By Marla Katz.

In the first half of 2020, the global spread of COVID-19 prompted a change in the business models of artists, galleries, museums, and the like. Artists and institutions of art and cultural heritage pivoted online, substituting in-the-flesh experience with constant virtual traffic and viewership.[1] Although some art consumers are now craving in-the-flesh experience, virtual exhibitions, auctions, and sales initiated through websites and social media are keeping the art market alive through e-commerce.

Despite the current “life line” effect of social media in supporting visual artists, Sinclair v. Ziff Davis, LLC suggests that the nuances of broad platform policies and the competing interests of users have posed challenges for the courts. In mid-April of 2020, the Southern District of New York dismissed the case filed by professional photojournalist Stephanie Sinclair against online magazine Mashable, Inc. and its parent company Ziff Davis, LLC.[2] Sinclair alleged that Mashable and Ziff Davis infringed her copyright by embedding a photograph, previously posted to her public Instagram account, in an article without her consent.[3] The Southern District held that the conduct did not constitute copyright infringement because Sinclair agreed to Instagram’s Terms of Use (“TOU”), which it interpreted to allow Instagram to sublicense public content to third-parties, such as Mashable, for the purposes of embedding.

A few weeks after Sinclair was decided, the Southern District reached an opposite conclusion in a case with a similar fact pattern, McGucken v. Newsweek, LLC. On June 1, 2020, the court found that, while Instagram’s TOU grant Instagram a sub-licensable license to public content, there was no evidence of a sublicense between Newsweek and Instagram.

The Southern District judges presiding over Sinclair and McGucken were inconsistent in their conclusions as to Instagram’s TOU and Instagram’s licensing of public content to third parties. As a result, the Southern District left the public wondering how Instagram users—artists in particular—should reconcile the need to pivot online with the lack of protection afforded to them when posting public content. The Southern District left the public wondering until June 24, 2020, when Judge Kimba M. Wood, presiding over Sinclair, granted Sinclair’s Motion for Reconsideration and revised her previous holding. Judge Wood held that the Sinclair pleadings do not contain sufficient evidence to find a sublicense between Mashable and Instagram.

Sinclair v. Ziff Davis, LLC

Facts

Stephanie Sinclair is a professional photojournalist based in Hudson Valley, New York, known for documenting gender and human rights issues, such as female genital mutilation, self-immolation, and child marriage.[4] Sinclair regularly licenses her photos to clients for use in publications and websites including National Geographic, The New York Times, Time, and Newsweek. To this end, Sinclair owns and operates a publicly-searchable website to exhibit her photos and invite offers from potential licensors. The licensing fees that she collects constitute a sizable portion of her earnings.[5]

Stephanie Sinclair by Guido van Nispen in Amsterdam (2018) / CC BY (https://creativecommons.org/licenses/by/2.0). Source: Wikimedia Commons.

On March 11, 2016, an employee of Mashable emailed Sinclair, seeking her permission to use one of her copyrighted photographs—Child, Bride, Mother/Child Marriage in Guatemala (“the Photograph”)—in an article to be published to www.mashable.com. The article highlighted female photojournalists committed to documenting social justice or the lack thereof. Sinclair replied, asking about the compensation that Mashable proposed in exchange for a license to use her Photograph. The employee replied that Mashable would offer $50, but Sinclair did not respond that she accepted or rejected.

On March 16, 2016, Mashable published the article, embedding Sinclair’s Photograph, in spite of the lack of a confirmed license. Sinclair did not know that Mashable embedded her Photograph until around December 20, 2017, when she discovered her Photograph in “10 Female Photojournalists with Their Lenses on Social Justice.” About a month later, she demanded that Ziff Davis remove her Photograph from the article and compensate her for licensing rights. Initially, Ziff Davis refused to remove her Photograph from the article and refused to compensate Sinclair.[6]

In late January of 2018, Sinclair brought suit against Mashable and Ziff Davis, alleging infringement of her copyright and violation of her exclusive rights of reproduction and distribution.[7] Sinclair argued that the use of her Photograph in the article “damag[ed] [her] reputation as purveyor of high-quality images to high-end, issue driven clients and partners, and weaken[ed] [her] bargaining position in future licensing agreements.”[8] Sinclair requested that the court issue an injunction against Defendants’ infringement. Sinclair also requested that the court grant her actual damages and Defendants’ profits, gains, or advantages resulting from the infringement or, alternatively, certain statutory damages per infringement.

