AccelPro | Intellectual Property Law
AccelPro | Intellectual Property Law
On the Server Test and the Ninth Circuit

On the Server Test and the Ninth Circuit

With Joshua L. Simmons, Partner at Kirkland & Ellis | Interviewed by Neal Ungerleider

Listen on Apple Podcasts, Spotify and YouTube.

Welcome to AccelPro IP Law, where we provide expert interviews and coaching to accelerate your professional development. Today we’re featuring a conversation with Joshua L. Simmons, a Partner at Kirkland & Ellis.

In this interview, Simmons discusses the Server Test and the Ninth Circuit Court in the context of Perfect 10 v. Amazon, Supreme Court cases involving fair use and his path to copyright and intellectual property law. One of Simmons’ primary areas of focus in this conversation is precedents in copyright law and how they impact planning around digital content.

Listen on Apple Podcasts, Spotify and YouTube.

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Neal Ungerleider, Host: Can you give our listeners some background on Kirkland and your role there?

Joshua Simmons: Sure. So, Kirkland is a law firm with offices around the world. I sit in the New York office, in the intellectual property department, and I primarily focus on two different worlds. One is copyright and trademark litigation, across all industries. And then, in particular in the software - and now artificial intelligence industry, I suppose - patents and trade secret cases as well.

NU: I understand the Ninth Circuit reaffirmed what's become known as the server test. For listeners who are unfamiliar, can you explain what the server test is and why it's important for copyright and IP?

JS: Sure. I'll do my best. So, one of the rights that a copyright owner has in the United States is the right to public display. That means traditionally showing it in a public space. But it also includes transmitting it - from a place, to a place. And in the Ninth Circuit Court of Appeals - which is where California and sort of the Western states are, including my home state of Hawaii - they held in a case called Perfect 10 versus Amazon that in order to publicly display a work on the internet, a copy of that work needs to be on the server that you are visiting. 

So, how does this come up: If I visit a website and that website has an image, and it looks like it's on that website - but it turns out that website is actually sending me off to some other server to grab that image. In the Ninth Circuit, that is not a violation of the public display right. In contrast to that, a number of courts more recently in the Southern District of New York and in Texas, have held that's not correct. That instead “display right” means “any means of creating a display”. And so, if it looks like it's on the website, we don't care if it's on a foreign server or not.

The recent case from the Ninth Circuit, Hunley versus Instagram, reaffirmed the server test. And basically said, “Perfect 10’s the law in the Ninth Circuit Court of Appeals, and we are going to apply it here.” And so what you have is a situation, where, if you're in the Ninth Circuit, you can feel some comfort. But, there are these other courts out there. And I think a lot of creators are sort of looking for more clarity on what their rights are. And, I think a lot of service providers are looking for some clarity on whether the server test is still viable in the United States.

NU: Can you walk us through some of the connotations of the server test for creators, brands, and social media services?

JS: Before the recent cases called it into question, the advice a lot of companies would rely on would be, “I can use any photograph I want. As long as I am pointing back to where it resides on someone else's server.” So you would have someone using a photograph that appears on one website, on a different website.

And the photographers were very upset about that because they wanted to have authorization and payment for the use of their photographs. After the new cases in New York and Texas, I think many publications have cut back on that practice and have gone back to licensing photographs they're using. Or relying on fair use - which of course is still a viable doctrine.

But again, it is a lot easier for the publications to say, “Oh, I'll just embed an image. Or otherwise make it look like it's coming from my website.” When it's actually coming from somewhere else, and not seek that authorization or pay the photographer.

NU: Because of technological change, and the rise of social media - especially for images, and user modified and user generated content, like memes - how do you believe that Court's interpretations of the Copyright Act has evolved over the years?

JS: So, I usually tell clients that social media and internet use is the same rules in a different wrapper. In other words, we don't have special social media rules, but this server test kind of sounds like it's one. What the courts are trying to do is take law that was written, in some cases, in the 1970s. But in many cases, even earlier from the 1909 Act, or before that. And, they interpret it to the facts that are in front of them.

