Does Posting To Instagram Create an Unlimited Sublicense? Sinclair v. Ziff Davis and What To Do Now

by | Apr 15, 2020 | Copyright, Legal, News

(MAJOR UPDATE – December 17, 2021 – Instagram today announced that users can now choose if they wish to allow their images to be embedded on third-party websites. To learn more, check out ASMP’s announcement here.)

On April 13, 2020, an opinion and order in a copyright infringement case was published by a court in the Southern District of New York that has rocked the photography industry and reignited the debate of social platforms such as Instagram as an outlet for photographers to showcase their work. Let’s take a look at what this opinion actually said, what it means, and where we go from here.

The Background

The internet is often a double-edged sword for photographers and visual artists who need to be where their clients are, stay visible, but still try to protect their works. If you are a photographer or other creator, Instagram (“IG”) is not merely an additional outlet for your work, it may have already supplanted your website, Facebook, and other platforms.

Here are some IG facts:

  • Over 1 Billion Users (with 500 million + active each day). (Source)
  • More than 100 million photos are uploaded to IG every day. (Source)
  • 63% of Americans use IG daily. (Source)

Simply put, if you want your photos to be seen, and you want to get clients, you need to be on IG. But take the case of significant American photojournalist Stephanie Sinclair, who posted images on her website but also on IG in her public profile. After seeing the image, the online publication Mashable wanted to include it in a story about female photojournalists who focus on social justice issues, as Sinclair does through her non-profit Too Young to Wed and her work under the same name on her website.

Mashable then reached out to Sinclair to license her work and offered her the sum of $50 for using it on their website. Sinclair declined, and then Mashable… used it anyway. The page it was ultimately posted to is rife with ads and other revenue-generating vehicles, all of which went to Mashable, and none to the ten photographers whose work was the driving interest and source of traffic to that page.

So that seems clear, right? Sinclair owns her copyright, and had since the moment of creation. A third-party used the work (and we will leave fair-use issues aside as they were not brought up in this matter by the judge), and then used the work after specifically approaching Sinclair and having their offer to license be turned down. But Mashable did not post it directly to their website. They used the “embedding” feature of the IG platform, which means that they inserted code into their site that showed the IG post in their site, but without the data of the image actually residing on their servers. We all know what embedding looks like… we see it everywhere. But is this ok, and is this infringement?

The Opinion

Sinclair filed a copyright infringement suit in the Southern District of New York, claiming that Mashable infringed the exclusive right of reproduction and display when the image was featured on the Mashable post, via the embedding feature. The court held that this was NOT an infringement. That is concerning for anyone who posts to IG. The opinion discusses a few reasons the judge thinks this is accurate.

Reason #1 :: The Profile Was Public

In the opinion, the judge first keys in on the fact that Sinclair’s IG profile was “public.” Presumably, if her IG profile was private, it would have been considered an infringement (if it even could have occurred technologically). But a private IG profile for a photojournalist or photographer is defeating the whole point. The work of visual artists is meant to be seen.

Reason #2 :: Embedding an Image is A Valid Exercise of the IG API

The way that embedding an IG post works is based on an application programming interface (“API”) provided by IG that “enables users to access and share content posted by other users whose accounts are set to ‘public’ mode.” (Opinion at 3). If someone who follows IG’s policies uses this API, then the image is embedded in the site. Essentially, this is a window through the Mashable article to the actual IG site where the post and images reside. Mashable followed the IG Platform Policy, therefore, embedding was just fine.

Reason #3 :: Mashable Had A Valid Sublicense From Instagram To Display The Work

The judge further held that because Sinclair posted the image to her IG profile, and because to obtain her IG account she had to agree to the IG “Terms of Service” (“TOS”) that she granted a de facto sublicense to Mashable. How does this work?

  • First, when you sign up for IG, you have to agree to their TOS. That TOS currently says in part:

“Instead, when you share, post, or upload content that is covered by intellectual property rights (like photos or videos) on or in connection with our Service, you hereby grant to us a non-exclusive, royalty-free, transferable, sub-licensable, worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings).”

IG Terms of Service as of April 15, 2020 (Emphasis Added)

(The TOS at the time of this case looked slightly different, but essentially said the same thing. We will discuss TOS in a different article.)

  • Second, because you agree to give IG a “sub-licensable [] worldwide license” then that means that IG can “host, use, distribute … and publicly perform or display” your images on the site.
  • Third, Mashable has to follow the Platform Policy set forth by IG to use the API to embed the posts.

All of those things occurred. Therefore, the judge said:

     “Plaintiff granted Instagram the right to sublicense the Photograph, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph. By creating an Instagram account, Plaintiff agreed to Instagram’s Terms of Use. … Plaintiff concedes that she is bound by the Terms of Use.

     The Terms of Use state that, by posting content to Instagram, the user “grant[s] to 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.” (Terms of Use, Rights § 1.) Pursuant to Instagram’s Privacy Policy (“Privacy Policy”), Instagram users designate their accounts as “private” or “public,” and can change these privacy settings whenever they wish. All content that users upload and designate as “public” is searchable by the public and subject to use by others via Instagram’s API. The API enables its users to embed publicly-posted content in their websites. Thus, because Plaintiff 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.”

(Opinion at 4-5) (Emphasis Added)

What This Means

This judge in this court has said that any user who follows the rules of the Platform Policy (which includes publishers like Mashable) can “embed” an IG post and it is not copyright infringement. Important to note here: this is a District Court (lowest level of courts in the Federal System) who was ruling on a “Motion for Summary Judgment” which means there was no trial, no jury, etc. This was done as a “pre-trial motion.” Sinclair may appeal this decision. The issues related to Terms of Service, Platform Policies, and other intertwined legal articles will be litigated and closely examined. There are some bars in the Platform Policy about what types of uses a user can employ the images for. Language seems to indicate that straight commercial use would be disallowed, but editorial use would be acceptable, with a gray area in the middle. The various policies that make up the IG TOS / Platform Policy are certainly more complicated than necessary, and should be made significantly clearer.

BUT, there may be a solution outside of the courts. Embedding is not a requirement of social media platforms. In fact, YouTube offers users an option to restrict embedding. What this means is that if you click on a YouTube video that does not allow embedding, then it takes you to the YouTube site and will not play in a different webpage. This is a simple solution to this issue. This is what I on behalf of ASMP and others will be asking Instagram to do in a letter we are currently drafting to be sent this week. This is a common-sense solution to a potentially discouraging ruling.

What To Do Now?

So that brings us to this: what should a photographer or visual artist do now? As it stands, embedding by a user who follows the policies is allowed and does not constitute copyright infringement according to this court.

Posting on social media platforms has long been a balance between business opportunity and risk. Here, that risk has been explained and supported by a court. As Sinclair said in her court filings, a photographer should not have to decide between ‘remaining in “private mode” on one of the most popular public photo sharing platforms in the world,’ and granting Instagram a right to sublicense her photographs to users like Mashable.”

It is a difficult choice. But a choice nonetheless. Do you believe that IG will create more business for you than any possible detriment based on something like this happening? Then keep your IG profile public. Do you believe otherwise? Then you should decide whether or not to make your profile private.

We will be fighting to help solve the issues by asking IG to allow a “No Embed” option for its users, and closely tracking Sinclair’s court case and possible appeals. But until then, this court decision has judicially approved this action.

The bottom line is that this is not an “open season” to steal IG photos, but it does leave open a door for use that the creator might not intend or be aware of. We will keep you updated on new developments.