Update: June 25, 2020
Court Reopens Mashable Case Involving Embedded Instagram Photo: On June 24, in Sinclair v. Ziff Davis, LLC — a case alleging that Mashable (a subsidiary of Ziff Davis, LLC) infringed the copyright owned by photographer Stephanie Sinclair when it embedded an Instagram post of her photo into an article — the U.S. District Court for the Southern District of New York, on a motion for reconsideration, revised its previous ruling in favor of Mashable. In its prior ruling, finding that Sinclair granted Instagram a broad license, including the right to sublicense via Instagram's Terms of Use, the court held that Mashable was granted a valid sublicense through its use of Instagram's API, and dismissed the suit for failure to state a claim. On reconsideration, the court “adheres to its previous holding that, by agreeing to Instagram’s Terms of Use, [Sinclair] authorized Instagram to grant API users, such as Mashable, a sublicense to embed her public Instagram content” but found that the terms of the API were ambiguous as to whether they explicitly grant users the right to use the API to embed other users’ content. Denying Mashable’s motion to dismiss and reopening the case, the court held that the pleadings contain insufficient evidence to find that Instagram granted Mashable a sublicense to embed Sinclair’s photograph on its website.
SINCLAIR VS MASHABLE
On April 13, 2020 the District Court of New York dismissed a copyright infringement claim brought by photojournalist Stephanie Sinclair against media outlet Mashable. Although it was undisputed that Mashable embedding of one of Ms. Sinclair’s photographs from her public Instagram page without her permission (after she rejected an offer to license it for $50 for a listicle about female photographers), the Court found that Mashable’s could not be liable for infringement because Instagram’s Terms of Service (TOS) grant Instagram both a license to use content posted to its site and a right to sublicense that content, and that Mashable’s use was pursuant to a valid sublicense from Instagram. This ruling understandably sent shock waves through our industry.
On April 27, 2020 Ms. Sinclair filed a motion asking the Court to reconsider its ruling, explaining why the Court got it wrong. Among the reasons stated were the following:
First, Mashable’s claim of “license“ is a defense for which it bears the burden of proof, meaning it needs to affirmatively establish that Ms. Sinclair gave Instagram a license and the right to sublicense. It thus bears the burden of establishing that Ms. Sinclair is bound by the Instagram TOS. Courts are generally reluctant to hold a user to be bound to “terms of service” of a site where the user does not have reasonable notice of those terms. If a website provides “no notice to users nor prompts them to take any affirmative action to demonstrate assent, even close proximity of the hyperlink to the relevant buttons users must click on--without more--is insufficient to give rise to constructive notice.” Nguyen v. Barnes & Noble Inc., 763 F.3d 1171, 1178-1179 (9th Cir. 2014). In Ms. Sinclair’s case, she downloaded the Instagram Mobile App in December of 2012 and there was no evidence in the record that she ever saw, let alone clicked or otherwise assented to, any terms of service--thus there is at least a question to explore in discovery as to whether she agreed that Instagram could sublicense her work (the case was dismissed at the very earliest stages, without the ability of the parties to do any discovery).
Second, even if Sinclair were bound by the Instagram TOS, she would NOT be bound by API terms which grant Instagram a right to sublicense. Without getting overly technical, “API” stands for “application programming interface,” which is a set of tools made available by websites to build software applications to work with those websites. Companies like Mashable, which pull content from Instagram, use Instagram’s API and are bound by those terms of service. Users like Sinclair, which simply maintain instagram pages that they populate with their work (and do not use Instagram API) are not bound by the API TOS.
Third, Mashable never showed that it obtained a sublicense to use Sinclair’s work. Instagram’s API TOS requires that Mashable “comply with any requirements or restrictions imposed on usage of Instagram user photos and videos (“User Content”) by their respective owners. You are solely responsible for making use of User Content in compliance with owners’ requirements or restrictions.” Thus, the API TOS does NOT give users an unfettered sublicense to use other Users’ content, but rather requires that they get permission from those users before using that content--as Mashable tried to do when it offered Sinclair $50, which offer was rejected.
To further clarity this point, Instagram’s Platform Policy states that a publication (such as Mashable) may not “use the Instagram API to simply display User Content […] without our prior permission.” (See Sec. A, Par. 16.) That policy also states: “You represent and warrant that you own or have secured all rights necessary to display, distribute and deliver all content in your app or website.” (see Sec. D, Par. 9).
Assuming Instagram had a right to sublicense Sinclair’s photographs to third parties such as Mashable, it would still have to exercise that right to sublicense--as can be seen above, its API TOS does NOT grant a blanket license to an API user to access and use whatever Instagram content it may wish. Thus, the Court appears to have erred in finding that Mashable was protected by a sublicense where there was simply no evidence that Instagram granted it a sublicense. And without Mashable having actually sought and obtained a sublicense from Instagram, its use of Sinclair’s photograph would appear to be an infringement of her copyright.
