Instagram: copyright free-for-all?
While most of the world has been stuck in quarantine during the COVID-19 outbreak, there have been a number of key developments regarding copyright infringement in New York regarding the use of images posted to the Facebook-owned social media platform Instagram.
In April 2020, the US District Court for the Southern District of New York (SDNY) held in Sinclair v Davis that Instagram can sublicense images posted to its platform, and allowed another platform, Mashable, to use such an image in an article against the photographer’s wishes.
Two months later, in June, the same court seemed to depart from Sinclair. In McGucken v Newsweek the court found that Newsweek had not provided sufficient evidence of its sublicence from Instagram, and denied Newsweek’s motion to dismiss a photographer’s copyright infringement suit.
One week later, Instagram itself jumped into the fray and stated that its policies require obtaining permission from the poster for a separate licence to use an image. Taken together, these developments point to a trend in protecting artists who post their work on social media, a group which has historically struggled to bring suit against infringing corporations.
Case details
The SDNY in Sinclair took a contractual approach to copyright infringement by analysing Instagram’s terms and conditions for users of its platform and dismissed a photographer’s copyright infringement suit. Artist Stephanie Sinclair brought suit against Mashable and internet publisher Ziff Davis for their use of one of her pictures from her Instagram account, posted in 2016, in a Mashable article.
Mashable used a common process called “embedding” to incorporate Sinclair’s photograph into its article. Embedding allows an image that is located on a third party’s server (here, Instagram) into the coder’s (here, Mashable’s) website. As a result of this process, the user sees the embedded content on Mashable’s website, even though the content is actually hosted on Instagram’s server.
The court determined that Instagram has the right to sublicense images on its platform and thus there was no copyright infringement of Sinclair’s photo. The judge explained that: “because Sinclair uploaded the photograph to Instagram and designated it as ‘public’ she agreed to allow Mashable, as Instagram’s sublicensee, to embed the photograph in its website”.
The court did not consider the legal ramifications of whether “embedding” a photo constitutes “display” capable of infringement, choosing instead to rest its decision solely on the existence of a sublicence. In other words, according to the Sinclair decision, publicly posting to Instagram automatically grants a sublicence to those who want to use your content.
It is worth noting that prior to using the image, Mashable offered Sinclair $50 for her photo, which she declined. While the court acknowledged the dilemma of posting publicly on Instagram versus making art in obscurity, it offered no solution. Instead it found that Sinclair had already made her choice by choosing to create an Instagram account, and that it could not release her from the agreement she made.
The judge explained that Instagram reserves “a fully-paid and royalty-free, transferable, sub-licensable” right to photos on its service. This case held social media users to a platform’s terms of use, elevating those terms above any copyright claims the user may have.
Further issues
This issue of rights when embedding a photo in a third party site was again considered in the McGucken v Newsweek decision issued this month, also in the SDNY. Plaintiff Elliot McGucken, a photographer, posted his image of a lake in Death Valley, California, to his Instagram account. Defendant Newsweek then embedded McGucken’s photograph in its online article about the lake, for which McGucken neither gave his permission nor was compensated.
McGucken subsequently registered the work with the US Copyright Office and sent a cease and desist letter to Newsweek, to no effect.
While the court extensively reviewed Instagram’s policies as they were described in Sinclair, it refused to dismiss the case based on the Sinclair licensing theory. Instead, the court noted that while Instagram’s various terms and policies foresee the possibility of entities using embedding to show other users’ content, none of those policies “expressly grants a sublicence to those who embed publicly posted content”.
Where Sinclair had seemingly implied a sublicence from Instagram to entities that embedded the images, the judge in McGucken specifically considered whether Instagram either expressly or impliedly provided a sublicence to the embedding entity. The court did, however, note that while it may be possible to read that Instagram’s policies extend to embedding content, on a motion to dismiss the court must “draw all reasonable inferences in Plaintiff’s favour”.
Three days after the McGucken decision, the Sinclair decision was hollowed out by Instagram’s statement to news website Ars Technica on June 4, when it claimed in an article titled “Instagram just threw users of its embedding API under the bus” that: “Instagram does not provide users of its embedding application programming interface (API) a copyright licence to display embedded images on other websites.”
It further stated that “while our terms allow us to grant a sublicence . . . our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a licence to share this content, if a licence is required by law”.
In short, Instagram has chosen to protect its users who directly post on its platform, and in so doing contradicts the Sinclair court’s analysis of Instagram’s terms of service. Where the court had previously found that posting to Instagram automatically grants a sublicence from Instagram to other users, the social media platform is now saying that, actually, such a sublicence does not exist when a third party seeks to embed a photo on its own site.
Those familiar with the discussion of embedding from a social media website will know that the Ninth Circuit employs the “server test” in its analysis, and might argue that McGucken still permits third parties to argue in defence that they are not infringing because their site is not hosting the photograph/work.
The server test was considered and rejected by a previous SDNY decision, Goldman v Breitbart News Network, which in 2018 held that a social media website, in this case Twitter, could be a vehicle for infringement when news companies posted an embedded, copyrighted picture.
The court found that there could be liability for infringement even if the website was not hosting the image on its own site. In 2016, photographer Justin Goldman posted a multimedia messaging app Snapchat Story of American footballer Tom Brady, walking with the general manager of the Boston Celtics basketball team; a number of people put the photograph on Twitter, including several news sites which embedded the tweets to illustrate their stories about Brady helping the Celtics.
The court held that embedding tweets on the defendants’ websites violated Goldman’s exclusive display right; the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) did not shield them.
In Goldman, the court explained: “the plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act”.
Given that this decision was made at the trial court level, it may be time for the US Court of Appeals for the Second Circuit to weigh in on the discussion.
These cases did not touch on other copyright issues involving Instagram, such as right of publicity, unfair competition, false sponsorship or affiliation, or trademark infringement, but limited their holdings to a matter of licensing. The jurisprudence in this area is still developing as we collectively deal with a greater move to host everything online in the age of COVID-19, and as social media come to dominate the commercial space.
It would be prudent for anyone considering embedding content from a social media platform to ask for the owner’s permission first, or risk opening yourself up to a lawsuit tipped in favour of the artist.
Kimberly Almazan is special counsel in the litigation and arbitration team at international law firm Withers. She can be reached at kimberly.almazan@withersworldwide.com
Lauren Bursey is an associate in the litigation and arbitration team at Withers. She can be reached at lauren.bursey@withersworldwide.com