Discussion

Under the Copyright Act of 1976, copyright protection extends to “original works of authorship fixed in any tangible medium of expression,” including pictorial and graphic works. Sinclair registered Child, Bride, Mother with the United States Copyright Office. As the owner of copyright in the Photograph, Sinclair had exclusive rights with respect to reproduction and distribution of the Photograph to the public through sale or other transfer of ownership.[9] According to the Southern District, however, Sinclair lost those exclusive rights upon posting her Photograph to her public Instagram account.

In activating an Instagram account, a user agrees to Instagram’s TOU, which state that the user grants Instagram a transferable and sub-licensable license to public content. In other words, the user grants Instagram the right to sublicense public content to third parties. The license is subject to Instagram’s Privacy Policy, pursuant to which the user designates their accounts as either “private” or “public.” Content posted to a public account is subject to third-party use through Instagram’s Application Programming Interface (“API”), which enables users to embed such content in external websites.[10] It is notable that Instagram’s TOU and Privacy Policy bury important information about licensing in legal jargon, which users rarely read before agreeing with a simple click.

Screenshot from Instagram’s Terms of Use, as of June 8, 2020.

Sinclair conceded that she was bound to Instagram’s TOU. But, in a Memorandum of Law filed on June 22, 2018, Sinclair opposed the notion that she could terminate the embed code in the Mashable article by converting her public account to a private account or by deleting the post altogether. Sinclair argued, “Such suggestion mocks a copyright holder’s exclusive rights under the Copyright Act and punishes professional photographers by forcing them to remain in ‘private mode’ on one of the most popular public photo sharing platforms in the world.”[11] The court responded that Sinclair’s argument was valid, but still concluded that it could not release her from being bound to Instagram’s TOU.[12]

In addition, Sinclair argued that, because Mashable failed to obtain a license to her Photograph through direct means, it should not be able to obtain a sublicense through Instagram. The court rejected Sinclair’s argument, reasoning that her right to license and Instagram’s right to sublicense operate independently.[13] The court supported the notion that a copyright owner permitting a licensee to grant sublicenses cannot bring a copyright infringement suit against a sublicensee, as long as both the licensee and the sublicensee act, respectively, within the terms of their license and sublicense.[14]

Nonetheless, the court acknowledged that “Instagram’s dominance of photo- and video-sharing social media, coupled with the expansive transfer of rights that Instagram demands from its users, means that [Sinclair’s] dilemma is a real one.”[15] Yet, the court did not provide a solution, failing visual artists and other content creators with serious interests in posting public content.

On April 27, 2020, Sinclair filed a Motion for Reconsideration. Sinclair argued that the court did not account for material terms in Instagram’s TOU and disputed questions of fact exist as to whether Mashable violated Instagram’s API policies.

SDNY Takes a 180° Turn: McGucken v. Newsweek, LLC

In spite of Sinclair, the Southern District reached an opposite result on June 1, 2020 in the case of McGucken v. Newsweek, LLC. The plaintiff, photographer Elliot McGucken, asserted copyright infringement claims against news magazine Newsweek. In mid-March of 2019, McGucken posted his copyrighted photograph of an ephemeral lake that appeared in Death Valley, California to his public Instagram account. The next day, Newsweek published “Huge Lake Appears in Death Valley, One of the Hottest, Driest Places on Earth” to its website, embedding McGucken’s photograph.[16]

Similar to Sinclair, McGucken alleged that Newsweek violated his exclusive rights of reproduction and distribution by embedding his photograph in its website without his consent.[17] Similar to Ziff Davis, Newsweek argued that, according to Instagram’s TOU, McGucken granted Instagram a sub-licensable license to his photograph by posting it to his public account. However, unlike the case of Sinclair, the Southern District rejected Newsweek’s position. On June 1, 2020, Judge Katherine Polk Failla found that there was no evidence of a sublicense between Newsweek and Instagram. Although Instagram’s TOU contemplate third-party use of public content through embedding, the terms do not “expressly grant a sublicense” to third parties.[18] The court thus denied Newsweek’s Motion to Dismiss on licensing grounds.

