The Saga of Mashable and Newsweek: Is Instagram Embedding A New Legal Battleground?

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Source: from publicly available court records

Yesterday, I introduced a rapidly growing copyright issue surrounding the prevalent practice of embedding in the context of the publication industry. As I alluded in the post, New York judges are likely to wrap their heads around this novel question for the foreseeable future. I cited the Mashable case to make a point that a different S.D.N.Y. judge is revisiting the same issue in a separate case involving Newsweek, potentially creating legal uncertainties moving forward. So I thought it makes sense to dig deeper into this string of cases to get a nuanced understanding of this thorny issue. So let's start.

   

Mashable wanted to use a photograph taken by Stephanie Sinclair, a professional photographer known for exploring gender and human rights issues through her photographic works. The photograph in question was an image titled "Child, Bride, Mother/Child Marriage in Guatemala" in which she owned the copyright throughout the United States. (See Sinclair's photojournalistic work with the New York Times.) Mashable was running a story about female photographers and contacted Sinclair to obtain a license in connection with the image for $50. Sinclair refused the offer, but Mashable proceeded to use the photograph by embedding Sinclair's Instagram post featuring the exact same image. Sinclair sued Mashable and Ziff Davis, its parent company, for copyright infringement.

So what was the outcome? The judge dismissed the case by granting the Defendants' (Mashable and Ziff Davis) motion to dismiss under Rule 12(b)(6) - failure to state a claim upon which relief can be granted. She held that Sinclair has no basis for claiming copyright infringement because she consented to Instagram's Terms of Use. She pointed to a provision which stated that the user "grants[s] to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content that [the user] post[s] on [Instagram]". Sinclair v. Ziff Davis, 454 F. Supp. 3d 342, 345 (S.D.N.Y. 2020). Since Sinclair voluntarily uploaded the photograph to Instagram in her public (emphasis mine) account, she effectively forfeited her copyright in connection with the image in the post and "agreed to allow Mashable, as Instagram's sublicensee, to embed [Sinclair's photograph]" on its website. Id. So the case was ultimately decided on Mashable's contract-based license theory.

In contrast, in the pending Newsweek case, another judge is not so ready to throw the case out of her window at the motion-to-dismiss stage of the lawsuit. The factual outline in Newsweek is not different from what happened in Mashable. In her Order, the judge characterized Newsweek's license theory defense as being "straightforward" but "relatively novel" in acknowledgement of the subtleties posed by the embedding issue. She then articulated that it is unclear whether the sublicense between the Instagram and Newsweek, not between the photographer and Instagram, can be expressly established solely based on the license theory. She further noted that "the Court's role on a Rule 12(b)(6) motion is to draw all reasonable inferences in Plaintiff's (the photographer) favor". The judge also found the fair use defense deficient, which worked perfectly in the Wozniacki case.

It is in this context that Instagram commented on the sublicense debate by issuing its statement. Instagram reads its Terms of Use to mean that "our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content, if a license is required by law." So what's the lesson here? Do not make your own assumptions. In Newsweek, the fact that Newsweek did not respond to the photographer's cease-and-desist letter can lead to a finding of willfulness, which entitles the photographer to an award of statutory damages, which is quite high! 17 U.S.C. § 504, in relevant parts, provides that "the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000" per work (emphasis mine) if infringement was committed willfully. Let's exercise extra caution when you embed the post publicly shared on Instagram next time until the New York courts or, hopefully the Second Circuit, give you a clear guideline.