ARE Copyright Alert: New York Court Finds Embedded Instagram Photograph Licensed Under Valid Sublicense Contained In Instagram's Terms Of Use
April 16, 2020
Author(s):
Charles R. Macedo, Chester Rothstein
A federal district court in New York dismissed a copyright infringement case on a motion to dismiss, holding that when a copyright owner posts a photograph on Instagram under a “public” access profile, a third party who embeds a link to the Instagram posting has a valid copyright sublicense through Instagram’s Terms of Use.  Sinclair v. Ziff Davis LLC, No. 18-CV-790 (KMW), 2020 U.S. Dist. LEXIS 64319 (S.D.N.Y. Apr. 13, 2020) (Wood, D.J.) (“Sinclair”).
Background
In Sinclair, the Plaintiff, a  professional photographer, posted a copy of her copyrighted photograph on her public Instagram account.  Mashable, a third-party website, after being unable to obtain a license directly from Plaintiff to post the photograph, posted an embedded link using the Instagram API to the public Instagram  version of  the photograph in an article discussing female photographers.  Plaintiff sued Mashable (the organization running the Mashable website) and its corporate parent Ziff Davis LLC for copyright infringement.
Discussion
In a pithy and direct decision, the Court found that Mashable’s use of the  photography by embedding it into its  own website  using Instagram’s API was pursuant to a valid sublicense granted by Instagram under its Terms of Use. 
Under Instagram’s Terms of Use, “[b]y accessing or using” Instagram, the user “grants to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable world-wide license to the Content that you post on or  through [Instagram]” subject to Instagram's Privacy Policy.  Instagram’s Privacy Policy in turn provides that when a user designates  content as “public” (as Plaintiff did in this case), all content that  the users upload and  designate as “public” is searchable by  the public and subject to use by others via Instagram’s API, which enables others to embed publicly-posted content in its websites.
Based on these interwoven agreements, and Plaintiff’s uploading and designating the photograph on Instagram as  “public”, the Court found that Mashable’s use of an embedded link to the photograph using Instagram’s API on Mashable’s own website, was authorized under a sublicense from Instagram.
The Court rejected Plaintiff’s arguments completely. 
1. The Court found the failure of Plaintiff to grant a direct license to Mashable did not prevent Defendant from, instead,  obtaining a sublicense from Instagram.  Plaintiff could have posted the photograph in  “private” mode if it wanted to avoid granting a sublicense.   
2. The Court rejected the argument that it took  “public notice” of the meaning of Instagram’s agreements and policies.  Instead, the Court took public notice of the existence of such agreements, and then  interpreted them directly.  
3. The Court rejected the argument that since Mashable was not an intended beneficiary of plaintiff’s agreement between itself and Instagram it could not  enforce the  agreement. The Court noted that since Mashable was not trying to  enforce the  agreement between Instagram and Plaintiff, whether or not it was an intended beneficiary was irrelevant.  
4. The Court rejected the  argument  that the complexity of the Instagram’s agreements and its  incorporation by reference of multiple agreements  somehow made them invalid.  Under California law, the form of Instagram’s agreement was acceptable.
5. The Court rejected the argument that Instagram’s agreement was invalid as “circular”, “incomprehensible”, and “contradictory” as unsupported by Plaintiff’s arguments.
6. The Court rejected the argument that Mashable “sold” the photograph in violation of the Instagram Terms of Use, since Mashable merely embedded the photograph on its website, as the sublicense authorized it to do.  Significantly, the Court failed to address the unsettled question of  “whether embedding an image constitutes ‘ display’ that is  capable of infringing a copyright in the image”.  We will have to wait another day for an  answer to that seminal and hotly contested question.
7. The Court rejected Plaintiff’s objection to being forced to choose between posting her photograph in a “public” mode (and thus giving up enforcement rights when it is embedding) or restricting access using a “private” mode.  The Court found “Plaintiff made her choice”, and “[t]his Court cannot release her from the agreement she made.”
The Court also dismissed the claim against Ziff Davis (Mashable’s corporate parent) because Plaintiff failed to allege Ziff Davis’s involvement in Mashable’s alleged copyright infringement. 
Conclusion
According  to this Court, when a copyright holder (or presumably one acting under authority of the copyright holder) posts a copyrighted photograph in a “public” Instagram posting, others can repost the work within an embedded link to Instagram using its API, without violating copyright law.
We will continue to monitor and report on the use of embedded links of photographs.  In the meantime, for more information feel free to contact us.
* Charles R. Macedo and Chester Rothstein are partners at Amster, Rothstein & Ebenstein LLP. Their practice focuses on all facets of intellectual property law including copyright, patent, and trademark .  They can be reached at [email protected] and [email protected].
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