Unlike Ziff Davis in Sinclair, Newsweek also argued that its embedding of McGucken’s photograph constituted fair use, an affirmative defense allowing the public to use copyrighted content without the copyright owner’s permission in certain circumstances. Congress has provided four factors that inform whether a particular use constitutes fair use: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use upon the market for or value of the copyrighted work.[19] The court found that the first and fourth factors favored McGucken, while the second and third factors were neutral. The court thus could not conclude that Newsweek’s embedding of McGucken’s photograph was fair as a matter of law. Accordingly, the court denied Newsweek’s Motion to Dismiss on fair use grounds.

Although McGucken is still in the pretrial phase, it seems to have led to a shift in Sinclair. On June 24, 2020, Judge Wood, presiding over Sinclair, granted Sinclair’s Motion for Reconsideration. Citing McGucken, Judge Wood reasoned that Instagram’s TOU could be interpreted to grant users the right to use Instagram’s API to embed other users’ public content, but that is not the only interpretation. The court held that the Sinclair pleadings do not contain sufficient evidence to find that Instagram granted Mashable a sublicense to embed Sinclair’s photograph in its website.

The court also reasoned that it “did not give full force to the requirement that a license must convey the licensor’s ‘explicit consent’ to use a copyrighted work,”[20] suggesting that perhaps Sinclair did not explicitly consent to Instagram’s sublicensing after all. The court held that Instagram’s TOU are “insufficiently clear” to warrant dismissal of Sinclair’s claims at this time.

It is likely that, as Sinclair further develops, it will have significant implications for rights holders posting public content to Instagram and other social media platforms.

What Now?

The issues at the center of Sinclair and McGucken have garnered the attention of practitioners in the fields of Intellectual Property Law and Art Law. Some practitioners have suggested that, given the uncertainty of the Southern District’s position on alleged copyright infringement via Instagram, users should oppose third-party use of their public content through claims of unfair competition, false sponsorship, and false affiliation.[21] Other practitioners have suggested that Instagram modify its TOU to better protect artists. Megan Noh, co-chair of Pryor Cashman’s Art Law Group, describes the current terms and privacy settings as a “blunt instrument,” forcing users to designate their accounts as either public or private. Noh suggests that Instagram could refine those settings, allowing users to designate individual posts as public or private. Noh also proposes that Instagram could “[allow] users to ‘toggle a switch’ to deactivate the embedding tool for individual posts, or even [enable] users to designate a particular level of license available for individual posts,” technology permitting. Noh understands that visual artists and other content creators would benefit from modified account settings that would allow users to “continue using the platform to further the reach of their work…without automatically forfeiting control…” It is clear that there are a number of viable options that Instagram should consider in light of Sinclair and McGucken.

Recommendations for Artists With Public Instagram Accounts

  • Review an online platform’s TOU or other agreements, especially before sharing, embedding, or otherwise using third-party content posted to that platform.
  • Consider whether to post content to public accounts. Doing so might allow others to share, embed, or otherwise use the content without legal recourse for the creator, even if the creator is also a copyright owner.[22]
  • Include watermarks or signatures on content posted to public accounts.
  • Have an open channel for communication to persuade users to ask for permission before sharing or otherwise using content.[23]

Note: Sinclair’s copyrighted Photograph—Child, Bride, Mother/Child Marriage in Guatemala— has since been removed from the article published to www.mashable.com. Sinclair is unsure of when her Photograph was removed from the article.


