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New York District Court Holds Instagram Granted Embedder a Valid Sublicense

By George Wukoson and Jim Rosenfeld

Publishers often draw on social media posts as a source of news. Whether they are a politician's tweets, celebrity selfies or eyewitness video footage of unfolding events, the posts can provide timely first-hand information and are sometimes news in their own right. The copyright owners of such content have occasionally asserted copyright claims against the media based on the unauthorized use of their posts (or textual or audiovisual material within those posts). Media entities faced with these claims have frequently asserted that (1) their use is permitted under the fair use doctrine, or (2) that, by embedding the posts, they are not exercising any rights belonging to the Copyright Owner.

(Whether "embedding" an image is a "display" within the meaning of Section 106 of the Copyright Act, 17 U.S.C. § 106(5), is a legal issue on which courts have disagreed. The Ninth Circuit, the Seventh Circuit and numerous lower courts have held that embedding and the similar concepts of "framing" and "in-line linking" are not exercises of the public display right, applying what is sometimes called the "server test" for copyright infringement liability. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159–61 (9th Cir. 2007); Flava Works, Inc. v. Gunter, 689 F.3d 754, 756 (7th Cir. 2012); Live Face on Web, LLC v. Biblio Holdings LLC, No. 15 Civ. 4848 (NRB), 2016 WL 4766344, at *4 (S.D.N.Y. Sept. 13, 2016) (Buchwald, J.); Grady v. Iacullo, No. 13-CV-00624-RM-KMT, 2016 WL 1559134, at *5 (D. Colo. Apr. 18, 2016); Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, No. 13 C 4664, 2014 WL 3368893, at *5 (N.D. Ill. July 8, 2014); MyPlayCity, Inc. v. Conduit Ltd., No. 10 Civ. 1615(CM), 2012 WL 1107648, at *12 (S.D.N.Y. Mar. 30, 2012), adhered to on recons., 2012 WL 2929392 (S.D.N.Y. July 18, 2012). A Southern District decision rejected the server test in Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 494-96 (S.D.N.Y. 2018), 18-CV-790 (KMW), holding that several news organizations displayed a photograph when they embedded tweets containing the photograph on their websites. Goldman settled before it was reviewed by the Second Circuit, and the split remains unresolved.)

A recent decision by Judge Kimba M. Wood in the United States District Court for the Southern District of New York addresses a third potential defense to copyright claims arising from the use of social media content: that the copyright owner licensed the content to the social media platform, which in turn granted the media website a valid sublicense to use the image. Sinclair v. Ziff Davis, No. 18-cv-790 (S.D.N.Y. April 13, 2020).

Background

The Plaintiff, Stephanie Sinclair, is an American photographer whose work has been published in The New York Times, National Geographic and various other publications. Some of her work has spotlighted gender and human rights issues, including child marriage. Sinclair maintains a publicly searchable website and an Instagram account, both displaying her work to the public.

The photograph at issue in this case was titled "Child, Bride, Mother/Child Marriage in Guatemala" (the "Photograph"). Sinclair posted a cropped copy of the Photograph on her Instagram account, which is set to public.

The Defendants were Ziff Davis, LLC and Mashable, Inc. Ziff Davis is a digital media company that owns various brands and titles. Its subsidiary Mashable owns and operates the website Mashable.com.

A Mashable employee contacted Sinclair in March 2016 seeking to license the Photograph, but the parties never came to terms. On March 16, 2016, Mashable published an article titled "10 female photojournalists with their lenses on social justice" on its site. The article included ten photographs, including an embedded copy of the Photograph. Sinclair alleges that the publication infringes her copyright in the Photograph.

Analysis

Judge Wood's decision provides a succinct but persuasive analysis of the sublicensing issue, and then knocks out plaintiff's counter-arguments seriatim.