And, I think they're trying to be fair to what the law says. But there's no way that every scenario could have been interpreted, or anticipated, by Congress in the 1970s. And certainly not in the 1900s, at the turn of the century. So, I think courts are doing what they can. If you think about it from the legal realist perspective - which many professors today ascribe to - then you also have to bring in the idea that courts are trying to do justice. And when they see something that they think is unjust, they're trying to reach a result that they want to reach.

Now whether you believe in that point of view or not, I think we all want to see a just result in court. And we want to have the law be applied the same to everyone. And so I think, over time, something like the server test is an area where you really want it to be clarified, so we don't have rules that are different in New York, in Texas, versus in California.


NU: Not just for the server test, but for other precedents: What kind of things can be clarified? Could you give some examples?

JS: One thing that we've had some recent case law on that was helpful, is Copyright Fair Use. So that is a doctrine that allows, even when you've copied someone else's work, permission to do so. The classic example is: use in a book review. You're allowed to quote from a book in a book review to explain what your criticism or commentary is. That doctrine though, has been expanded beyond just the book review context to a variety of circumstances. And the courts, I think are - have been - trying to be consistent. But when you're presented with a variety of different circumstances, what applies in one circumstance may look a little different in a different circumstance.

And so, trying to rationalize what the law is has been difficult for the courts. The Supreme Court has taken two cases on fair use in the last three terms. The last one being Andy Warhol Foundation versus Goldsmith, which involved the copying of a celebrity photograph of Prince by Andy Warhol, with a license. And then, the unlicensed creation of additional Warhol prints which were kept in a back room, as it were. And then, they eventually appeared in the same magazine as the original license use was. So, the Supreme Court took that case up, just on the question of whether the purpose and character of that kind of use supports a finding of fair use.

And, it held that it did not. That's helpful. You know, that's really the Supreme Court weighing in and saying, “Here is what we think of this factor of fair use.” The question then, is: Now, how do we apply it in subsequent cases? And what's interesting about that case to me in particular, is there's nowhere you can go right now without thinking about artificial intelligence. And everyone who saw that case came down and said, “Aha! This is super critical to the artificial intelligence debate.” But, no one can decide in what way. And so, it's gonna be the application of things like that, to new technologies like artificial intelligence that will be our next 10 years, if not more.

NU: Can you highlight a few cases that have been pivotal for shaping current understandings for social media more broadly.

JS: The case that comes to my mind is a case we litigated for Fox against a company called TVEyes, which was in the Second Circuit Court of Appeals. It was also a copyright fair use case. And, the question there was: Can you record essentially all of television but then make it available as digital clips to people, to post on their social media accounts and for other uses?

And, the Second Circuit agreed with us in holding that you can't. That you can't just copy television, chop it up, and give it to people. That may seem intuitive to some. But before that decision, the Second Circuit had reached a different conclusion in a case involving Google Books - the search engine that Google provides - for books where they had copied all the books. And then the Second Circuit said, “But that's okay.” And so you're thinking to yourself, “Well, you can copy all the books. Why can't you copy all of television?” And, among the distinctions between the cases are that Google Books was a service to help you find legitimate copies of the books. That the idea there is, you search and then you go to an independent bookseller, or a commercial bookseller, or a library, or what have you. And you get the actual authorized copy of the book.

TVEye’s, on the other hand, was used to get unauthorized copies. So, I think that it was the big distinction. A secondary distinction was Google Books - at least as it is described by the Second Circuit - only provides small amounts of content. Whereas TVEye’s was providing essentially everything chopped up, but you could get anything you wanted.

And so, those two distinctions, I think, were pretty critical. But one of the things we also highlighted to the court was the importance of digital and social media to the entertainment and news industry. That is where things were going, and this was before streaming was such a big thing. So now, it's sort of clear to everyone that's where we're going. But that was a big case for us; TVEye appealed to the Supreme Court and they denied certiorari. So they, that was sort of the end of the case. I'm very proud of that decision. Both, because it was important to all of the people who make television and news. But it was really important to fair use, and remains an important precedent today.

NU: And for precedents like the server test, do you see any other parallels to it?

