-

formed into a new creation.” Wall Data, 447 F.3d at 778.

[11] Google’s use of thumbnails is highly transformative.

In Kelly, we concluded that Arriba’s use of thumbnails was

transformative because “Arriba’s use of the images serve[d]

a different function than Kelly’s use—improving access to

information on the [I]nternet versus artistic expression.”

Kelly, 336 F.3d at 819. Although an image may have been

created originally to serve an entertainment, aesthetic, or

informative function, a search engine transforms the image

into a pointer directing a user to a source of information. Just

as a “parody has an obvious claim to transformative value”

because “it can provide social benefit, by shedding light on an

earlier work, and, in the process, creating a new one,” Camp-

bell, 510 U.S. at 579, a search engine provides social benefit

by incorporating an original work into a new work, namely,

an electronic reference tool. Indeed, a search engine may be

more transformative than a parody because a search engine

provides an entirely new use for the original work, while a

parody typically has the same entertainment purpose as the

original work. See, e.g., id. at 594-96 (holding that 2 Live

Crew’s parody of “Oh, Pretty Woman” using the words “hairy

woman” or “bald headed woman” was a transformative work,

and thus constituted a fair use); Mattel, Inc. v. Walking Moun-

tain Prods., 353 F.3d 792, 796-98, 800-06 (9th Cir. 2003)

impact does not amount to an abuse of the good faith and fair dealing

underpinnings of the fair use doctrine. Accordingly, we conclude that

Google’s inclusion of thumbnail images derived from infringing websites

in its Internet-wide search engine activities does not preclude Google from

raising a fair use defense.

PERFECT 10 v. AMAZON.COM 15469

(concluding that photos parodying Barbie by depicting “nude

Barbie dolls juxtaposed with vintage kitchen appliances” was

a fair use). In other words, a search engine puts images “in a

different context” so that they are “transformed into a new

creation.” Wall Data, 447 F.3d at 778.

The fact that Google incorporates the entire Perfect 10

image into the search engine results does not diminish the

transformative nature of Google’s use. As the district court

correctly noted, Perfect 10, 416 F. Supp. 2d at 848-49, we

determined in Kelly that even making an exact copy of a work

may be transformative so long as the copy serves a different

function than the original work, Kelly, 336 F.3d at 818-19.

For example, the First Circuit has held that the republication

of photos taken for a modeling portfolio in a newspaper was

transformative because the photos served to inform, as well as

entertain. See Nez v. Caribbean Int’l News Corp., 235 F.3d

18, 22-23 (1st Cir. 2000). In contrast, duplicating a church’s

religious book for use by a different church was not transfor-

mative. See Worldwide Church of God v. Phila. Church of

God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000). Nor was a

broadcaster’s simple retransmission of a radio broadcast over

telephone lines transformative, where the original radio shows

were given no “new expression, meaning, or message.” Infin-

ity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.

1998). Here, Google uses Perfect 10’s images in a new con-

text to serve a different purpose.

The district court nevertheless determined that Google’s

use of thumbnail images was less transformative than Arriba’s

use of thumbnails in Kelly because Google’s use of thumb-

nails superseded Perfect 10’s right to sell its reduced-size

images for use on cell phones. See Perfect 10, 416 F. Supp.

2d at 849. The district court stated that “mobile users can

download and save the thumbnails displayed by Google

Image Search onto their phones,” and concluded “to the

extent that users may choose to download free images to their

15470 PERFECT 10 v. AMAZON.COM

phone rather than purchase [Perfect 10’s] reduced-size

images, Google’s use supersedes [Perfect 10’s].” Id.

Additionally, the district court determined that the commer-

cial nature of Google’s use weighed against its transformative

nature. Id. Although Kelly held that the commercial use of the

photographer’s images by Arriba’s search engine was less

exploitative than typical commercial use, and thus weighed

only slightly against a finding of fair use, Kelly, 336 F.3d at

818-20, the district court here distinguished Kelly on the

ground that some website owners in the AdSense program

had infringing Perfect 10 images on their websites, Perfect

10, 416 F. Supp. 2d at 846-47. The district court held that

because Google’s thumbnails “lead users to sites that directly

benefit Google’s bottom line,” the AdSense program

increased the commercial nature of Google’s use of Perfect

10’s images. Id. at 847.

In conducting our case-specific analysis of fair use in light

of the purposes of copyright, Campbell, 510 U.S. at 581, we

must weigh Google’s superseding and commercial uses of

thumbnail images against Google’s significant transformative

use, as well as the extent to which Google’s search engine

promotes the purposes of copyright and serves the interests of

the public. Although the district court acknowledged the “tru-

ism that search engines such as Google Image Search provide

great value to the public,” Perfect 10, 416 F. Supp. 2d at

848-49, the district court did not expressly consider whether

this value outweighed the significance of Google’s supersed-

ing use or the commercial nature of Google’s use. Id. at 849.

The Supreme Court, however, has directed us to be mindful

of the extent to which a use promotes the purposes of copy-

right and serves the interests of the public. See Campbell, 510

U.S. at 579; Harper & Row, 471 U.S. at 556-57; Sony, 464

U.S. at 431-32.

