Does Instagram's API grant sublicenses?
McGucken v. Newsweek checked whether the terms of Instagram granted a sub-license. The facts were similar to Sinclair's. The plaintiff was a photographer who uploaded his photos to Instagram and made his profile public. On his public Instagram account, he posted a photo of the temporary lake phenomenon in Death Valley (due to the rapid rain). Newsweek published an article about the appearance of new lakes in Death Valley (also the subject of the photo). To illustrate the article, Newsweek has embedded one of the applicant's photos. (The case focuses on Newsweek's publication of the article online and does not discuss offline use.)
Because Newsweek used the Instagram API to embed the photos, Newsweek argued that it had been sublicensed from Instagram and therefore did not violate its use.
After that verdict, the judge in Sinclair accepted the photographer's request to reconsider. The judge said the court's previous decision did not properly take into account this "explicit consent", which must be part of a copyright license. The court says Instagram terms suggest this, but it's "not the only interpretation" of the language in question. While the terms allow Instagram to sublicense user content, it is not clear that Instagram actually exercised that right (and granted a sublicense). That is a fair conclusion. In the post on Sinclair, I found that Instagram's terms were ambiguous as to whether they were licensing.
Is embedding fair use?
In the McGucken case, the court also rejected Newsweek's fair use argument.
- The first factor speaks for the plaintiff. Using Newsweek is not transformative, unlike in a scenario where "the photo itself is the subject of the story." Although the article contains plaintiff quotes, "simply adding a token comment is not enough to change the use of the photo if that photo itself is not the focus of the article."
- The second and third factors are neutral. It is a creative work, but seems to have already been published. The court says that while it is difficult to see how Newsweek could have used the photo without using it in full, the whole work is against fair use. So these factors intersect in both directions.
- Finally, the court says that the fourth factor (impact of use) benefits the plaintiff. It is believed that the use of an entire plant will harm the market for that plant. Since there are no other signs of market damage, this factor speaks for the plaintiff.
Given all of the factors, the court rejects the fair use argument in the application for dismissal.
Compare this result to Walsh v Townsquare Media, where the media defendant who has embedded an Instagram post in an article successfully established a fair use defense. (This is a Liebowitz case for those who follow this saga.) There, XXL magazine published an article about CardiB in collaboration with Tom Ford for a new lipstick. The article describes various Instagram posts (the fact that Tom Ford posted about the new lipstick shade and Cardi reposted Tom Ford's post and published its own). The article also talked about "heated debates" about the original post. The XXL article contained the two articles and a repost discussed in the article.
The court first found (referring to the Breitbart case) that it is unclear whether the embedding of a contribution is an "advertisement" for the contribution within the meaning of the Copyright Act. Despite the assumption that XXL embedding may be a violation, the court concludes that embedding the item was a fair use.
- The first factor benefits the accused, since in this case the photos "are" the story. The photo was taken to show Cardi B at a fashion show, but was used by XXL to report on online activities. The fact that XXL embedded the picture was impressive. The subject of the picture "was the post, not the photo."
- The second factor was slightly in favor of the defendant. The photo was previously published and is creative, since it is a "paparazzi picture", but somewhat factual in nature.
- The third factor also favored fair use. XXL had to use the entire image to convey the story, including comments on the posts.
- Finally, the fourth factor favored fair use. Given that the photo was used as part of an embedded post, the court is unlikely that anyone will choose to purchase a copy instead of the original.
The big story in both Sinclair and McGucken is that the Instagram terms don't necessarily include a third party license to use content that Instagram provides through its API. A look at the Instagram website shows that third parties intend to embed content. Is that a gaffe from Instagram? Can those who publish with the understanding that Instagram grants a license complain to Instagram?
Perhaps Instagram thought that a license was not required. I originally wrote this post and was amazed at Instagram's position and reasons, but Eric pointed me to these excellent articles by Tim Lee and James Grimmelman. These included a bomb: Instagram was recorded speaking to Tim Lee and explained that Instagram granted "no" sublicense to its embedding API:
Before embedding someone else's Instagram post on your website, you may need to ask the poster for a separate license for the images in the post. If you don't, you can be subject to a copyright lawsuit.
As Professor Grimmelman notes, this will be a total surprise for almost everyone. The title of Tim's article states that Instagram only "threw users of its embedding API under the bus". Instagram is not a party to the litigation, so the lack of a final position may be understandable, but it could have helped the accused in these cases (and the many others that may have come from the woodwork). Professor Grimmelman notes that the practice of embedding, after assuming that Instagram's terms grant a license, can now "expose a great many Internet users. . . to serious and unexpected copyright liability. “This is not an exaggeration.
In these cases, the underlying question is whether a license is required to embed an Instagram post that is still on Instagram's servers (in addition to the license that the user grants Instagram). The Breitbart case raised this question, but unfortunately did not solve it. The from the Ninth Circuit in Perfect 10 BC. Amazon's formulated server test stands for the thesis that an online display of content while this content is still on a third-party server is not an advertisement within the meaning of the Copyright Act. The Brietbart court criticized the server test. It is worth noting that the server test was created in the context of a search engine's content display. This is a slightly different factual attitude than the one in which a publisher or a media unit displays the content. The cases have not clarified whether the two practices are identical to a technical issue, and I can see that the courts intervene in assessing the similarities or differences. If I were a judge, I would like to know more about how these two practices can differ. Basically, these cases (and Instagram's position) mean that the server test is on trial shortly before another training session. These cases are widely observed.
The fair use decisions are also noteworthy. It would be tempting for the court to let the fact that the content is embedded have a strong impact on the fair use analysis, but the courts do not take this approach. The Walsh case is more sympathetic with the argument of fair use (and ultimately finds fair use). As the court finds, this is because the online activity itself was at the center of the story. It should not be understood that you can freely embed and claim fair use (as the McGucken case shows). Using a photo to illustrate an article and embedding the photo is not necessarily considered a slam dunk case for fair use by the courts.
The McGucken court noted that Newsweek (via comment) contacted Instagram to get permission to post the photo. Given the procedural stance (request for dismissal), the court did not consider it appropriate to take this comment into account, but it is worth pointing out. If the fair use verdict ultimately doesn't work in Newsweek's favor, the discovery could be messy for Newsweek.
McGucken v Newsweek LLC et al., No. 1: 2019cv09617 (S. D. N. Y., June 1, 2020)
Walsh v Townsquare Media, Inc., No. 1: 2019cv04958 (S. D. N. Y., June 1, 2020)
Sinclair v Ziff Davis, LLC, No. 1: 2018cv00790 (S.D.N.Y. June 24, 2020)
Inline linking can be a copyright infringement – Goldman vs. Breitbart News
The court definitely rejects AFP's argument that posting a photo on Twitter grants AFP a license for free use – AFP v Morel
Ninth Circuit Opinion in Perfect 10 against Google and Amazon