Embed with the Devil

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.

After Mashable refused to take down the embedded content, Sinclair sued Mashable and its parent company Ziff Davis, LLC, in the Southern District of New York, alleging that Mashable’s use and display of the child bride image without her permission or compensation amounted to copyright infringement. The defendants filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief maybe granted, arguing that Instagram’s terms of use provided Mashable with an automatic sublicense to embed Sinclair’s artworks from her public Instagram account whether or not Sinclair consented or was compensated in any way. The court initially agreed and granted the motion, throwing out Sinclair’s entire case.

Judge Wood’s rationale in granting the motion was, basically, that Sinclair entered into a license with Instagram by agreeing to Instagram’s terms of use and by posting the image publicly and that the license included granting Instagram the automatic right to sublicense third parties to use the image, thus finding Mashable’s use of the image to be lawfully made per license. In doing so, the court held essentially that by virtue of Instagram’s terms of use, photography that a content creator publicly posts to Instagram may be exploited by third parties that employed Instagram’s platform to embed the work on their own website without needing any permission or express license from the user—even for profit. The logical conclusion of the court’s decision was that users who published any content on Instagram essentially granted an automatic, unlimited, perpetual license for that content to any third party throughout the world without the need for permission or compensation to the original creator or owner of the work.

So the court’s decision was a huge blow to rights holders, artists, and content creators of any kind who publish, publicize, market, or simply just display their work on Instagram. Indeed, noting that Instagram is the largest online platform on the planet for such content creators, with tens of millions of users and countless original works being publicly displayed on the platform in some way, the decision presented an enormous potential problem for creatives everywhere. The decision further marked a gigantic potential problem for users publishing original content on all social media platforms because these social media platforms or websites likely have highly similar terms of service or terms of use as Instagram, or perhaps even broader ones, and a dispute concerning alleged unauthorized use of a content creator’s work would thus likely be held to the same standard. At least at the time of this initial Sinclair decision, the negative impact on creatives posting their content online was immense.

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.

In rejecting Newsweek’s sublicense argument, Judge Failla held “User Content is owned by users and not by Instagram[,]” and she further stated that companies seeking to exploit user-generated content posted on Instagram must “[c]omply with any requirements or restrictions imposed of usage of Instagram photos and videos . . . by their respective owners[.]” The court further held that “none of [Instagram’s terms of service] expressly grants a sublicense to those who embed publicly posted content.” The court thus held that simply publicly posting content to Instagram does not grant an automatic sublicense for third parties to embed such content. Although there did exist a license between McGucken and Instagram, Judge Failla concluded that there was no evidence that Instagram had expressly sublicensed McGucken’s work to Newsweek, and at least at the pleadings stage, there was insufficient evidence of an implied license granted to embedders either. The court therefore denied Newsweek’s motion to dismiss. The court followed by denying Newsweek’s motion for reconsideration, in which Newsweek argued that there was an “express sublicense in Instagram’s Embedding Policy,” holding that the so-called Embedding Policy is not a policy at all; just simply a webpage entitled “embedding” providing instructions for developers to actually perform the embedding process. Instagram itself publicly confirmed that its terms of use do not grant any putative sublicense for third parties to exploit the works of its users simply because the works are publicly posted on Instagram.

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.

Volvo moved to dismiss on grounds similar to those asserted in the other cases and on the grounds that because a third party posted the works at issue and tagged Volvo in the post, this third party, Porch House, licensed Volvo to use the works. Volvo provided the court with no evidence that it obtained either Sumida’s or Schroeder’s consent to exploit their content or an explicit license from Instagram. In ruling on Volvo’s motion to dismiss, Judge Phillips declined to take judicial notice of exhibits submitted in support of Volvo’s motion—including screenshots of Instagram’s terms of use and other similar materials—noting that she could take judicial notice of the existence of the materials but not the purported truth of the contents; in order to consider the exhibits, she would need to convert the motion to dismiss to a motion for summary judgment, and she declined to do so at the pleadings stage. The court thus did not go into as granular an analysis of the requirements under the Instagram terms of use or sublicensing issues as the courts in the Sinclair and McGucken cases. This case, like the others, is an ongoing saga.

Unclear Conclusions

So what conclusions do we have from these cases? Not much, unfortunately. All of these cases are pending, and there has been no final opinion as to the exact scope of the terms of use or the issue of the required chain of licensing from creator to social media platform to third party or the issue of the rights actually licensable or licensed even if a complete chain did exist. The orders that we have from these cases are all on motions to dismiss, so all we essentially know is that pleading a case of infringement in the face of Instagram’s terms of use can survive a motion to dismiss for failure to state a claim upon which relief can be granted based on a license defense. What is clear, though, is that users who post publicly are indeed licensing at least the social media platform itself to exploit publicly posted works. Users must be aware of the exact terms that they are agreeing to—and what rights they are potentially licensing away for free—with the simple click of their mouse or tap of their finger.

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.

The potential exposure that Instagram affords content creators is immense. But that exposure is leveraged with at least a license for Instagram to use that content in accordance with the terms of use. We can hope to have more conclusive clarity as to what exactly that means in the near future, but the fact remains that it is a give-and-take. Users must be aware of what they are giving and what may be potentially taken as well.

Trevor W. Barrett is a senior associate with Doniger / Burroughs in Venice, California.

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