We note that the superseding use in this case is not signifi-

cant at present: the district court did not find that any down-

PERFECT 10 v. AMAZON.COM 15471

loads for mobile phone use had taken place. See Perfect 10,

416 F. Supp. 2d at 849. Moreover, while Google’s use of

thumbnails to direct users to AdSense partners containing

infringing content adds a commercial dimension that did not

exist in Kelly, the district court did not determine that this

commercial element was significant. See id. at 848-49. The

district court stated that Google’s AdSense programs as a

whole contributed “$630 million, or 46% of total revenues”

to Google’s bottom line, but noted that this figure did not

“break down the much smaller amount attributable to web-

sites that contain infringing content.” Id. at 847 & n.12 (inter-

nal quotation omitted).

[12] We conclude that the significantly transformative

nature of Google’s search engine, particularly in light of its

public benefit, outweighs Google’s superseding and commer-

cial uses of the thumbnails in this case. In reaching this con-

clusion, we note the importance of analyzing fair use flexibly

in light of new circumstances. Sony, 464 U.S. at 431-32; id.

at 448 n.31 (“ ‘[Section 107] endorses the purpose and gen-

eral scope of the judicial doctrine of fair use, but there is no

disposition to freeze the doctrine in the statute, especially dur-

ing a period of rapid technological change.’ ”) (quoting H.R.

Rep. No. 94-1476, p. 65-66 (1976), U.S. Code Cong. &

Admin. News 1976, p. 5680)). We are also mindful of the

Supreme Court’s direction that “the more transformative the

new work, the less will be the significance of other factors,

like commercialism, that may weigh against a finding of fair

use.” Campbell, 510 U.S. at 579.

Accordingly, we disagree with the district court’s conclu-

sion that because Google’s use of the thumbnails could super-

sede Perfect 10’s cell phone download use and because the

use was more commercial than Arriba’s, this fair use factor

weighed “slightly” in favor of Perfect 10. Perfect 10, 416 F.

Supp. 2d at 849. Instead, we conclude that the transformative

nature of Google’s use is more significant than any incidental

superseding use or the minor commercial aspects of Google’s

15472 PERFECT 10 v. AMAZON.COM

search engine and website. Therefore, this factor weighs heav-

ily in favor of Google.

The nature of the copyrighted work. With respect to the

second factor, “the nature of the copyrighted work,” 17

U.S.C. § 107(2), our decision in Kelly is directly on point.

There we held that the photographer’s images were “creative

in nature” and thus “closer to the core of intended copyright

protection than are more fact-based works.” Kelly, 336 F.3d

at 820 (internal quotation omitted). However, because the

photos appeared on the Internet before Arriba used thumbnail

versions in its search engine results, this factor weighed only

slightly in favor of the photographer. Id.

[13] Here, the district court found that Perfect 10’s images

were creative but also previously published. Perfect 10, 416

F. Supp. 2d at 850. The right of first publication is “the

author’s right to control the first public appearance of his

expression.” Harper & Row, 471 U.S. at 564. Because this

right encompasses “the choices of when, where, and in what

form first to publish a work,” id., an author exercises and

exhausts this one-time right by publishing the work in any

medium. See, e.g., Batjac Prods. Inc. v. GoodTimes Home

Video Corp., 160 F.3d 1223, 1235 (9th Cir. 1998) (noting, in

the context of the common law right of first publication, that

such a right “does not entail multiple first publication rights

in every available medium”). Once Perfect 10 has exploited

this commercially valuable right of first publication by putting

its images on the Internet for paid subscribers, Perfect 10 is

no longer entitled to the enhanced protection available for an

unpublished work. Accordingly the district court did not err

in holding that this factor weighed only slightly in favor of

Perfect 10.9 See Perfect 10, 416 F. Supp. 2d at 849-50.

9

Google contends that Perfect 10’s photographic images are less cre-

ative and less deserving of protection than the images of the American

West in Kelly because Perfect 10 boasts of its un-retouched photos show-

ing the natural beauty of its models. Having reviewed the record, we con-

PERFECT 10 v. AMAZON.COM 15473

[14] The amount and substantiality of the portion used.

“The third factor asks whether the amount and substantiality

of the portion used in relation to the copyrighted work as a

whole . . . are reasonable in relation to the purpose of the

copying.” Campbell, 510 U.S. at 586 (internal quotation omit-

ted); see also 17 U.S.C. § 107(3). In Kelly, we held Arriba’s

use of the entire photographic image was reasonable in light

of the purpose of a search engine. Kelly, 336 F.3d at 821. Spe-

cifically, we noted, “[i]t 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 [website]. 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.” Id. Accordingly, we

concluded that this factor did not weigh in favor of either

party. Id. Because the same analysis applies to Google’s use

of Perfect 10’s image, the district court did not err in finding

that this factor favored neither party.

Effect of use on the market. The fourth factor is “the effect

of the use upon the potential market for or value of the copy-

righted work.” 17 U.S.C. § 107(4). In Kelly, we concluded

that Arriba’s use of the thumbnail images did not harm the

market for the photographer’s full-size images. See Kelly, 336

F.3d at 821-22. We reasoned that because thumbnails were

not a substitute for the full-sized images, they did not harm

the photographer’s ability to sell or license his full-sized

images. Id. The district court here followed Kelly’s reasoning,

holding that Google’s use of thumbnails did not hurt Perfect

10’s market for full-size images. See Perfect 10, 416 F. Supp.

