Software Law Bulletin
November 1998

Without comment, a California federal judge has dismissed, with prejudice, copyright infringement allegations against defendants who maintained links that eventually led to a Swedish web site where allegedly infringing photographs were displayed.  Bernstein v. J.C. Penney, Inc., No. 98-2958-R (CD CA, dismissal Sept. 22, 1998).  Index terms: copyrights, linking, Internet.

This is believed to be the first decision on copyright liability for linking to other sites that display infringing materials.


Plaintiff Gary Bernstein is a professional photographer who has taken pictures of actress Elizabeth Taylor.  Defendants include Elizabeth Arden, Inc., which manufactures perfume under the trademark PASSION and has retained Taylor as a spokesperson for the product; J.C. Penney, Inc., which sells PASSION; and Internet Movie Database Ltd. (IMDB), which maintains an Internet site devoted to information about movies and movie stars.

Bernstein alleges that a Swedish university web site has published two photos of Taylor that infringe his copyrights.  He says people who visited J.C. Penney's web site could, through a series of links through the Penney and IMDG sites, eventually reach the Swedish site, referred to as "SUNET." He seeks to hold Arden liable because its product PASSION is advertised on the J.C. Penney web site.  Arden moved for dismissal.

' Bizarre and Unprecedented'

In its supporting brief, Arden says Bernstein's suit is based on a "bizarre and unprecedented theory" that, if accepted, would destroy the Internet as a means of worldwide communication.

Arden cannot be held liable for the content of a third party's web site, such as Penney's, just because its product is advertised on the site, Arden maintains.  But even if such liability could somehow be imposed, Arden says, J.C. Penney could still not be accountable for infringement that occurs on a site that is several links removed.

Arden recites the chain of links that a user would need to follow from Penney's site to reach the allegedly infringing photographs: from Penney's main home page to (1) "Elizabeth Taylor's Passion," a part of the Penney's site, to (2) "Biography," a part of the "Passion" site containing information about Taylor's life, to (3) "work on screen," which took the user to (4) the IMDB
movie database site, a completely separate site with no connection to Penney's, to (5) "FTP," a link on the IMDB site that took the user to the SUNET site, from where he or she could (6) access the infringing photographs.

According to Arden, Bernstein's theory would require web site owners to not only screen the sites they link to, but also all of the sites that those "second tier" sites link to, and so on.  Rather than take on this impossible task, or face the risk of litigation, Arden argues, web site owners will simply stop linking, which would destroy the web's usefulness.  Even search engines like
Alta Vista and Lycos would not be able to function, the company avers.  In any case, Arden says, J.C. Penney disconnected the link to the IMDB site as soon as it was notified of the alleged infringement taking place on SUNET.

Bernstein's Response

Bernstein insists that J.C. Penney deliberately designed the web site so that visitors would be able to see the two disputed images of Elizabeth Taylor, and so that J.C. Penney and Arden would benefit from their use without paying a royalty.  The defendants had previously licensed one of the images, Bernstein contends, raising an inference that they were trying to cash in on the images without paying for them.

The cases cited by Arden involved Internet service providers and web site hosts who could not be expected to know about or control all the content on their systems, Bernstein maintained.  On the other hand, says the plaintiff, the defendants in this case did have the ability to control what users could access through the J.C. Penney website.

The defendants also argue that linking is protected by the First Amendment, and that linking has "substantial non-infringing uses," but these contentions are irrelevant, Bernstein maintains.  The complaint involves allegations of copyright and trademark infringement, which are not protected activity, he argues.  And the "substantial non-infringing use" defense is fact-intensive and
best resolved on either summary judgment motions or at trial, says Bernstein.

Arden is represented by Roger R. Myers, Karren M. Shorofsky and Noel C. Johnson of Steinhart & Falconer in San Francisco.  Bernstein is represented by Patrick J. Grannan of Kramer, Kaslow & Grannan in Long Beach, CA, and David E. Wheeler of the Law Offices of David E. Wheeler in Los Angeles.