When you upload content on Instagram, you can choose to make your post "public" or "private." According to Instagram, not only is the public content accessible and searchable by Instagram's users, the content is also subject to use by them on their websites via Instagram's application programming interface or "API."
Instagram's Terms of Use state that, by posting content publicly, you grant Instagram "a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content that you post on or through [Instagram] subject to [Instagram's] Privacy Policy." (emphasis added). Based on this language, two recent New York District Court cases held that public posting grants Instagram the right to sublicense your posted content to third parties without your knowledge or consent.
In Sinclair v. Ziff Davis LLC and Mashable, Inc., 2020 WL 1847841 (S.D.N.Y. April 13, 2020), reversed in part on reconsideration, 2020 WL 3450136 (S.D.N.Y. June 24, 2020), Stephanie Sinclair, a professional photographer, brought an action against Mashable and Ziff Davis for infringing her copyright in a photograph she had posted to her public Instagram account. Mashable, a media and entertainment platform owned by Ziff Davis, approached Sinclair about licensing the photograph for use in an article to be published on Mashable's website. A few days after Sinclair rejected Mashable's offer of $50 for the licensing rights, Mashable embedded (provided a hyperlink to) a copy of the same photograph in the article on its website. When Mashable refused to take the photograph off its website or compensate her, Sinclair sued Mashable and Ziff Davis seeking damages for copyright infringement and an injunction.
Initially, the Court granted Defendants' motion to dismiss Sinclair's complaint. Construing Instagram's Terms of Use and its Platform and Privacy Policies, Judge Kimba Wood decided that Instagram had sublicensable rights to Sinclair's photograph: "Plaintiff authorized Instagram to grant a sublicense to... anyone who uses Instagram's API" (Id. at *3), and Instagram validly exercised that right by granting Mashable a sublicense to display the photograph. Judge Wood also found that Ziff Davis had no liability, having had no involvement in Mashable's activity beyond corporate ownership.
Following the Sinclair decision, a second New York district court in McGucken v. Newsweek LLC, 2020 WL 2836427 (S.D.N.Y. June 1, 2020), similarly construed the Instagram Terms of Use and its Privacy Policy as allowing Instagram to grant sublicenses to publicly posted content. However, Judge Katherine Failla denied Newsweek's motion to dismiss, requiring Newsweek to establish that it had a sublicense from Instagram.
Sinclair then moved for reconsideration. Citing McGucken, Judge Wood granted Sinclair's motion and reversed the earlier decision dismissing Sinclair's complaint against Mashable. Like Judge Failla in McGucken, Judge Wood held Mashable had to present evidence of its sublicense from Instagram. Sinclair 2020 WL 3450136 at *2.
Under the holding of these cases, an artist confronts a difficult choice. Posting your work on Instagram gets exposure on "one of the most popular public sharing platforms in the world" (Sinclair, 2020 WL 1847841 at *4, quoting Plaintiff), but also grants Instagram the right to sublicense your work to Instagram's API users worldwide.
The Court in Sinclair raised, but left undecided, the effect under the copyright law of "embedding" or hyperlinking to an image on another server - whether embedding constitutes an infringing "display" if the image is not downloaded and never leaves the third-party server. Here Ms. Sinclair's photograph always remained on Instagram's server, and Mashable merely provided a link to that server. Courts are currently split on the effect of linking to content from another server. Applying the "server test," the Ninth Circuit has held embedding content is not a copyright infringement if the defendant does not host the content on its own server, see Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), but the law is unsettled in other Circuits. A New York district court in 2018 rejected the Ninth Circuit server test and held that embedding a photograph constituted an infringing display under the Copyright Act. See Goldman v. Breitbart News Network LLC, 302 F. Supp. 3d 587 (S.D.N.Y. 2018). The Second Circuit has yet to opine on the server test.
While courts are continuing to grapple with the application of language in the Copyright Act from 1976 to previously unforeseen technology, Instagram is apparently considering giving its users more control over use of their posted content. In the meantime, anyone who uploads content, or who wants to use uploaded content, should be familiar with the consequences of Instagram's "public" and "private" designations.
