Case 1: Sinclair v. Ziff Davis
The first case in the Insta-trifecta is Sinclair v. Ziff Davis, LLC, No. 1:18-cv-00790-KMW (S.D.N.Y. 2018). In this case, the plaintiff is Stephanie Sinclair, a professional photographer. She shot and owns all rights in an image of a child bride marriage in Guatemala. She made the image publicly available on her Instagram account. Mashable.com contacted Sinclair via Instagram and sought to license the image for use on its website for a whopping $50. Sinclair declined. Five days later, Mashable published an article that included the image anyway. Mashable did so by simply embedding the image directly from Sinclair’s Instagram account.
For those who don’t know—cue “OK, Boomer”—“embedding” essentially means that a website displays content that is actually hosted on a third party’s server. So here, Mashable embedded Sinclair’s content that was being hosted on Instagram’s servers to its own website. Mashable was able to do so by using Instagram’s application programming interface (API), which allows relatively easy embedding of public Instagram content to other websites.
Case 2: McGucken v. Newsweek
Meanwhile, as all of this was going on, down the proverbial (and actually in this instance, the literal) hall from the Sinclair matter, a case with strikingly similar facts was also pending: McGucken v. Newsweek, No. 1:19-cv-09617-KPF (S.D.N.Y. 2019). In the McGucken case, just as happened in Sinclair, Newsweek requested a license to use McGucken’s photograph of an “ephemeral” lake that Dr. McGucken took in Death Valley and that McGucken had posted to his public Instagram account. McGucken declined, but (as the defendant did in Sinclair) Newsweek widely published its own article that included McGucken’s work anyway, alongside Newsweek’s own advertising material. When McGucken objected to Newsweek’s use of his artwork, Newsweek took the same position as Mashable in Sinclair: that it had a valid sublicense from Instagram and thus had the right to do basically whatever it wanted with McGucken’s work. Newsweek unsurprisingly filed a motion to dismiss similar to that brought in Sinclair. The McGucken court, though, departed from the Sinclair court’s holding that simply posting content to Instagram gave anyone in the world unlimited ability to exploit that material for commercial gain.
So, at this point, we had two district courts in the same district ruling on motions to dismiss based on the exact same issue for cases involving essentially identical facts and being in direct conflict with one another. Something had to give. . . .
In the wake of the McGucken decision, the Sinclair court reconsidered its prior ruling and reinstated Sinclair’s case. The Sinclair court acknowledged that “[i]n reaching this conclusion, the [c]ourt did not give full force to the requirement that a license must convey the licensor’s ‘explicit consent’ to use a copyrighted work.” Considering McGucken, the district court reasoned that Instagram’s Platform Policy statement was susceptible to competing interpretations and was therefore insufficiently clear to “warrant dismissal of Plaintiff’s claims at this stage of litigation.” The Sinclair court eventually acknowledged that there was a gap in the chain of licensing rights at a minimum, such that granting a motion to dismiss for failure to state a claim would be inappropriate.
Case 3: Schroeder v. Volvo
Following these cases in New York, another meaningful case was filed in the Central District of California: Schroeder v. Volvo, No. 2:20-cv-05127-VAP (C.D. Cal. 2020). In this case, automotive giant Volvo followed and expanded on the Mashable/Newsweek line of thought, arguing that both artists and models license to third parties all rights in any content posted publicly to Instagram. In 2019, photographer Jack Schroeder photographed the “super bloom” of wildflowers in the desert outside Los Angeles. While at the super bloom, Schroeder took a series of photos of model Britni Sumida. Some of these photos also included a Volvo car in the scenery. Unsurprisingly, Schroeder posted the pictures publicly on Instagram.
Volvo—now owned by the Chinese multibillion-dollar multinational corporation Zhejiang Geely Holding Group Co., Ltd.—slid into Schroeder’s comments and requested that it be allowed to commercially exploit Schroeder’s photographs in its advertising campaigns. Volvo specifically wanted to use Schroeder’s work in any way with full and complete creative control solely to Volvo, in perpetuity. And what terms did Volvo offer in return? Zero. Volvo wanted to use the artwork in any way it pleased, for free. Schroeder attempted to negotiate, but Volvo ignored him and thereafter published globally an Instagram video advertisement including at least nine of Schroeder’s works—many of which included Britni Sumida’s image. Both Schroeder and Sumida filed suit, this time for copyright infringement, unfair competition, and misappropriation of likeness.
The old adage that whatever is posted on the internet stays on the internet is truer than ever. What users don’t usually know or think about is that by publicly posting on these online platforms, the users are authorizing exploitation and dissemination of their original content. Despite the gray area concerning sublicensing from social media platforms, what is clear, and what users must understand, is that by using social media and other online platforms, they are indeed entering into a license for use of their own material. These cases may potentially hold that the rights to any publicly posted content is lost to the ether forever. Especially if users seek to monetize their artistic works, they must understand the ramifications of doing so. Attorneys must so advise their clients. And attorneys should keep an eye on these cases to ascertain the extent to which rights in publicly posted material are granted, licensed, and sublicensed. To be on the safe side, clients should not only register their works, but if it is really that important to publicly post materials on social media, they should likely also post watermarked versions of the artworks clearly notifying viewers who owns the underlying artwork.
Trevor W. Barrett is a senior associate with Doniger / Burroughs in Venice, California.
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