Endnotes:

  1. See Thomas McMullan, The Art World Goes Virtual, Frieze (Mar. 30, 2020), https://frieze.com/article/art-world-goes-virtual (explaining how Art Basel and numerous commercial galleries have pivoted business online).
  2. Sinclair v. Ziff Davis, LLC, No. 1:18-cv-00790 (S.D.N.Y. Apr. 13, 2020).
  3. Id. at 1.
  4. Complaint ¶ 8, Sinclair, No. 1:18-cv-00790 (S.D.N.Y. Apr. 13, 2020).
  5. Id. ¶ 14.
  6. Id. ¶¶ 19-24.
  7. Id. ¶ 29.
  8. Id. ¶ 22.
  9. 17 U.S.C. § 102(a), 102(a)(5), 106(1), 106(3) (2018).
  10. Sinclair, No. 1:18-cv-00790 at 4-5 (S.D.N.Y. Apr. 13, 2020).
  11. Memorandum of Law in Opposition to Defendants’ Motion to Dismiss Plaintiff’s Second Amended Complaint at 12, Sinclair, No. 1:18-cv-00790 (S.D.N.Y. Apr. 13, 2020).
  12. Sinclair, No. 1:18-cv-00790 at 8 (S.D.N.Y. Apr. 13, 2020).
  13. Barry Irwin & Manon Burns, Instagram Artists Beware: Posting Equates to Permission, Irwin IP (Apr. 27, 2020), https://irwinip.com/2020/04/instagram-artists-beware-posting-equates-to-permission/.
  14. Sinclair, No. 1:18-cv-00790 at 4 (S.D.N.Y. Apr. 13, 2020) (citing United States Naval Inst. v. Charter Commc’ns Inc., 936 F.2d 692, 695 (2d Cir. 1991); Spinelli v. Nat’l Football League, 903 F.3d 185, 203 (2d Cir. 2018)).
  15. Sinclair, No. 1:18-cv-00790 at 8 (S.D.N.Y. Apr. 13, 2020).
  16. McGucken v. Newsweek, LLC, No. 1:19-cv-09617 (S.D.N.Y. June 1, 2020).
  17. First Amended Complaint ¶ 23, McGucken, No. 1:19-cv-09617 (S.D.N.Y. June 1, 2020).
  18. McGucken, No. 1:19-cv-09617 at 10 (S.D.N.Y. June 1, 2020).
  19. 17 U.S.C. § 107 (2018).
  20. Sinclair v. Ziff Davis, LLC, No. 1:18-cv-00790 (S.D.N.Y. filed June 24, 2020).
  21. Susan M. Kayser & Terrance D. Roberts, Photographer Unsuccessful in Copyright Case Over Use of Embedded Instagram Photo, The National Law Review (Apr. 16, 2020) https://www.natlawreview.com/article/photographer-unsuccessful-copyright-case-over-use-embedded-instagram-photo.
  22. Sarah L. Bruno & Donald A. Cespedes, Court Finds No Copyright Infringement for Posting Copyrighted Photos Taken From Photographer’s Public Instagram Account, Reed Smith (Apr. 29, 2020) https://www.reedsmith.com/en/perspectives/2020/04/court-finds-no-copyright-infringement-for-posting-copyrighted-photos.
  23. Carrie Lewis, 8 Ways to Protect Your Artwork Images from Being Copied Online, EmptyEasel.com, https://emptyeasel.com/2017/07/31/8-ways-to-protect-your-artwork-images-from-being-copied-online/ (last visited June 5, 2020).

Additional Readings:

About the Author: Marla Katz is a Summer 2020 Legal Intern for the Center for Art Law. She earned a B.A. and M.A. in English from St. John’s University. She is now a student at the University of Connecticut School of Law, where she is a member of the Connecticut Law Review and the current President of UConn Law’s Arts, Entertainment, and Sports Law Society. She can be reached at marla.katz@uconn.edu.

Acknowledgments: The Author wishes to thank Megan Noh for her guidance and insights in researching this article.