2d at 850-51. We agree.

clude that the district court’s finding that Perfect 10’s photographs

“consistently reflect professional, skillful, and sometimes tasteful artistry”

is not clearly erroneous. Perfect 10, 416 F. Supp. 2d at 849 n.15. We agree

with the district court that there is no basis for concluding that photos of

the American West are more deserving of protection than photos of nude

models. See id.

15474 PERFECT 10 v. AMAZON.COM

Perfect 10 argues that the district court erred because the

likelihood of market harm may be presumed if the intended

use of an image is for commercial gain. However, this pre-

sumption does not arise when a work is transformative

because “market substitution is at least less certain, and mar-

ket harm may not be so readily inferred.” Campbell, 510 U.S.

at 591. As previously discussed, Google’s use of thumbnails

for search engine purposes is highly transformative, and so

market harm cannot be presumed.

[15] Perfect 10 also has a market for reduced-size images,

an issue not considered in Kelly. The district court held that

“Google’s use of thumbnails likely does harm the potential

market for the downloading of [Perfect 10’s] reduced-size

images onto cell phones.” Perfect 10, 416 F. Supp. 2d at 851

(emphasis omitted). The district court reasoned that persons

who can obtain Perfect 10 images free of charge from Google

are less likely to pay for a download, and the availability of

Google’s thumbnail images would harm Perfect 10’s market

for cell phone downloads. Id. As we discussed above, the dis-

trict court did not make a finding that Google users have

downloaded thumbnail images for cell phone use. This poten-

tial harm to Perfect 10’s market remains hypothetical. We

conclude that this factor favors neither party.

[16] Having undertaken a case-specific analysis of all four

factors, we now weigh these factors together “in light of the

purposes of copyright.” Campbell, 510 U.S. at 578; see also

Kelly, 336 F.3d at 818 (“We must balance [the section 107]

factors in light of the objectives of copyright law, rather than

view them as definitive or determinative tests.”). In this case,

Google has put Perfect 10’s thumbnail images (along with

millions of other thumbnail images) to a use fundamentally

different than the use intended by Perfect 10. In doing so,

Google has provided a significant benefit to the public.

Weighing this significant transformative use against the

unproven use of Google’s thumbnails for cell phone down-

loads, and considering the other fair use factors, all in light of

PERFECT 10 v. AMAZON.COM 15475

the purpose of copyright, we conclude that Google’s use of

Perfect 10’s thumbnails is a fair use. Because the district court

here “found facts sufficient to evaluate each of the statutory

factors . . . [we] need not remand for further factfinding.”

Harper & Row, 471 U.S. at 560 (internal quotation omitted).

We conclude that Google is likely to succeed in proving its

fair use defense and, accordingly, we vacate the preliminary

injunction regarding Google’s use of thumbnail images.

IV

Secondary Liability for Copyright Infringement

[17] We now turn to the district court’s ruling that Google

is unlikely to be secondarily liable for its in-line linking to

infringing full-size images under the doctrines of contributory

and vicarious infringement.10 The district court ruled that Per-

fect 10 did not have a likelihood of proving success on the

merits of either its contributory infringement or vicarious

infringement claims with respect to the full-size images. See

Perfect 10, 416 F. Supp. 2d at 856, 858. In reviewing the dis-

trict court’s conclusions, we are guided by the Supreme

Court’s recent interpretation of secondary liability, namely:

“[o]ne infringes contributorily by intentionally inducing or

encouraging direct infringement, and infringes vicariously by

profiting from direct infringement while declining to exercise

a right to stop or limit it.” Grokster, 545 U.S. at 930 (internal

citations omitted).

Direct Infringement by Third Parties. As a threshold mat-

ter, before we examine Perfect 10’s claims that Google is sec-

ondarily liable, Perfect 10 must establish that there has been

10

Because the district court concluded that Perfect 10 was likely to pre-

vail on its direct infringement claim with respect to Google’s use of

thumbnails, but not with respect to its in-line linking to full-size images,

the district court considered Google’s potential secondary liability only on

the second issue.

15476 PERFECT 10 v. AMAZON.COM

direct infringement by third parties. See Napster, 239 F.3d at

1013 n.2 (“Secondary liability for copyright infringement

does not exist in the absence of direct infringement by a third

party.”).

Perfect 10 alleges that third parties directly infringed its

images in three ways. First, Perfect 10 claims that third-party

websites directly infringed its copyright by reproducing, dis-

playing, and distributing unauthorized copies of Perfect 10’s

images. Google does not dispute this claim on appeal.

[18] Second, Perfect 10 claims that individual users of

Google’s search engine directly infringed Perfect 10’s copy-

rights by storing full-size infringing images on their comput-

ers. We agree with the district court’s conclusion that Perfect

10 failed to provide sufficient evidence to support this claim.

See Perfect 10, 416 F. Supp. 2d at 852. There is no evidence

in the record directly establishing that users of Google’s

search engine have stored infringing images on their comput-

ers, and the district court did not err in declining to infer the

existence of such evidence.

