The United States District Court for the Southern District of New York recently determined that Mashable lawfully used a photojournalist’s photograph pursuant to a sublicense from Instagram. Following a motion to dismiss by defendants, Mashable and parent company, Ziff Davis, the court held no copyright infringement had occurred by embedding the Instagram photo in an article. As a result, the plaintiff’s, Stephanie Sinclair, complaint for copyright infringement was dismissed.
The dispute began in March 2016, when an article titled “10 female photojournalists with their lenses on social justice” was published. The article highlighted the work of ten female photographers whose work focuses on social justice. One of the photojournalists featured, Sinclair, shoots for National Geographic and aims to protect girls’ rights and end child marriage by documenting sensitive human rights topics internationally. With a particular focus on gender issues, Sinclair most frequently shoots the subjects of child marriage and self-immolation. At issue is one photograph in particular, titled “Child, Bride, Mother/Child Marriage in Guatemala.” Mashable initially offered Sinclair $50 for rights to this photograph for the article. When Sinclair declined, Mashable embedded the image from Sinclair’s official Instagram account. Shortly thereafter, Sinclair filed a lawsuit for copyright infringement.
In including Sinclair’s Instagram photo in their article, Mashable used a process called “embedding.” This technical process allows a website coder to incorporate content that is located on a third-party’s server into the coder’s website. When users visit said website, the user’s Internet browser retrieves the embedded content from the third-party server and displays it on the website. Thus, the user sees the embedded content on the website, despite the fact of it actually being hosted on a third-party’s server. Instagram uses an “application programming interface,” or “API,” to enable users to access and share content posted to “public” accounts, such as Sinclair’s. Here, Mashable used the API to embed Sinclair’s photograph from her Instagram account to their article.
Previously, the nature of this lawsuit revolved around the server test. This doctrine focuses on the fact that a publication which uses a photo-embed code never stores the photo on its own servers or transmits it to the user. Rather, the embed code instructs the user’s Internet browser how to download the image directly from another site. In this case, the other site was Instagram, and particular, Sinclair’s official, public account. A majority of courts have found such use of third-party content to not constitute copyright infringement because the publisher is not distributing or displaying the content to users. Other courts, including the Southern District of New York, have found infringement in these instances claiming the technical details of how the photograph reached the user’s browser does not overshadow the fact that the news websites caused the photo to appear on user’s browsers without permission from the copyright holder. Problematically, under the server test, those who evaded liability for direct infringement could still be held liable for indirect copyright infringement.
Instead of relying on the server test, Mashable argued Sinclair granted a license to Instagram to use her photo when she uploaded it. In addition, Instagram’s terms of service state that it has the right to sub-license the photo to others. A copyright owner who permits a licensee to grant sublicenses cannot bring an infringement suit against a sublicensee, so long as the licensee and sublicensee have acted within the terms of their license and sublicense, respectively. Indeed, a sublicensee cannot acquire valid rights to copyrighted works if the sublicensor had no right to issue a sublicense in the first place.
By using Instagram’s embedding service, Mashable was lawfully sublicensing the photo from Instagram. The court agreed with this argument in finding no copyright infringement had occurred. This licensing-based reasoning clearly distinguishes between authorized and unauthorized social media uploads. Importantly, through a site like Instagram, which is automatically granted a license to content uploaded to its platform, the user who uploads content may disable any third-party use of the same by marking the post as private. Sinclair appears to have done just that as her photograph no longer appears in Mashable’s article. Moreover, any sublicense arising out of an Instagram-posted photo is limited to the embedding tool. Thus, if Mashable, or another entity, sought to use the photo for another purpose, it would require a separate license from Sinclair.