Photographer’s Claim of Copyright Infringement Over Use of Embedded Instagram Photo Still Alive

User beware – you may be held to a social media platform’s terms of use – or not. Most people are aware that by using a social media platform, they give up some rights to the content that they share. What rights and to what extent depends on the platform and the specific terms of use.

A district court in the Sinclair case in April 2020 found no copyright infringement by the website Mashable, where it used one of photographer Sinclair’s Instagram photos in an article, even after an unsuccessful attempt to license the photo directly from Sinclair. Sinclair v. Ziff Davis, LLC, and Mashable, Inc., No. 1:18-CV-00790 (S.D.N.Y. April 13, 2020). The April 2020 decision concluded that Instagram’s terms granted Mashable a sublicense to use the application programming interface (API) to embed the photograph in its website.

That decision, however, was in conflict with other similar cases and upon Plaintiff’s Motion for Reconsideration, the Court in Sinclair held in June 2020 that the pleadings were insufficient to show that Instagram granted Mashable a sublicense to embed Sinclair’s photograph on its website. In order for a license to be valid, it must convey the licensor’s “explicit consent” to use a copyrighted work. Given that Instagram’s terms are not clear, the Court held dismissal of Plaintiff’s case at this phase was not warranted.

Plaintiff Sinclair had a “public” Instagram account and posted a copy of the subject photograph. Defendant Mashable, a digital media and entertainment platform, published on its website an article about female photographers that embedded the publicly posted photo from Sinclair’s Instagram account. Notably, prior to using the Instagram photo, an employee from Mashable contacted Sinclair about licensing the same photo to be used in the article. Sinclair declined Mashable’s US$50 offer to license the use of the photo. Sinclair later demanded that Mashable remove the embedded photograph from their website and demanded compensation. Mashable refused. Sinclair then sued for copyright infringement.

Sinclair argued that Mashable infringed her copyright in the photo since it did not have permission to use the photo. Mashable contended that it had a valid sublicense from Instagram to use the photo and therefore did not infringe Sinclair’s copyright. The court sided with Mashable.

By creating an Instagram account, Sinclair was bound to Instagram’s Terms of Use, which grant Instagram the right to sublicense content that is posted and made public by the user. Instagram then exercised that right by granting Mashable a sublicense to display the photo through sharing the embedded photo. Instagram utilises API which allows users to share public content posted by other users.

The court held that Sinclair’s right to license the photo directly and Instagram’s right as a licensee to sublicense the photo to Mashable were independent from one another.

Sinclair also contended that the authorisation of Instagram to sublicense the photo was invalid because of the complex and interconnected documents which established the rights. While the court agreed that Instagram could make their terms of service and policies more concise and accessible, they were under no obligation to do so.

Lastly, Sinclair argued that it was unfair of Instagram to force a professional photographer to choose between keeping her work “private” on one of the most popular photo sharing apps or to post publicly which would allow Instagram a sublicense to her photographs to users like Mashable. While the court noted this dilemma was very real, the court held that Sinclair had already made her choice by opting to post the photo publicly.

The court also noted that because it held that Instagram had granted Mashable a valid license to display Sinclair’s photo, it did not have to reach the question of unsettled law in the circuit of whether embedding an image is considered a ‘display’ capable of infringing a copyright in an image. That issue was addressed on a motion for summary judgment in Goldman v. Breitbart News Network LLC et al., 1:17-CV-03144 (S.D.N.Y. February 15, 2018), where the court came to the exact opposite conclusion.

In the Goldman case, a different Judge in the same jurisdiction held that the use of embedded Tweets on news media websites featuring a picture of Tom Brady did infringe the copyright of the photographer. The decision for partial summary judgment in favor of the photographer in the Goldman case was highly criticised, and the case ultimately settled outside of court.

In a June 2020 decision in McGucken v. Newsweek LLC, the Court denied a Motion to Dismiss, where the defendant Newsweek was also relying on Instagram’s sublicense to use the API to embed the Plaintiff’s Photograph on their website. (McGucken v. Newsweek LLC 19-CV-9617, 2020 WL 2836427, at *4–5 (S.D.N.Y. June 1, 2020).)

The Court in McGucken held that while Instagram’s Terms could be interpreted to grant a valid sublicense, they do not expressly grant
a sublicense. Given the limited review at the Motion to Dismiss phase, the Court could not find Newsweek acted pursuant to a sublicense from Instagram.

Jury is still out on whether use of a public Instagram photo as embedded in an article on a third-party website is covered by Instagram’s Terms of Use. Nor should anyone assume that Instagram’s terms grant a blank check regarding the use of publicly posted content.

By Susan Kayser and Terrance Roberts

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