[19] Finally, Perfect 10 contends that users who link to

infringing websites automatically make “cache” copies of

full-size images and thereby directly infringe Perfect 10’s

reproduction right. The district court rejected this argument,

holding that any such reproduction was likely a “fair use.” Id.

at 852 n.17. The district court reasoned that “[l]ocal caching

by the browsers of individual users is noncommercial, trans-

formative, and no more than necessary to achieve the objec-

tives of decreasing network latency and minimizing

unnecessary bandwidth usage (essential to the [I]nternet). It

has a minimal impact on the potential market for the original

work . . . .” Id. We agree; even assuming such automatic

copying could constitute direct infringement, it is a fair use in

this context. The copying function performed automatically

by a user’s computer to assist in accessing the Internet is a

transformative use. Moreover, as noted by the district court,

PERFECT 10 v. AMAZON.COM 15477

a cache copies no more than is necessary to assist the user in

Internet use. It is designed to enhance an individual’s com-

puter use, not to supersede the copyright holders’ exploitation

of their works. Such automatic background copying has no

more than a minimal effect on Perfect 10’s rights, but a con-

siderable public benefit. Because the four fair use factors

weigh in favor of concluding that cache copying constitutes

a fair use, Google has established a likelihood of success on

this issue. Accordingly, Perfect 10 has not carried its burden

of showing that users’ cache copies of Perfect 10’s full-size

images constitute direct infringement.

Therefore, we must assess Perfect 10’s arguments that

Google is secondarily liable in light of the direct infringement

that is undisputed by the parties: third-party websites’ repro-

ducing, displaying, and distributing unauthorized copies of

Perfect 10’s images on the Internet. Id. at 852.

A. Contributory Infringement

In order for Perfect 10 to show it will likely succeed in its

contributory liability claim against Google, it must establish

that Google’s activities meet the definition of contributory lia-

bility recently enunciated in Grokster. Within the general rule

that “[o]ne infringes contributorily by intentionally inducing

or encouraging direct infringement,” Grokster, 545 U.S. at

930, the Court has defined two categories of contributory lia-

bility: “Liability under our jurisprudence may be predicated

on actively encouraging (or inducing) infringement through

specific acts (as the Court’s opinion develops) or on distribut-

ing a product distributees use to infringe copyrights, if the

product is not capable of ‘substantial’ or ‘commercially sig-

nificant’ noninfringing uses.” Id. at 942 (Ginsburg, J., concur-

ring) (quoting Sony, 464 U.S. at 442); see also id. at 936-37.

Looking at the second category of liability identified by the

Supreme Court (distributing products), Google relies on Sony,

464 U.S. at 442, to argue that it cannot be held liable for con-

15478 PERFECT 10 v. AMAZON.COM

tributory infringement because liability does not arise from

the mere sale of a product (even with knowledge that consum-

ers would use the product to infringe) if the product is capable

of substantial non-infringing use. Google argues that its

search engine service is such a product. Assuming the princi-

ple enunciated in Sony is applicable to the operation of

Google’s search engine, then Google cannot be held liable for

contributory infringement solely because the design of its

search engine facilitates such infringement. Grokster, 545

U.S. at 931-32 (discussing Sony, 464 U.S. 417). Nor can

Google be held liable solely because it did not develop tech-

nology that would enable its search engine to automatically

avoid infringing images. See id. at 939 n.12. However, Perfect

10 has not based its claim of infringement on the design of

Google’s search engine and the Sony rule does not immunize

Google from other sources of contributory liability. See id. at

933-34.

[20] We must next consider whether Google could be held

liable under the first category of contributory liability identi-

fied by the Supreme Court, that is, the liability that may be

imposed for intentionally encouraging infringement through

specific acts.11 Grokster tells us that contribution to infringe-

ment must be intentional for liability to arise. Grokster, 545

U.S. at 930. However, Grokster also directs us to analyze con-

tributory liability in light of “rules of fault-based liability

derived from the common law,” id. at 934-35, and common

law principles establish that intent may be imputed. “Tort law

ordinarily imputes to an actor the intention to cause the natu-

ral and probable consequences of his conduct.” DeVoto v.

Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980);

11

Google’s activities do not meet the “inducement” test explained in

Grokster because Google has not promoted the use of its search engine

specifically to infringe copyrights. See Grokster, 545 U.S. at 935-37.

However, the Supreme Court in Grokster did not suggest that a court must

find inducement in order to impose contributory liability under common

law principles.

PERFECT 10 v. AMAZON.COM 15479

RESTATEMENT (SECOND) OF TORTS § 8A cmt. b (1965) (“If the

actor knows that the consequences are certain, or substantially

certain, to result from his act, and still goes ahead, he is

treated by the law as if he had in fact desired to produce the

result.”). When the Supreme Court imported patent law’s

“staple article of commerce doctrine” into the copyright con-

text, it also adopted these principles of imputed intent.

Grokster, 545 U.S. at 932 (“The [staple article of commerce]

doctrine was devised to identify instances in which it may be

presumed from distribution of an article in commerce that the

distributor intended the article to be used to infringe another’s

patent, and so may justly be held liable for that infringe-

ment.”). Therefore, under Grokster, an actor may be contribu-

torily liable for intentionally encouraging direct infringement

if the actor knowingly takes steps that are substantially certain

to result in such direct infringement.