The Court pointed out that "[a] copyright owner who permits a licensee to grant sublicences cannot bring an infringement suit against a sublicensee, so long as both licensee and sublicensee act, respectively, within the terms of their license and sublicense," and it proceeded to identify a valid license to Instagram and sublicense to Mashable within the terms of Instagram's Terms of Use. By creating an Instagram account, Plaintiff agreed to the Terms of Use, as she conceded. The Terms provided that the user "grant[s] to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license" to content that the user posts, subject to Instagram's Privacy Policy. The Privacy Policy allowed users to designate their accounts as public or private. If – as here – the setting was public, the content could be used by others by means of Instagram's API. As Instagram stated in its Platform Policy, it provides its API to allow website publisher users and others to "discover content, get digital rights to media, and share media using web embeds" subject to compliance with users' privacy settings and other restrictions. (Instagram's Terms of Use, Privacy Policy, and Platform Policy are collectively its "Policies.") Mashable used the API to embed Sinclair's Instagram post of the Photograph on its site, and was granted a valid sublicense under Instagram's Policies.

The Court rejected a number of Plaintiff's counter-arguments. First, Mashable's unsuccessful effort to obtain a license from Sinclair had no bearing on the validity of its sublicense, given that the Terms of Use provided a valid sublicense.

Second, Plaintiff argued that the Court could not take judicial notice of the meaning of Instagram's agreements and policies, i.e. the Terms of Use and Privacy Policy; the Court replied that while it took notice of the agreements and policies, it did not take notice of their meaning, which was a question of law for the Court.

Third, Plaintiff claimed that Mashable was not an intended beneficiary of the agreements, but the Court ruled it need not be one, as Plaintiff had authorized Instagram to grant a sublicense to anyone who properly used its API.

Fourth, Plaintiff complained that the sublicense was "created by a series of complex, interconnected documents"; the Court ruled, to the contrary, that it was obligated under California law (which applied to the agreements) to treat the different agreements as one integrated agreement where, as here, one incorporated others by reference.

Fifth, the Court rejected the contention that the relevant agreements were "circular," "incomprehensible" and "contradictory," finding them comprehensible and clear for purposes of the sublicensing issue.

Sixth, Plaintiff contended that Instagram violated the terms of its license by granting a sublicense to "sell" the Photograph; but the Court held it had only granted a sublicense to embed the Photograph.

Last, the Court rejected the policy argument that it was unfair for Instagram to force a photographer to choose between remaining in private mode on "one of the most popular public photo sharing platforms in the world" and granting other users a sublicense, holding that the Terms of Use trumped this concern:

Unquestionably, Instagram's dominance of photograph- and video-sharing social media, coupled with the expansive transfer of rights that Instagram demands from its users, means that Plaintiff's dilemma is a real one. But by posting the Photograph to her public Instagram account, Plaintiff made her choice. This Court cannot release her from the agreement she made.

Sinclair, 2020 WL 18747841, at *4

The Court also held that Plaintiff had failed to state a claim against Mashable's parent company, Ziff Davis. It found no "substantial continuing involvement" by Ziff Davis with respect to the allegedly infringing activity, nor any other reason to impose liability on Ziff Davis.

On April 27, 2020, Sinclair moved for reconsideration, arguing that there was no valid license of the Photograph to Instagram or any valid sublicense Mashable, and that Ziff Davis should be held liable as well based on its "control" over Mashable.

Commentary

In considering the impact of the Sinclair decision on their practices, publishers should consider three qualifications. First, the Court's analysis is rooted in Instagram's Policies and only applies to them; other platforms' agreements may or may not have similar provisions and will be interpreted based on their own language. Second, the Court's analysis is further limited to one particular version of Instagram's Policies – those governing Mashable's interaction with Instagram's API in this case. Terms of use and other platform policies change frequently, and indeed the Court here noted that Instagram's policies have been updated since then – although not, in the authors' view, in any way that would change the analysis.

Third, in cases where the copyright owner is not the person who posted the images, owners may allege that they never licensed the image to Instagram, and thus any subsequent sublicense is invalid; that may raise issues as to whether the owner had otherwise granted a license, either express or implied. Subject to these caveats, the Sinclair decision provides publishers with a viable basis to claim rights to publish social media content.

George Wukoson, Director of Legal at Ziff Davis, Jim Rosenfeld and Lance Koonce, partners at Davis Wright Tremaine LLP, and Max Hensley, a former associate of Davis Wright, represented Mashable and Ziff Davis. Brian Hoben of Hoben Law and James Bartolomei of the Duncan Firm, P.A. represented Sinclair.

 
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