The case has been one to watch in the entertainment industry, as it has been unclear where the Second Circuit has stood with respect to whether the use of embedded content taken from social media sites by entertainment companies is an infringement of a copyright owner’s exclusive right to display content. “Embedding” refers to displaying web content indirectly by linking to another website where the content is hosted. In the case, Sinclair, a professional photographer, posted an image on her “public” social media account. In March 2016, Mashable reached out to Sinclair for a license to use the photograph with the intention to highlight her work in an article about women photographers. Sinclair denied the license, and later that month Mashable published the article and included the photograph as embedded content from Instagram.
Sinclair filed a copyright infringement lawsuit against Mashable alleging that Mashable failed to obtain a license to use the copyrighted photograph. Mashable moved to dismiss the action on the grounds that it had obtained a valid sublicense from Instagram, and therefore did not infringe on Sinclair’s copyright.
The court granted Mashable’s motion to dismiss, finding that there was no copyright infringement, and that Mashable had in fact been granted a valid sublicense from Instagram to use Sinclair’s photograph, which she had posted to Instagram as “public.”
The decision seems to turn on the fact that Sinclair agreed to Instagram’s terms of use upon signing up with Instagram. The terms of use granted 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.” The privacy policy contained language stating that content marked as “public” could be used via Instagram’s API (which allows third parties to embed linked content). Thus, by posting the photograph on Instagram’s platform as “public”, the plaintiff had authorized Instagram to grant a sublicense to those using Instagram’s API; in this case, Mashable. The court highlighted this language and found that Instagram had lawfully sublicensed Sinclair’s photo to Mashable.
Takeaway
The Second Circuit found that Instagram’s terms of service created a sub-licensable license to photos posted publicly to its platform, and that Mashable used the plaintiff’s photograph pursuant to a valid sublicense from Instagram. This case illustrates the importance of reviewing a web platform’s terms of service, especially prior to using or embedding third-party owned content posted to that platform. Further, users should consider the circuit that they are in; while the Second Circuit ruled in Mashable’s favor in this case, other circuits may find that such conduct infringes on the intellectual property rights of others.
Copyright owners should also think carefully about whether to publicly post their copyrighted material on social media platforms, as doing so may result in others being able to share and use the copyrighted work without any legal recourse available to the owner.
Client Alert 2020-278