Our tests for contributory liability are consistent with the

rule set forth in Grokster. We have adopted the general rule

set forth in Gershwin Publishing Corp. v. Columbia Artists

Management, Inc., namely: “one who, with knowledge of the

infringing activity, induces, causes or materially contributes

to the infringing conduct of another, may be held liable as a

‘contributory’ infringer,” 443 F.2d 1159, 1162 (2d Cir. 1971).

See Ellison, 357 F.3d at 1076; Napster, 239 F.3d at 1019;

Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th

Cir. 1996).

[21] We have further refined this test in the context of cyber-

space12 to determine when contributory liability can be

imposed on a provider of Internet access or services. See

Napster, 239 F.3d at 1019-20. In Napster, we considered

claims that the operator of an electronic file sharing system

was contributorily liable for assisting individual users to swap

12

“Cyberspace is a popular term for the world of electronic communica-

tions over computer networks.” Religious Tech. Ctr. v. Netcom On-Line

Commc’n Servs., Inc., 907 F. Supp. 1361, 1365 n.1 (N.D. Cal. 1995).

15480 PERFECT 10 v. AMAZON.COM

copyrighted music files stored on their home computers with

other users of the system. Napster, 239 F.3d at 1011-13,

1019-22. We stated that “if a computer system operator learns

of specific infringing material available on his system and

fails to purge such material from the system, the operator

knows of and contributes to direct infringement.” Id. at 1021.

Because Napster knew of the availability of infringing music

files, assisted users in accessing such files, and failed to block

access to such files, we concluded that Napster materially

contributed to infringement. Id. at 1022.

The Napster test for contributory liability was modeled on

the influential district court decision in Religious Technology

Center v. Netcom On-Line Communication Services, Inc.

(Netcom), 907 F. Supp. 1361, 1365-66 (N.D. Cal. 1995). See

Napster, 239 F.3d at 1021. In Netcom, a disgruntled former

Scientology minister posted allegedly infringing copies of

Scientological works on an electronic bulletin board service.

Netcom, 907 F. Supp. at 1365-66. The messages were stored

on the bulletin board operator’s computer, then automatically

copied onto Netcom’s computer, and from there copied onto

other computers comprising “a worldwide community” of

electronic bulletin board systems. Id. at 1366-67 & n.4 (inter-

nal quotation omitted). Netcom held that if plaintiffs could

prove that Netcom knew or should have known that the minis-

ter infringed plaintiffs’ copyrights, “Netcom [would] be liable

for contributory infringement since its failure to simply cancel

[the former minister’s] infringing message and thereby stop

an infringing copy from being distributed worldwide consti-

tute[d] substantial participation in [the former minister’s] pub-

lic distribution of the message.” Id. at 1374.

[22] Although neither Napster nor Netcom expressly

required a finding of intent, those cases are consistent with

Grokster because both decisions ruled that a service provid-

er’s knowing failure to prevent infringing actions could be the

basis for imposing contributory liability. Under such circum-

stances, intent may be imputed. In addition, Napster and Net-

PERFECT 10 v. AMAZON.COM 15481

com are consistent with the longstanding requirement that an

actor’s contribution to infringement must be material to war-

rant the imposition of contributory liability. Gershwin, 443

F.2d at 1162. Both Napster and Netcom acknowledge that ser-

vices or products that facilitate access to websites throughout

the world can significantly magnify the effects of otherwise

immaterial infringing activities. See Napster, 239 F.3d at

1022; Netcom, 907 F. Supp. at 1375. The Supreme Court has

acknowledged that “[t]he argument for imposing indirect lia-

bility” is particularly “powerful” when individuals using the

defendant’s software could make a huge number of infringing

downloads every day. Grokster, 545 U.S. at 929. Moreover,

copyright holders cannot protect their rights in a meaningful

way unless they can hold providers of such services or prod-

ucts accountable for their actions pursuant to a test such as

that enunciated in Napster. See id. at 929-30 (“When a widely

shared service or product is used to commit infringement, it

may be impossible to enforce rights in the protected work

effectively against all direct infringers, the only practical

alternative being to go against the distributor of the copying

device for secondary liability on a theory of contributory or

vicarious infringement.”). Accordingly, we hold that a com-

puter system operator can be held contributorily liable if it

“has actual knowledge that specific infringing material is

available using its system,” Napster, 239 F.3d at 1022, and

can “take simple measures to prevent further damage” to

copyrighted works, Netcom, 907 F. Supp. at 1375, yet contin-

ues to provide access to infringing works.

Here, the district court held that even assuming Google had

actual knowledge of infringing material available on its sys-

tem, Google did not materially contribute to infringing con-

duct because it did not undertake any substantial promotional

or advertising efforts to encourage visits to infringing web-

sites, nor provide a significant revenue stream to the infring-

ing websites. Perfect 10, 416 F. Supp. 2d at 854-56. This

analysis is erroneous. There is no dispute that Google substan-

tially assists websites to distribute their infringing copies to a

15482 PERFECT 10 v. AMAZON.COM

worldwide market and assists a worldwide audience of users

to access infringing materials. We cannot discount the effect

of such a service on copyright owners, even though Google’s

assistance is available to all websites, not just infringing ones.