JS: What's interesting about the server test is it doesn't really have an international parallel. It is very tied to the text of the US Copyright Act. As I said earlier, the definition of “display” in the Copyright Act references copies. And so, that's the hinge of that opinion. Of course, the counter arguments are that the actual display right says “displayed works.”

Internationally, if you look at something like the Berne Convention - which is the major copyright convention between pretty much every country in the world - they don't use that same phraseology. They actually say “communications of the work to the public”. So they don't have “copy” in there.

It's not just display. It's any communication; that just sounds like a broader concept. You don't really see these kinds of issues come up. Which makes it interesting for those who are advocating for the server test - because yes, we have it in the Ninth Circuit, and it had been the law in the United States for a while. But it's not international. If the other countries can do it - have an internet without it - it makes you kind of wonder; what's the purpose of it here? That's of course, a policy decision. And ultimately, I think courts are trying to interpret the text of an act that was written in 1976, and before it. But, you don't really see this kind of dimension in international discussions.

NU: What challenges do you foresee in the application of the Copyright Act in coming years, when it comes to digital content?

JS: I mean, all content is digital now. I think the divide between analog and digital is now essentially null. There's a null set there because there’s so much digital content. I think a couple things are going on. One is, we aren't doing the same kind of distribution of entertainment content that we used to. So streaming; there's not a DVD of every streamed television show or movie. They're not going to be available to people who aren't subscribers to those services. What does that mean? We talked a little bit about artificial intelligence. Obviously that's the thing of the day that you can't avoid. And there is a slew of issues in copyright that surround how digital content will work there.

And then social media remains dominant. And every time you think you understand what social media is, it morphs. So, you go from a Facebook, or a Twitter as it used to be. And then you see: Okay, we really like images. So let's go to images, and then we go to videos on YouTube, Or we go to TikTok; shorter videos with dance steps, or other things that people are doing. And they're communicating to each other, but it's not the same kind of communication.

That becomes really interesting from a copyright perspective. You see these services say, “We want to help people do this, so we will license music that you can use.” And then, that way we'll keep vitality. We'll do a deal with the music industry, so they're happy, and that's great. And then the question becomes: Well, what if I wanna use other music? Is that okay? Maybe not. Now there's a licensing market for it. So I think those are the kinds of issues you'll see coming out. And then, there will be things we can't even think of. Neal, you and I are sitting here thinking we know how this is gonna play out. But I promise you, if we had the same conversation 10 years from now, there will be several things that neither of us would have ever contemplated. And, copyright law is always in the midst of those technological revolutions. So I am excited to see what happens next.


NU: Can you tell me a little bit about what led you to IP law, and copyright law as a specialty?

JS: So I have always been interested in the arts. I was in theater when I was in high school, and in college I also did computer science. So, I have a little bit of both of those worlds in me. And I took internet law - or cyber law, I think it was called in college. Which, by the way, when I made it to law school, my professors said, “That doesn't exist. We don't have phone law. Cyber law is not a thing. It's not a separate thing. It's the application of these existing doctrines to the Internet.” And you can subscribe to that, or not. But that's what they said. 

So I went to law school. I went to Columbia. And they have an amazing - and have had an amazing - IP program for many years. And I had the opportunity to study under a lot of great professors. But I wasn't quite thinking about that when I was looking for a law firm. And so when I came to Kirkland, I originally was just looking for a great trial firm. That's what I wanted to do. I wanted to be a trial lawyer. I wanted to be in court, with a jury, and explain things to them. I wasn't quite clear that it was IP I wanted t focus on until a group of lawyers came to Kirkland. And they were litigating the Associated Press' case against Shepard Fairey. Where he had created the “Obama Hope” poster; he had copied an AP image to do it. It has many things in common with the Goldsmith case that just was decided by the Supreme Court. To be clear, we won our case as well on finding no fair use. It was the biggest fair use case at that time, and I knew I wanted to work with them. So I ended up working with that group.

I liked them. They liked me. I sort of precociously said to the head of that group, Dale Cendali, “I'd love to work with you.” And she said, essentially, “Great!”. And so, I've been working with them ever since. So I moved into the IP group at Kirkland, laterally that way. And I've never looked back. I've been here for well over a decade. And we've done so many fabulous cases. Many of them are copyright cases; you know, trade secret cases, and other kinds of litigation. 

