Written by Robert H. Rotstein and Timothy M. Carter

In the past few years, the advent of social media has increasingly tested the bounds of copyright law.  The issue of whether “in-line linking” or “embedding” constitutes actionable copyright infringement is no exception.

Early last week, in Stephanie Sinclair v. Ziff Davis, LLC, and Mashable, Inc., 1:18-cv-00790 (SDNY, April 13, 2020), Judge Kimba Wood held that Defendant Mashable did not engage in copyright infringement by embedding of Plaintiff photographer Stephanie Sinclair’s photograph “Child, Bride, Mother/Child Marriage in Guatemala” (the “Photograph”). The Court determined that Mashable used the Photograph, which was posted to Sinclair’s publicly viewable Instagram account, pursuant to a valid sublicense granted to Instagram by Sinclair.  Accordingly, Judge Wood granted Mashable’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) on the grounds that Sinclair failed to state a claim for copyright infringement.

Sinclair, a professional photographer whose work has been featured in The New York Times, Time magazine and National Geographic, uploaded the Photograph to her publicly searchable website and her Instagram account.  In March of 2016, a Mashable employee contacted Sinclair seeking to use the Photograph in a story highlighting female photojournalists whose work raises awareness of social justice issues.  Mashable offered $50 to license the Photograph, which Sinclair rejected.  Mashable used the Photograph anyway, embedding Sinclair’s Instagram post containing the Photograph in its story.  By embedding the Photograph into the story, Mashable’s readers were able to view “the embedded content on [its] website, even though the content [wa]s actually hosted on a third-party’s server, rather than on the server that hosts the website.”  Sinclair sued for copyright infringement.

In her decision, Judge Wood held that Sinclair, “[b]y creating an Instagram account, agreed to Instagram’s Terms of Use,” which “grant[ed] to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the content that [he/she] post[s] on or through [Instagram].”  Because “all content that [Instagram] users upload and designate as ‘public’ is searchable by the public and subject to use by others via Instagram’s API,” which “enables . . . users to embed publicly-posted content in their [respective] websites[,]” when Sinclair uploaded the Photograph to Instagram and designated it as “public,” she “agreed to allow Mashable, as Instagram’s sublicensee, to embed the Photograph in its website.”

Closer to home for many in the creative community, Sinclair “argue[d] that it [wa]s unfair for Instagram to force a professional photographer like [her] to choose between ‘remain[ing] in ‘private mode’ on one of the most popular public photo sharing platforms in the world,’ and granting Instagram a right to sub-license her photographs to users like Mashable[.]”  While the Court found this “dilemma [to be] a real one[,]” it held that “by posting the Photograph to her public Instagram account, [Sinclair] made her choice. This Court cannot release her from the agreement she made.”  The Court further found unpersuasive Sinclair’s remaining arguments concerning the validity and enforceability of her agreements with Instagram.

Judge Wood’s decision is not the first in the Southern District of New York to deal with a copyright infringement claim stemming from the embedding of photographs posted on social media.  In early 2018, Judge Katherine Forrest held that a handful of media companies, including The Boston Globe, Time Inc., Breitbart, and others, could potentially be liable for infringing photographer Eric Goldman’s copyright in his photograph of NFL quarterback Tom Brady after they embedded tweets containing his photograph in news stories on their websites.  Goldman v. Breitbart News Network LLC et al., 1:17-cv-03144 (S.D.N.Y. 2018).  On appeal to the Second Circuit, Goldman’s case settled out of court.

Notably, Judge Wood’s opinion undertakes a markedly different analysis from Judge Forrest’s.  Unlike in Goldman, Judge Wood found that Mashable had a valid license to display the Photograph.  As a result, the Court did “not reach the question, addressed in Goldman but unsettled in [the Second] Circuit, of whether embedding an image constitutes ‘display’ that is capable of infringing a copyright in the image[.]”  Accordingly, open questions remain, namely whether Sinclair’s holding will insulate future defendants who embed from liability and whether, absent a license, unauthorized embedding constitutes copyright infringement (as Goldman held).