Applying our test, Google could be held contributorily liable

if it had knowledge that infringing Perfect 10 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.

[23] The district court did not resolve the factual disputes

over the adequacy of Perfect 10’s notices to Google and

Google’s responses to these notices. Moreover, there are fac-

tual disputes over whether there are reasonable and feasible

means for Google to refrain from providing access to infring-

ing images. Therefore, we must remand this claim to the dis-

trict court for further consideration whether Perfect 10 would

likely succeed in establishing that Google was contributorily

liable for in-line linking to full-size infringing images under

the test enunciated today.13

B. Vicarious Infringement

[24] Perfect 10 also challenges the district court’s conclu-

sion that it is not likely to prevail on a theory of vicarious lia-

bility against Google. Perfect 10, 416 F. Supp. 2d at 856-58.

Grokster states that one “infringes vicariously by profiting

13

Perfect 10 claims that Google materially contributed to infringement

by linking to websites containing unauthorized passwords, which enabled

Google users to access Perfect 10’s website and make infringing copies of

images. However, Perfect 10 points to no evidence that users logging onto

the Perfect 10 site with unauthorized passwords infringed Perfect 10’s

exclusive rights under section 106. In the absence of evidence that

Google’s actions led to any direct infringement, this argument does not

assist Perfect 10 in establishing that it would prevail on the merits of its

contributory liability claim. See Napster, 239 F.3d at 1013 n.2

(“Secondary liability for copyright infringement does not exist in the

absence of direct infringement by a third party.”).

PERFECT 10 v. AMAZON.COM 15483

from direct infringement while declining to exercise a right to

stop or limit it.” Grokster, 545 U.S. at 930. As this formula-

tion indicates, to succeed in imposing vicarious liability, a

plaintiff must establish that the defendant exercises the requi-

site control over the direct infringer and that the defendant

derives a direct financial benefit from the direct infringement.

See id. Grokster further explains the “control” element of the

vicarious liability test as the defendant’s “right and ability to

supervise the direct infringer.” Id. at 930 n.9. Thus, under

Grokster, a defendant exercises control over a direct infringer

when he has both a legal right to stop or limit the directly

infringing conduct, as well as the practical ability to do so.

We evaluate Perfect 10’s arguments that Google is vicari-

ously liable in light of the direct infringement that is undis-

puted by the parties, namely, the third-party websites’

reproduction, display, and distribution of unauthorized copies

of Perfect 10’s images on the Internet. Perfect 10, 416 F.

Supp. 2d at 852; see supra Section IV.A. In order to prevail

at this preliminary injunction stage, Perfect 10 must demon-

strate a likelihood of success in establishing that Google has

the right and ability to stop or limit the infringing activities of

third party websites. In addition, Perfect 10 must establish a

likelihood of proving that Google derives a direct financial

benefit from such activities. Perfect 10 has not met this bur-

den.

With respect to the “control” element set forth in Grokster,

Perfect 10 has not demonstrated a likelihood of showing that

Google has the legal right to stop or limit the direct infringe-

ment of third-party websites. See Grokster, 545 U.S. at 930.

Unlike Fonovisa, where by virtue of a “broad contract” with

its vendors the defendant swap meet operators had the right

to stop the vendors from selling counterfeit recordings on its

premises, Fonovisa, 76 F.3d at 263, Perfect 10 has not shown

that Google has contracts with third-party websites that

empower Google to stop or limit them from reproducing, dis-

playing, and distributing infringing copies of Perfect 10’s

15484 PERFECT 10 v. AMAZON.COM

images on the Internet. Perfect 10 does point to Google’s

AdSense agreement, which states that Google reserves “the

right to monitor and terminate partnerships with entities that

violate others’ copyright[s].” Perfect 10, 416 F. Supp. 2d at

858. However, Google’s right to terminate an AdSense part-

nership does not give Google the right to stop direct infringe-

ment by third-party websites. An infringing third-party

website can continue to reproduce, display, and distribute its

infringing copies of Perfect 10 images after its participation

in the AdSense program has ended.

[25] Nor is Google similarly situated to Napster. Napster

users infringed the plaintiffs’ reproduction and distribution

rights through their use of Napster’s proprietary music-file

sharing system. Napster, 239 F.3d at 1011-14. There, the

infringing conduct was the use of Napster’s “service to down-

load and upload copyrighted music.” Id. at 1014 (internal

quotation omitted). Because Napster had a closed system

requiring user registration, and could terminate its users’

accounts and block their access to the Napster system, Nap-

ster had the right and ability to prevent its users from engag-

ing in the infringing activity of uploading file names and

downloading Napster users’ music files through the Napster

system.14 Id. at 1023-24. By contrast, Google cannot stop any

14

Napster’s system included “Napster’s MusicShare software, available

free of charge from Napster’s Internet site, and Napster’s network servers

and server-side software.” Napster, 239 F.3d at 1011. By downloading

Napster’s MusicShare software to the user’s personal computer, and regis-

tering with the Napster system, a user could both upload and download

music files. Id. at 1011-13. If the Napster user uploaded a list of music

files stored on the user’s personal computer to the Napster system, such

music files would be automatically available to other Napster users when-

ever the user was logged on to the Napster system. Id. at 1012. In addition,

the Napster user could download music files directly from other users’

personal computers. Id. We explained the infringing conduct as “Napster

users who upload file names to the [Napster] search index for others to

copy violate plaintiffs’ distribution rights. Napster users who download

files [through the Napster system] containing copyrighted music violate

plaintiffs’ reproduction rights.” Id. at 1014.

