Framing the Question: How Does Kelly v. Arriba Soft Advance the Framing Debate?

by Hillel I. Parness[1]

“Framing” is the term commonly used to refer to the practice of drawing the content of a Web site into another, so that the content of the imported site is surrounded by the importing site’s content.  The propriety of framing has been bandied about the Internet and the courts for the past several years.  While no published decision has made any definitive statements about the legality of framing, there are strong indications that framing can form the basis for intellectual property violations.  Until recently, two basic theories had emerged, one in trademark and one in copyright: (i) the framing site’s content and/or trademarks in proximity to the framed site’s content and/or trademarks can create a likelihood of confusion among relevant consumers as to the source or sponsorship of either the framing or framed site’s goods or services, and (ii) the placement of one Web site within a frame comprised of portions of another Web site can create an unlicensed derivative work, in violation of the owner of the framed site’s exclusive rights under the Copyright Act.

In February 2002 the Ninth Circuit issued a decision in Kelly v. Arriba Soft.[2]  While this case deals mainly with questions of fair use with regard to photographs residing on the Internet, it also touches upon framing, and a number of commentators were quick to predict the sweeping impact this decision may have on the practices of linking and framing, one stating that “[i]t’s basically going to do away with linking or framing without permission.”[3]  To the extent that Kelly discusses framing, it suggests a third theory of liability based on a violation of the display right of the framed Web site’s owner, a theory that may not be dependent on the particular activity of framing.  For this reason and others, discussed below, the impact of Kelly on the framing debate may be difficult to predict, and the death of framing may be greatly exaggerated.

Theory 1: Framing Creates a Likelihood of Confusion and Dilution

In February 1997 a group of publishers brought an action against Total News, Inc. alleging that the www.totalnews.com Web site was framing their sites, and thus violating their rights in trademark and copyright:

When a user of totalnews.com “clicks” on one of those famous trademarks with the computer mouse, the user accesses a Plaintiff’s corresponding website. . . . Plaintiff’s site, however, does not then fill the screen as it would had the user accessed Plaintiff’s site either directly or by means of a hyperlink from a website that does not “frame” linked sites. Nor does Plaintiff’s URL appear at the top of the screen as it normally would. Instead, part of Plaintiff’s site is inserted in a window designed by Defendants to occupy only a portion of the screen. Masking part of Plaintiff’s site is the totalnews.com “frame,” including, inter alia, the “Total News” logo, totalnews.com URL, and advertisements that others have purchased from Defendants.[4]

Among the 9 counts in the complaint, the plaintiffs alleged that the framing itself (separate and apart from the use of plaintiffs’ trademarks as hyperlink buttons) constituted federal trademark infringement:

In addition, the manner in which Defendants cause Plaintiffs’ websites to appear within a window on Defendants’ site, together with those new and competing advertisements, and under the totalnews.com URL, is likely to cause confusion and mistake as to the source or origin of the content and advertising depicted at Defendants’ website.[5]

When the Total News case was settled several months later, Total News and its co-defendants agreed

permanently not to directly or indirectly cause any Plaintiff’s website to appear on a  user’s computer screen with any material (e.g. Universal Resource Locator (URL), text, graphics, pop-up window, audio, video or other) supplied by or Associated with Defendants or any third party, such as an  advertiser, acting in privity with Defendants are under Defendants’ direct or indirect control; in particular, Defendants agree permanently to cease the practice of “framing” Plaintiffs’ websites as that practice  is described in the complaint in this case.[6]

While the Total News dispute did not result in a decision, it laid out a theory of trademark liability that has been recognized subsequently by a number of other courts.  As the District of Massachusetts noted, “a visitor to [a framing site] could easily have the impression that they were actually at [the framed] site.”[7]  In a similar vein, in Hard Rock Cafe International, Inc. v. Morton, the District Court for the Southern District of New York found that the framing of a site that sold goods violated a provision of a license agreement prohibiting the use of a particular trademark in connection with the sale of merchandise.[8]  The court explained:

Through framing, the Hard Rock Hotel Mark and the Tunes site are combined together into a single visual presentation and the Hard Rock Hotel Mark is used to promote the sale of CDs by Tunes. Because the Tunes material appears as a window within the original linking page, it is not clear to the computer user that she or he has left the Hard Rock Hotel web site. The domain name appearing at the top of the computer screen, which indicates the location of the user in the World Wide Web, continues to indicate the domain name of Hard Rock Hotel, not that of Tunes.[9]

The court went on to order the defendant to stop framing the particular Web site at issue.[10]  While the court did not assign or consider trademark liability for framing, by finding that it violated a trademark licensing agreement, the court appeared to recognize that under certain circumstances framing can give rise to consumer confusion and trademark liability.

