On 6 June 2020, a US District Court ruled in favour of a photographer claiming copyright infringement against Newsweek who embedded his Instagram post in their article without consent. The ruling discusses the validity of a sublicence as a result of a public post and the fair use defence.

BACKGROUND

The Plaintiff is a fine art photographer who focuses on landscapes. The Defendant is a popular American news magazine founded in 1933.

On 13 March 2019, the Plaintiff posted on his public Instagram a photograph he took of a lake in California. The next day, the Defendant published an article about the same lake, embedding the Plaintiff’s Instagram post as part of the article, without the Plaintiff’s consent.

In October 2019, the Plaintiff brought an action for copyright infringement against Newsweek, alleging the Defendant reproduced and displayed the photograph on its website without his consent.

Newsweek moved to dismiss the action arguing they had a valid sublicense to use the photo as a result of the Plaintiff’s public post on Instagram. Newsweek also argued its publication of the photograph constituted fair use.

The District Judge found in favour of the Plaintiff for copyright infringement.

INSTAGRAM’S TERMS AND POLICIES

Instagram’s Terms of Use are agreed by everyone that signs up:

“[W]hen you share, post, or upload content that is covered by intellectual property rights …, you hereby grant to [Instagram] a non-exclusive, royalty-free, transferable, sub-licensable, worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content.”

Instagram’s Privacy Policy applies to all visitors, users and others who access the service:

“Other Users may search for, see, use, or share any of your User Content that you make publicly available through [Instagram]” and “[s]ubject to your profile and privacy settings, any User Content that you make public is searchable by other Users and subject to use under our Instagram API.”

Instagram’s Platform Policy governs the use of the API:

“to help broadcasters and publishers discover content, get digital rights to media, and share media using web embeds.”

VALID SUB-LICENCE

The Defendant argued that “per Instagram’s various terms and policies, when Plaintiff chose to post the Photograph publicly on Instagram, he granted Instagram a sublicensable license to the Photograph… Newsweek embedded the Photograph in the Article using Instagram’s API, and in doing so exercised the sublicense that had previously been granted to Instagram” [8].

However, the Court could not find that Newsweek acted pursuant to a valid sublicence.

Interestingly, the same question was brought to the same Court two months prior in Sinclair. The case had very similar facts to the present, concerning a media website publishing an article in which it embedded a photograph that Sinclair had previously uploaded to and posted publicly on Instagram. The court in Sinclair held in favour of the Defendant on the basis that Instagram has the right to sublicence the photo and because the post was ‘public’ the Plaintiff allowed the Defendant, as Instagram’s sublicensee, to embed the photo [2-3].

The Judge agreed with Sinclair in so far as “the Terms of Use unequivocally grant Instagram a license to sublicense Plaintiff’s publicly posted content and the Privacy Policy clearly states that ‘other Users may search for, see, use, or share any of your User Content that you make publicly available through’ Instagram” [9].

Constructively in the present case the Plaintiff argues there is no evidence of a sublicence between Instagram and the Defendant as none of the policies “expressly grants a sublicence to those who embed publicly posted content” [10]. Nor could the court find evidence of an implied sublicence.

FAIR USE

The US Copyright Act balances four non-exclusive factors in regards to fair use [17 U.S.C. § 107]. The Court ultimately found that the Defendant’s embedding of the photo did not constitute fair use.

The most notable factor considered in the present case was the ‘purpose and character of the use including whether such use is of a commercial nature or is for nonprofit educational purposes’ [17 U.S.C. § 107(a)]. This factor asks whether and to what extent the new work is transformative. The Judge held the Defendant’s use was not transformative as the “mere addition of some token commentary is not enough the transform the use of a photo when that photo is not itself the focus of the article” [15].

Also notable is the fourth factor in the fair use application inquiry which considers ‘the effect of the use upon the potential market for or value of the copyrighted work’ [17 U.S.C. § 107(d)].

The Court found in favour of the Plaintiff here on the basis of the presumption of market harm. The Supreme Court has noted there is a presumption of market harm “when a commercial use amounts to mere duplication of the entirety of an original” [21]. In the present case the Judge therefore found that the “Defendant’s use of the Photograph was both commercial and a mere duplication of the original, as opposed to constituting a transformative use. Thus, the presumption applies here” [21].

LOOKING FORWARD

Unlike the decision in Sinclair two months prior, this judgment is a victory for photographers. It may give photographers protection from blanket unauthorised use of their Instagram posts.

Publishers wishing to embed users’ posts may need to ask for a separate licence as reliance on a blanket sublicence defence may fall short. We will see if Instagram responds accordingly by giving public account holders greater control over third parties use of their posts.

A different decision may have been reached in the UK under the ‘fair dealing’ defence, contained in the Copyright Designs and Patents Act 1988, which is a closed list, compared to ‘fair use’ in the US which is more ended. The advantages of the US defence lends itself to adapt to technological advantages. However, as seen in the present case and Sinclair, the disadvantage of fair use is that it can lead to legal uncertainty.