PERFECT 10 v. AMAZON.COM 15485

of the third-party websites from reproducing, displaying, and

distributing unauthorized copies of Perfect 10’s images

because that infringing conduct takes place on the third-party

websites. Google cannot terminate those third-party websites

or block their ability to “host and serve infringing full-size

images” on the Internet. Perfect 10, 416 F. Supp. 2d at 831.

Moreover, the district court found that Google lacks the

practical ability to police the third-party websites’ infringing

conduct. Id. at 857-58. Specifically, the court found that

Google’s supervisory power is limited because “Google’s

software lacks the ability to analyze every image on the

[I]nternet, compare each image to all the other copyrighted

images that exist in the world . . . and determine whether a

certain image on the web infringes someone’s copyright.” Id.

at 858. The district court also concluded that Perfect 10’s sug-

gestions regarding measures Google could implement to pre-

vent its web crawler from indexing infringing websites and to

block access to infringing images were not workable. Id. at

858 n.25. Rather, the suggestions suffered from both “impre-

cision and overbreadth.” Id. We hold that these findings are

not clearly erroneous. Without image-recognition technology,

Google lacks the practical ability to police the infringing

activities of third-party websites. This distinguishes Google

from the defendants held liable in Napster and Fonovisa. See

Napster, 239 F.3d at 1023-24 (Napster had the ability to iden-

tify and police infringing conduct by searching its index for

song titles); Fonovisa, 76 F.3d at 262 (swap meet operator

had the ability to identify and police infringing activity by

patrolling its premises).

Perfect 10 argues that Google could manage its own opera-

tions to avoid indexing websites with infringing content and

linking to third-party infringing sites. This is a claim of con-

tributory liability, not vicarious liability. Although “the lines

between direct infringement, contributory infringement, and

vicarious liability are not clearly drawn,” Sony, 464 U.S. at

435 n.17 (internal quotation omitted), in general, contributory

15486 PERFECT 10 v. AMAZON.COM

liability is based on the defendant’s failure to stop its own

actions which facilitate third-party infringement, while vicari-

ous liability is based on the defendant’s failure to cause a

third party to stop its directly infringing activities. See, e.g.,

Ellison, 357 F.3d at 1077-78; Fonovisa, 76 F.3d at 261-64.

Google’s failure to change its operations to avoid assisting

websites to distribute their infringing content may constitute

contributory liability, see supra Section IV.A. However, this

failure is not the same as declining to exercise a right and

ability to make third-party websites stop their direct infringe-

ment. We reject Perfect 10’s efforts to blur this distinction.

[26] Because we conclude that Perfect 10 has not shown a

likelihood of establishing Google’s right and ability to stop or

limit the directly infringing conduct of third-party websites,

we agree with the district court’s conclusion that Perfect 10

“has not established a likelihood of proving the [control]

prong necessary for vicarious liability.” Perfect 10, 416 F.

Supp. 2d at 858.15

C. Digital Millennium Copyright Act

Google claims that it qualifies for the limitations on liabil-

ity set forth in title II of the DMCA, 17 U.S.C. § 512. In par-

ticular, section 512(d) limits the liability of a service provider

“for infringement of copyright by reason of the provider refer-

ring or linking users to an online location containing infring-

ing material or infringing activity, by using information

location tools, including a directory, index, reference, pointer,

or hypertext link” if the service provider meets certain

criteria. We have held that the limitations on liability con-

tained in 17 U.S.C. § 512 protect secondary infringers as well

as direct infringers. Napster, 239 F.3d at 1025.

15

Having so concluded, we need not reach Perfect 10’s argument that

Google received a direct financial benefit.

PERFECT 10 v. AMAZON.COM 15487

[27] The parties dispute whether Google meets the speci-

fied criteria. Perfect 10 claims that it sent qualifying notices

to Google and Google did not act expeditiously to remove the

infringing material. Google claims that Perfect 10’s notices

did not comply with the notice provisions of section 512 and

were not adequate to inform Google of the location of the

infringing images on the Internet or identify the underlying

copyrighted work. Google also claims that it responded to all

notices it received by investigating the webpages identified by

Perfect 10 and suppressing links to any webpages that Google

confirmed were infringing.

Because the district court determined that Perfect 10 was

unlikely to succeed on its contributory and vicarious liability

claims, it did not reach Google’s arguments under section

512. In revisiting the question of Perfect 10’s likelihood of

success on its contributory infringement claims, the district

court should also consider whether Google would likely suc-

ceed in showing that it was entitled to the limitations on

injunctive relief provided by title II of the DMCA.