Theory 2: Framing Creates Unlicensed Derivative Works

The plaintiffs in Total News also alleged that Total News’s framing of their sites constituted copyright infringement:

In order to provide their totalnews.com service, Defendants have caused Plaintiffs’ sites to appear within a window displayed as part of totalnews.com, surrounded and partially obscured by advertising and other material unrelated to the original content of Plaintiffs’ sites.

….

Defendants infringed all of the registered material described above by republishing this material, or otherwise making it available without Plaintiffs’ consent, at the totalnews.com website on February 14, and/or 17, 1997.

….

Defendants’ conduct violates several of the exclusive rights under 17 U.S.C. §106 belonging to the Plaintiffs as owners of the copyrights in their respective content and websites, which are the subject of copyright registrations that Plaintiffs have filed or now are in the process of filing with the Register of Copyrights.[11]

The generalized language in the Total News complaint presages the two theories of copyright liability for framing that have since begun to emerge in decisions rendered in the Ninth Circuit.

Section 106 of the Copyright Act lists the rights that are exclusive to copyright holders.  These include the right “to reproduce the copyrighted work,”[12] “to prepare derivative works based upon the copyrighted work,”[13] and “to display the copyrighted work publicly.”[14]

The Act defines “derivative work” as follows:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.  A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.”[15]

Adding further insight into the intention behind the derivative work right, the House of Representatives report prior to the implementation of the Act states that “to constitute a violation of section 106(2), the infringing work must incorporate a portion of the copyrighted work in some form; for example, a detailed commentary on a work or a programmatic musical composition inspired by a novel would not normally constitute infringements under this clause.”[16]

In Futuredontics, Inc. v. Applied Anagramatics Inc. the District Court for the Central District of California considered a claim that one site’s framing of another violated the framed sites’ right to create derivative works of its copyrighted material.[17]  In 1997 the court denied plaintiff’s motion for a preliminary injunction on the grounds that precedent in the Ninth Circuit indicated that plaintiff was unlikely to succeed on the merits of its claim.[18]  In 1998, however, the court considered defendant’s motion to dismiss the action, and again issued a denial, finding that plaintiff was not foreclosed “from establishing that AAI’s web page incorporates Futuredontic’s web page in some ‘concrete or permanent form’ or that AAI’s framed link duplicates or recasts Plaintiff’s web page,” concluding that “Plaintiff’s Third Claim for Relief sufficiently alleges a claim for copyright infringement.”[19]  Unfortunately for some, the Futuredontics case did not yield any further decisions.[20]

Through its two decisions, one of which was affirmed by the Court of Appeals, the District Court held that while Futuredontics had made out a claim for copyright infringement, the court was not confident that Futuredontics would succeed on the facts of this particular case.  Both decisions rendered by the district court were tied to Mirage Editions, Inc. v. Albuquerque A.R.T. Co., a 1988 Ninth Circuit decision in which the court held that gluing cards bearing artistic works to ceramic tiles creates an infringing derivative work.[21]  In the first Futuredontics decision the district court suggested that because images on computer screens do not have the permanence of cards glued to tiles, Futuredontics was unlikely to succeed on the merits.[22]  In the second decision, however, the court found that the Mirage decision and others “do not conclusively determine whether Defendants’ frame page constitutes a derivative work.”[23]

Futuredontics remains the only reported decision to consider whether framing can create infringing derivative works.  Presumably, other courts will eventually take up the issue, as well, and look to this case as a starting point.  Interestingly, Mirage is not universally accepted.  Rather, it is at the center of a split between the Ninth and Seventh Circuits over whether artwork glued to ceramic tiles is a derivative work of the original artwork.  Mirage was followed by a District of Alabama decision in 1993, which was affirmed by the Ninth Circuit.  In 1996, the Northern District of Illinois, later affirmed by the Seventh Circuit, held that art glued to tiles, in fact, is not a derivative work, writing that “[t]he court chooses to focus on the art work itself, not on the material on which the work was mounted or the ultimate use to which the tiles ‘lend themselves.’  The mode of affixation of the art work onto the mat or tile is insignificant.”[24]

Theory 3: Framing Violates the Public Display Right

In Futuredontics, having found that plaintiff had properly pled copyright infringement based on a theory of derivative work, the court decided that it “need not consider Plaintiff’s alternative claim that the complaint alleges copyright infringement based on unauthorized reproduction.”[25]  This theme was taken up again by the Ninth Circuit in 2002 in Kelly v. Arriba Soft.

