Same Court, Same Issue, Different Result? Instagram and Embedding Round 2

by | Jun 5, 2020 | Legal

(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.)

Author’s Note: As you know, ASMP has been heavily involved in the Sinclair v. Ziff-Davis case from last month, and drafted a letter on behalf of the major visual creator groups asking for changes. We also provided more guidance here. You can see an update on what Instagram said regarding this just in the last few hours right here

Not two months after the Sinclair decision, the United States District Court for the Southern District of New York addressed the same issue in a case against the well-known publication, Newsweek LLC. The Sinclair case opened up the door to a result where the court found that an Instagram user who has a profile set as public grants a de facto sublicense to any IG platform approved user who want to display the photo using Instagram’s embedding technology known as API.

This was concerning holding, creating confusion amongst photographers and intellectual property attorneys. This is particularly problematic for photographers and other modern creators who use Instagram as a major platform to showcase their work by setting their profiles as public.

Nonetheless, the court in Sinclair disregarded the copyright infringement claim altogether, focusing on the case as a contract evaluation, finding Instagram’s Terms of Use and Privacy Policy clearly grant other user’s a valid sublicense to use photo’s posted on public Instagram profiles.


Elliot McGucken v. Newsweek LLC

Now, the same court has determined that despite the prior finding in Sinclair, it is possible no sublicense is actually created between a company (Newsweek) and Instagram when the company decides to use another’s photo from their public profile without their permission or compensation. How could this be?

The Background

Once the plaintiff, Elliot McGucken, filed suit against Newsweek LLC for copyright infringement, Newsweek filed a motion to dismiss McGucken’s claim for three reasons: (1) because they have a valid sublicense to use McGucken’s photo through Instagram’s Terms of Service and Privacy Policy; (2) because the use of McGucken’s photo was fair use as a matter of law; and, (3) to dismiss McGucken’s claims against Newsweek for contributory and vicarious infringement. The court denied the first two arguments of defendant, Newsweek, favoring the plaintiff and granted defendant’s motion in part only on the third issue.

First and foremost, even though the court recognizes that this exact issue was raised and answered by Judge Kimba Woods in Sinclair, the court takes their analysis of this issue in a different direction. Like Sinclair, the court acknowledges Instagram’s Terms of Use does in fact grant Instagram a license to sublicense McGucken’s posted photos and that the Privacy Policy clearly provides other users can use or share another’s content if that content is publicly available through a public profile. So, how does the court find against the defendant on this issue? The court finds that it is possible, as McGucken claims in the complaint, that there is no evidence before the court of the actual existence of a sublicense between Newsweek and Instagram.

The court states that none of Instagram’s policies nor terms explicitly grant a sublicense, just that Instagram has the ability to grant it. In addition, the court found it also unlikely that there was any existence of an implied sublicense that was granted to Newsweek. Upon these findings, the court could not find for the defendant on this issue at the motion to dismiss stage. At this point in the case, the court must take all reasonable inferences at this stage in the plaintiff’s favor. With that said, the court could not deny McGucken’s argument that no valid sublicense ever existed.

Additionally, the court looked at the defendant’s argument that McGucken’s complaint should be dismissed because Newsweek’s use of his photo constituted fair use as a matter of law. Fair use is an affirmative defense to copyright infringement. Elements considered under this type of defense are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work;  (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. The court found that the first and fourth factors favored the plaintiff, McGucken, while the second and third factors were neutral to either side. Therefore, the court denied the defendant’s motion to dismiss on this issue, favoring McGucken.


Why is Sinclair Different?

The short answer is it really isn’t. The issue is the same, it was simply evaluated in a different way. The Southern District of New York acknowledged in both Sinclair and McGucken that Instagram had a valid license to use and share the photos posted by users who elect to set their profiles as public. In addition, both opinions assume the existence of a contract that allows Instagram to grant sublicenses to other users who use Instagram’s API technology to embed another user’s content.

However, the McGucken decision makes a distinction between it and the Sinclair holding that leaves hope for photographers using Instagram as a public platform. This court opinion, although providing no express disapproval toward the Sinclair holding, suggested the lack of existence of an actual sublicense, suggesting a sublicense is not automatically granted to those who want to share content using this technology. The court seems to point out that, although Instagram has the ability to provide sublicenses, that it is not an automatic transaction of sorts.

How these two decisions will play out in the following months is up in the air. However, the fact that two decisions in the same court within a two-month period came to differing conclusions on the same question hopefully suggests some light will be shed on this convoluted legal issue in a higher court in the coming months in order to give photographers and other Instagram users a clear indication on how to protect their content from future infringement.


Featured Image: Brett Sayles