Sinclair’s motion for reconsideration is still pending. Hopefully, the Court will see fit to revisit its decision and reverse its ruling. If not, the matter will likely go up to the Second Circuit Court of Appeals for a fresh look.
For years there has been fear about what rights are given up by posting content on social media sites--a question that is admittedly difficult for lawyers and non-layers alike to discern. Indeed, it appears the Court in Ms. Sinclair’s case may not have fully understood the interplay between the various Instagram TOS. That said, courts often decided cases based on the information provided to them by the attorneys handling the case, making it of critical importance that photographers hire skilled counsel.
IMPLICATIONS FOR PHOTOGRAPHERS
Ms, Sinclair’s case is certainly not good news for photographers. As the world’s leading image-driven platform, Instagram has over a billion users and 63% of Americans use it daily. Many professional photographers rely on Instagram as a primary form of marketing to clients and editors and is a central part of professional photographers’ workflows. With legal precedence in place, photographers are now forced to decide how best to move forward given the uncertainty caused by one court’s decision. While there is good reason to think the decision may be reversed, it is in the hands of judges who may be both frustrated with the deluge of small-value copyright cases and struggling to understand Instagram’s convoluted TOS.
The risks and benefits associated with posting on social media platforms have been around as long as the platforms themselves. Sinclair pointed out in court filings that photographers should not have to decide between “remaining in ‘private mode’ on one of the most popular public photo sharing platforms in the world, and granting Instagram a right to sublicense her photographs to users like Mashable.” With full knowledge of the facts, attunement to our individual values, and commitment to the integrity of our work as professional photographers, we must each decide for ourselves how to engage with a platform that helps us make a living doing what we love while opening our work up to rampant theft. We provided guidance for next steps below.
WHAT YOU CAN DO
If you would like to act, copyright lawyers across the industry have advised photographers to change their settings to “Private Account”. Many photographers have already elected to make this change. To change your account, first switch from a business/creator account to personal, since only personal accounts can be private. Then click Edit Profile>Privacy> then click “Private Account” button. We also suggest explaining this change in your bio, so users can see it even if they don’t follow you. We recommend language like:
Account is private to block embedding of my images. Click “follow” to request access.
We know having a private profile is far from ideal. We hope this change will be temporary.
Want to post about it? Educate your fellow photographers about why this is important, then tag @Instagram and let them know how this ruling impacts you, your use of the platform, and what you would like them to do.
NEXT STEPS: ADVOCATE FOR YOUR RIGHTS + COMMUNITY
APA is joining NPPA, ASMP, PPA, NANPA, and GAG to call on Instagram to add settings to allow photographers and artists the option to restrict embedding in public profiles. We will meet with Instagram and lawmakers in the coming days.
Though being a professional photographer can be solitary much of the time, we are a strong community of passionate artists, storytellers, and creators. We must stand together to advocate for our shared values and the changes we want to see. Instagram claims to believe in community and celebration of visual image makers, but their TOS only serves to take advantage of and monetize users’ content. Their TOS has turned them into a stock photo agency who can use and re-sell your images without permission (because they know most folks do not read the “Updated Terms of Service” pop-up, realistically). This does not have to be the case; Instagram could adjust their TOS and app capabilities to apply users to opt out of their images being embedded; YouTube already does it.
Want to help with advocacy? Reach out to executivedirector@apanational.com to express interest. We need all the help we can to speak up for our rights and community.
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THE NITTY GRITTY: A FINAL DETAILED NOTE ON LICENSING
A photographer who has granted a license to Instagram retains copyright ownership.
However, as a practical matter, during the usage period of any perpetual non-exclusive license (whether to Instagram or any licensee), a photographer cannot grant a fully exclusive license to any other licensee.
The existence of that non-exclusive license does nothing to restrain the photographer from granting any number of non-exclusive licenses to any number of licensees.
More importantly, that Instagram license does not restrain the photographer from granting any number of partially exclusive licenses to any number of licensees. A partially exclusive license might, for example, disclose the non-exclusive Instagram license and offer full exclusivity with the exception of that Instagram license and any related sub-licenses. Or, a partially exclusive license might provide partial exclusivity as to product, product category, or industry, with parameters for media, distribution, period, size, versions, placement, territory, language, etc..
Lastly, that Instagram license applies only the exact frame uploaded to Instagram, and has no effect on a photographer's right to grant exclusive rights in other versions of the image, nor on similar frames from the same session.
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