June 9, 2020
Authored and Edited by Rosie Norwood-Kelly; Margaret A. Esquenet
The U.S. District Court for the Southern District of New York has once again addressed the viability of copyright infringement claims arising out of the use of embedded social media content obtained from Instagram. In a surprise ruling, the court refused to dismiss a plaintiff photographer’s claims based on the court’s interpretation of Instagram’s Terms of Use.
In Sinclair v. Ziff Davis, a case decided in April, the SDNY dismissed a photographer’s copyright claims over Ziff Davis’ (d/b/a Mashable) use of an embedded Instagram photo. There, the court relied on Instagram’s Terms of Use which plaintiff agreed to when creating an account on the social media platform. Specifically, the court found that by agreeing to the Terms of Use plaintiff granted Instagram “a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content that you post on or through [Instagram], subject to [Instagram’s] Privacy Policy.” According to the Privacy Policy, uploaded “public” content can be used by others as embedded linked content through Instagram’s embedding API. Accordingly, the court held, Instagram had lawfully sublicensed plaintiff’s photo to Mashable.
Only two months after Sinclair, the SDNY addressed these issues again in McGucken v. Newsweek. Photographer Elliot McGucken posted a photograph on Instagram of an ephemeral lake that appeared in the notoriously dry area of California known as Death Valley. The next day, Newsweek published an article about the lake and embedded Plaintiff’s Instagram photo as part of the article without the photographer’s permission. McGucken registered the photo with the Copyright Office and sent a cease and desist letter to Newsweek but the article remained live and the photo embedded so McGucken filed suit.
Relying on the Sinclair v. Ziff Davis decision, Newsweek moved to dismiss arguing 1) plaintiff’s “public posting of the Photograph on Instagram granted Newsweek a sublicense to use the Photograph via Instagram’s embedding feature, and [2) Newsweek’s] use of the Photograph constituted fair use as a matter of law.” In addressing Newsweek’s first contention, the McGucken court reflected on its previous decision in Sinclair v. Ziff Davis. Although the court agreed with the conclusion that Instagram has the right to sublicense publicly posted photographs to other users, it determined that in this case there was no evidence of a sublicense between Instagram and Newsweek, no evidence of an implied license, and no term or policy established by Instagram expressly granting a sublicense to those who embed publicly posted content. Acknowledging the possibility that Instagram's Terms of Use provides a sublicense for embedded photos, the court held that there was not enough evidence to dismiss the suit.
Turning to Newsweek’s second argument for dismissal, the court addressed whether Newsweek’s actions constituted fair use and found that it was not. As required, the court analyzed the four factors laid out in 17 U.S.C. § 107: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use upon the potential market for or value of the copyrighted work. With respect to the first facts, the court held that “the mere addition of some token commentary is not enough to transform the use of the photograph when that photograph is not itself the focus of the article.” Second, taking note of the creative expression required by the photograph and its prior publication in a local news outlet, the court found the second factor was neutral. Third, the court found that although the entire photograph was used, this factor was also neutral because of the difficulty of using less than the entirety of the photograph. Fourth, the court relied on the statement of the Supreme Court that there is a presumption of market harm “when a commercial use amounts to mere duplication of the entirety of an original” to find this factor weighed in favor of McGucken. The court thus denied Newsweek’s motion to dismiss on the basis of fair use.
Recognizing the issues posed by the varied interpretations of its Terms of Use, Instagram recently attempted to clarify. A spokesperson stated that “[w]hile our terms allow us to grant a sub-license, we do not grant one for our embeds API . . . [o]ur platform policies require third parties to have the necessary rights from applicable rights holders.” In a world where people unceremoniously embed Instagram posts on their own platforms, the company indicates this practice may have some unwelcome copyright infringement consequences.
The case is McGucken v. Newsweek LLC et al, No. 1:19-cv-09617-KPF (S.D.N.Y. June 1, 2020).
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