Kelly involved an Internet “visual search engine” that delivered results in the form of “thumbnail”-size and full-size graphic images.  The plaintiff, a photographer, claimed that the search engine violated his copyrights in his photographs when the search engine delivered images of his works to users of the search engine.[26]  The district court held that delivery of both the thumbnails and the full-size photographs were fair uses of the original works.[27]  The Ninth Circuit reversed the District Court as to the full-size photographs, finding that although the “thumbnails would not be a substitute for the full-size images because when the thumbnails are enlarged, they lose their clarity,”[28] the display of the full-size images created a service directly competing with that being provided by Kelly, and which would “result in substantial adverse effects to the potential markets for Kelly’s original works.”[29]

Along with its decision regarding the bounds of fair use, the Court of Appeals considered whether framing can create copyright liability.  As the court explained, the display of search results involved some framing:

From January 1999 to June 1999, clicking on the thumbnail produced the “Images Attributes” page.  This page contained the original full-sized image imported directly from the originating web site, along with text describing the size of the image, a link to the originating web site, the Arriba banner, and Arriba advertising.  The process of importing an image from another web site is called inline linking.  The image imported from another web site is displayed as though it is part of the current web page, surrounded by the current web page’s text and advertising.  As a result, although the image in Arriba’s Image Attributes page was directly from the originating web site, and not copied onto Arriba’s site, the user typically would not realize that the image actually resided on another web site.

From July 1999 until sometime after August 2000 ….  The window in the forefront contained the full-sized image, imported directly from the originating web site.  Underneath that was another window displaying the originating web page.  This technique is known as framing.  The image from a second web site is viewed within a frame that is pulled into the primary site’s web page.”[30]

Ultimately, the court held that “[a]lthough Arriba does not download Kelly’s images to its own server, but, rather, imports them directly from other web sites, … By allowing the public to view Kelly’s copyrighted works while visiting Arriba’s web site, Arriba created a public display of Kelly’s works.”[31]  The court explained its reasoning further:

Arriba actively participated in displaying Kelly’s images by trolling the web, finding Kelly’s images, and then having its program inline link and frame those images within its own web site.  Without this program, users would not have been able to view Kelly’s images within the context of Arriba’s site.  Arriba acted as more than a direct passive conduit of the images by establishing a direct link to the copyrighted images.  Therefore Arriba is liable for publicly displaying Kelly’s copyrighted images without his permission.”[32]

When considering whether the delivery of the full-size images was a fair use of the original images, the court again returned to framing – “Placing the images in a ‘frame’… is not enough to create new expression or meaning for the images,”[33] concluding that “the doctrine of fair use does not sanction Arriba’s display of Kelly’s images through the inline linking or framing processes that puts Kelly’s original images within the context of Arriba’s web page.”[34]

Conclusion/Questions

Both Kelly and Futuredontics will no doubt play central roles in future debates and analysis regarding the legality of various methods of framing, and will raise questions such as the following:

Is Kelly “Supposed” to Be a Framing Decision?

If one treats Kelly as the first (or one of the first) decisions to opine on the legal propriety of framing, the absence of any mention of the derivative work theory, first raised in the Ninth Circuit in Futuredontics, is striking.  It is very likely that the California district court and the Ninth Circuit simply played the hands they were dealt – it may be that in Futuredontics the parties raised the derivative work right, while in Kelly they only dealt with the display right, and the courts felt limited by the pleadings to entertain alternative theories.[35]  Nevertheless it is curious that the Kelly court does not even cite to Futuredontics, which is widely recognized as the only prior decision to consider whether framing can create copyright liability.

Furthermore, because the Ninth Circuit limited its inquiry to the public display right, one might question whether the reasoning of Kelly has anything to do with framing per se.  What the Ninth Circuit found, essentially, was that the visual search engine was displaying plaintiff’s original works in an unauthorized manner.  Presumably this would apply whether a portion of another’s Web site was placed in a frame, or the elements were incorporated into the allegedly infringing Web site.

Finally, some of the questions Kelly raises may be explained by the fact that the “framing” that was at issue was not the traditional framing of one site within another, but a variation referred to by the court as “inline linking and framing,” where select portions of the target Web site were pulled in for use in the search results.  This may further distance Kelly from the core of the framing debate.

How Might Other Courts Rule on the Derivative Work Issue?

As noted above, both decisions in Futuredontics relied heavily on Ninth Circuit precedent, notably the Mirage art-on-tiles decision, which is directly at odds with at least one other circuit’s analysis of the issue.  Even if they follow the derivative work path laid out in Futuredontics, it is not clear that other courts would necessarily adopt the Ninth Circuit’s uncertainty over whether composite Web sites can be derivative works.  Courts that, like the Ninth Circuit, have interpreted the derivative work right broadly so as to include things such as art glued to tiles, may similarly find that temporary electronic displays also qualify.  Courts following the Seventh Circuit’s reasoning might conclude that if the act of permanently gluing paper to tiles does not create an infringing derivative work, then the transient placement of one Web site within the confines of another certainly does not violate the derivative work right.  On the other hand, courts on either side of the split might focus (as the Illinois district court did) on the role the framing site plays when it surrounds the original “work” – the framed site.  They may have to decide whether the framing site is an electronic stand-in for a tile – acting merely as a method of display – or whether the framing site adds content to the original work, creating a new, infringing composite derivative work, however ephemeral that composite derivative may be.