And every single one of them is interesting, and different, and hard, and fun. And the people I work with are just such delights. Whether it's the senior people, or junior lawyers, who teach me things all the time. And this is an area of law that people interact with on a daily basis. And so they have opinions about it, and we fight about it. 

I have a colleague; we have a case. I won't tell you which one. But we have a case where a colleague and I have a disagreement on what the law should be. I think my colleague agrees with me on what the law is, but not what it should be. And those are fascinating conversations to have. Even though I won't be sharing them with your audience. But it’s a great practice. And I just love doing intellectual property. The cases are fun, the clients are great, and you make a huge difference to the artistic community. And also to the big, big companies as well.

NU: And can you give an example of one time you worked together with a peer - not a boss or a supervisor - in your career, in order to figure out a tough situation or make career decisions?

JS: Oh I do that all the time. I think that trial is usually where I would go for tough decision making. So you’re in the trenches. Long days, a lot going on; big money. That's a lot of stress. And I can think of several occasions where I was working with a junior associate and for whatever reason, things happen in the course of the trial, and you say, “Okay, we've been working on it this way: this order, this approach; for a month. We're now at the trial site, and we've decided that we need to pivot. Let's rewrite the whole thing overnight.”

And you're like, “Okay, how are we gonna do that?” And you first, shake it off. You get yourself back in the headspace. And then you break it down, and you work through it together. And when you turn it around and it's awesome, and then it goes extremely well, as it did in the example I'm thinking of; it's so exciting. There's just nothing like getting together, working hard, and then succeeding. In that particular trial, we won a lot of money too. Which didn't hurt. But the associate and I who worked on that with me still think back on that moment.

I will also share that we may have had to have a late night dance party, as part of getting that work done. That was pretty important to getting ourselves back on track. But luckily there are no recordings of that particular dance party.

NU: For our listeners who already work in IP law and wanna be even better at their jobs, what career advice can you give them?

JS: So I used to say, “Read all the cases, go to bar associations, get really enmeshed in the law. That's what I do; that's what I love.” And I think if you want to do what I do, it makes a lot of sense. People come to you and they want you to know the cases off the top of your head. And they want you to understand how they all intersect with each other. 

But, it turns out that's not necessarily what everyone's connection to IP law is. So, if you are someone who loves working with a business and wants to be integrated with them, then it's really about: How do you simplify this? They don't really care that the Second Circuit said this and the Ninth Circuit said that. They want to know, “What do we do? What is the - from a business perspective, what is the risk? And what do you think we should do about that?” And that's a different set of skills. Some people want to be professors, where they aren't restricted to litigating to convince a judge, but rather, want to advocate for what they think the law should be.

And you have to be really smart to do that, and write papers. And maybe that's how you interact with the law. Maybe you want to be a judge or a copyright claims board officer. That's a whole other path. And so, what I now think - given all of these different ways you can interact with the law - is, there's something for everybody. And it's about figuring out what you find interesting, and what you're good at. And then, triangulating what is the job that lets you do those things. Because if you're happy with what you do, you're gonna be better at it. And it's gonna make your days go faster, and you'll be more successful.

So I think there's something for everybody in IP - which is one of the other joys of it. You really can do it in any number of different ways. But it would be against my own interest not to say joining Bar Associations is one of the things that, for me, was a huge benefit in my career. Something I take very seriously. I'm an officer for the American Bar Association IP section. I chair committees in the Intellectual Property Owners Association. And at INTA; the International Trademark Association. And all of those groups are such great breeding grounds for meeting people and understanding the law.

And I hope more young lawyers really take the opportunity to join them and see what it's like. I think a lot of the older lawyers know that already. When you figure out your place in these bar associations, you can make lifelong friends. At least, that's what I've done.

Listen on Apple Podcasts, Spotify and YouTube.

This AccelPro audio transcript has been edited and organized for clarity. This interview was recorded on August 9, 2023.

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AccelPro | Intellectual Property Law
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