V

Amazon.com

Perfect 10 claims that Amazon.com displays and distributes

Perfect 10’s copyrighted images and is also secondarily liable

for the infringements of third-party websites and Ama-

zon.com users. The district court concluded that Perfect 10

was unlikely to succeed in proving that Amazon.com was a

direct infringer, because it merely in-line linked to the thumb-

nails on Google’s servers and to the full-size images on third-

party websites.16 Perfect 10 v. Amazon, No. 05-4753, consoli-

16

Amazon.com states that it ended its relationship with Google on April

30, 2006. Perfect 10’s action for preliminary injunction against Ama-

zon.com is not moot, however, because Amazon.com has not established

“that the allegedly wrongful behavior cannot reasonably be expected to

recur.” F.T.C. v. Affordable Media, LLC, 179 F.3d 1228, 1238 (9th Cir.

1999) (internal quotation omitted).

15488 PERFECT 10 v. AMAZON.COM

dated with 04-9484 (C.D. Cal. February 21, 2006) (order

denying preliminary injunction). In addition, the district court

concluded that Perfect 10’s secondary infringement claims

against Amazon.com were likely to fail because Amazon.com

had no program analogous to AdSense, and thus did not pro-

vide any revenues to infringing sites. Id. Finally, the district

court determined that Amazon.com’s right and ability to con-

trol the infringing conduct of third-party websites was sub-

stantially less than Google’s. Id. Therefore, the district court

denied Perfect 10’s motion for a preliminary injunction

against Amazon.com. Id.

We agree that Perfect 10 has not shown a likelihood that it

would prevail on the merits of its claim that Amazon.com

directly infringed its images. Amazon.com communicates to

its users only the HTML instructions that direct the users’

browsers to Google’s computers (for thumbnail images) or to

a third party’s computer (for full-size infringing images).

Therefore, Amazon.com does not display or distribute a copy

of the thumbnails or full-size images to its users.

[28] We also agree with the district court’s conclusion that

Amazon.com does not have “the right and ability to supervise

the infringing activity” of Google or third parties. The district

court did not clearly err in concluding that Amazon.com

lacked a direct financial interest in such activities. Therefore,

Perfect 10’s claim that Amazon.com is vicariously liable for

third-party infringement is unlikely to succeed.

[29] However, the district court did not consider whether

Amazon.com had “actual knowledge that specific infringing

material is available using its system,” Napster, 239 F.3d at

1022 (emphasis in original), and could have “take[n] simple

measures to prevent further damage” to copyrighted works,

Netcom, 907 F. Supp. at 1375, yet continued to provide access

to infringing works. Perfect 10 has presented evidence that it

notified Amazon.com that it was facilitating its users’ access

to infringing material. It is disputed whether the notices gave

PERFECT 10 v. AMAZON.COM 15489

Amazon.com actual knowledge of specific infringing activi-

ties available using its system, and whether Amazon.com

could have taken reasonable and feasible steps to refrain from

providing access to such images, but failed to do so. Nor did

the district court consider whether Amazon.com is entitled to

limit its liability under title II of the DMCA. On remand, the

district court should consider Amazon.com’s potential con-

tributory liability, as well as possible limitations on the scope

of injunctive relief, in light of our rulings today.

VI

We conclude that Google’s fair use defense is likely to suc-

ceed at trial, and therefore we reverse the district court’s

determination that Google’s thumbnail versions of Perfect

10’s images likely constituted a direct infringement. The dis-

trict court also erred in its secondary liability analysis because

it failed to consider whether Google and Amazon.com knew

of infringing activities yet failed to take reasonable and feasi-

ble steps to refrain from providing access to infringing

images. Therefore we must also reverse the district court’s

holding that Perfect 10 was unlikely to succeed on the merits

of its secondary liability claims. Due to this error, the district

court did not consider whether Google and Amazon.com are

entitled to the limitations on liability set forth in title II of the

DMCA. The question whether Google and Amazon.com are

secondarily liable, and whether they can limit that liability

pursuant to title II of the DMCA, raise fact-intensive inqui-

ries, potentially requiring further fact finding, and thus can

best be resolved by the district court on remand. We therefore

remand this matter to the district court for further proceedings

consistent with this decision.

Because the district court will need to reconsider the appro-

priate scope of injunctive relief after addressing these second-

ary liability issues, we do not address the parties’ arguments

regarding the scope of the injunction issued by the district

court. For the same reason, we do not address the parties’ dis-

15490 PERFECT 10 v. AMAZON.COM

pute over whether the district court abused its discretion in

determining that Perfect 10 satisfied the irreparable harm ele-

ment of a preliminary injunction.

Therefore, we reverse the district court’s ruling and vacate

the preliminary injunction regarding Google’s use of thumb-

nail versions of Perfect 10’s images.17 We reverse the district

court’s rejection of the claims that Google and Amazon.com

are secondarily liable for infringement of Perfect 10’s full-

size images. We otherwise affirm the rulings of the district

court. We remand this matter for further proceedings consis-

tent with this opinion. Each party shall bear its own costs on

appeal. See FED. R. APP. P. 39(a)(4).

AFFIRMED IN PART; REVERSED IN PART;

REMANDED.

17

Because we vacate the injunction, Google’s motion for stay of the

injunction is moot.