Alternatively, courts might pick up where Kelly left off, and realize that they need not reach the derivative work issue if the act of framing violates one of the other exclusive rights, such as reproduction or display.  The ultimate legacy of the Kelly decision may be to recognize that, while interesting from an academic point of view, from a practical standpoint framing need not involve an analysis of the thorny derivative works issue, when other, more basic, exclusive rights have been violated, as well.


[1]               © 2002 Hillel I. Parness.  Mr. Parness, J.D. Columbia 1995, recently joined the New York office of Brown Raysman Millstein Felder & Steiner LLP, where he focuses on litigation and intellectual property matters.  He can be reached at hparness@brownraysman.com, and reprints of his prior articles are available at www.hiplaw.com.

[2]               Kelly v. Arriba Soft Corp., No. 00-55521, __ F.3d __, 2002 WL 181351 (9th Cir. Feb. 6, 2002).

[3]               Brenda Sandburg, “Bigger Not Better With Copyrighted Web Photos” (The Recorder Feb. 7, 2002) (quoting Annette Hurst, Esq.) (available at www.law.com).

[4]               Complaint, Washington Post Co. v. Total News, Inc., 97 Civ. 1190 (Feb. 20, 1997) (available at http://legal.web.aol.com/decisions/dlip/washcomp.html) ¶ 30.

[5]               Id. ¶ 52.

[6]               Stipulation and Order of Settlement and Dismissal, Washington Post Co. v. Total News, Inc., 97 Civ. 1190 (June 5, 1997) (available at http://legal.web.aol.com/decisions/dlip/washorde.html) ¶ 3.

[7]               Digital Equip. Corp. v. Altavista Tech., Inc., 960 F. Supp. 456, 461 n. 12 (D. Mass. 1997).

[8]               Revised Opinion and Order, Hard Rock Cafe Int’l, Inc. v. Morton, No. 97 Civ. 9483, 1999 WL 717995 at *24 (Sept. 9, 1999).

[9]               Id. at *25.

[10]             Id. at *27.

[11]             Total News Complaint ¶¶ 69, 70, 72.

[12]             17 U.S.C. § 106(1).

[13]             Id. § 106(2).

[14]             Id. § 106(5).

[15]             Id. § 101.

[16]             H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (Sept. 3, 1976).

[17]             45 U.S.P.Q.2d 2005 (C.D. Cal. 1997 & 1998), 1997 decision aff’d, 152 F.3d 925 (9th Cir. 1998).

[18]             Id. at 2006 (citing Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988)).

[19]             Id. at 2010.

[20]             The parties, presumably, resolved their differences.  Today, Defendant’s site (www.1800dentist.com) continues to frame sites other than plaintiff’s, and plaintiff’s site (www.futuredontics.com) now bears defendant’s 1-800-DENTIST trademark and a notice that the mark is being used under a license agreement with defendant.

[21]             Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (9th Cir. 1988).

[22]             Futuredontics, 45 U.S.P.Q.2d at 2006.

[23]             Id. at 2010.

[24]             Lee v. Deck the Walls, Inc., 925 F. Supp. 576, 580 (N.D. Ill. 1996), aff’d, Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997).  In its affirmance, the Seventh Circuit expressly recognized the conflict with the Ninth Circuit.  125 F.3d at 583 n. 2.

[25]             Futuredontics, 45 U.S.P.Q.2d at 2010 n. 3.

[26]             Kelly v. Arriba Soft, 77 F. Supp. 2d 1116, 1116 (C.D. Cal. 1999), aff’d in part , reversed in part, and remanded, No. 00-55521, __ F.3d __, 2002 WL 181351 (9th Cir. Feb. 6, 2002).

[27]             Id. at 1121.

[28]             Kelly v. Arriba Soft, 2002 WL 181351 *6.

[29]             Id., 2002 WL 181351 *10.

[30]             Id., 2002 WL 181351 *1-2.

[31]             Id., 2002 WL 181351 *8.

[32]             Id., 2002 WL 181351 *9.

[33]             Id.

[34]             Id., 2002 WL 181351 *10.

[35]             Similarly, the court did not address the reproduction right, apparently because the process of inline linking allowed Arriba Soft to display Kelly’s images without copying them to its servers.