Aug 17, 2019; Nashville, TN, USA; New England Patriots quarterback Tom Brady (12) before the game against the Tennessee Titans at Nissan Stadium. Mandatory Credit: Christopher Hanewinckel-USA TODAY Sports

1. DOES COPYRIGHT INFRINGEMENT ARISE OUT OF PUBLISHING
EMBEDDED CONTENT FROM THIRD-PARTY WEBSITES?
The United States District Court for the Southern District of New York recently determined
that Mashable lawfully used a photojournalist’s photograph pursuant to a sublicense from
Instagram. Following a motion to dismiss by defendants, Mashable and parent company, Ziff
Davis, the court held no copyright infringement had occurred by embedding the Instagram photo
in an article. As a result, the plaintiff’s, Stephanie Sinclair, complaint for copyright infringement
was dismissed.
The dispute began in March 2016, when an article titled “10 female photojournalists with their
lenses on social justice” was published. The article highlighted the work of ten female
photographers whose work focuses on social justice. One of the photojournalists featured,
Sinclair, shoots for National Geographic and aims to protect girls’ rights and end child marriage
by documenting sensitive human rights topics internationally. With a particular focus on gender
issues, Sinclair most frequently shoots the subjects of child marriage and self-immolation. At
issue is one photograph in particular, titled “Child, Bride, Mother/Child Marriage in
Guatemala.” Mashable initially offered Sinclair $50 for rights to this photograph for the article.
When Sinclair declined, Mashable embedded the
image from Sinclair’s official Instagram account.
Shortly thereafter, Sinclair filed a lawsuit for
copyright infringement.
In including Sinclair’s Instagram photo in their
article, Mashable used a process called
“embedding.” This technical process allows a
website coder to incorporate content that is located
on a third-party’s server into the coder’s website.
When users visit said website, the user’s Internet
browser retrieves the embedded content from the third-party server and displays it on the
website. Thus, the user sees the embedded content on the website, despite the fact of it actually
being hosted on a third-party’s server. Instagram uses an “application programming interface,”
or “API,” to enable users to access and share content posted to “public” accounts, such as
Sinclair’s. Here, Mashable used the API to embed Sinclair’s photograph from her Instagram
account to their article.
Previously, the nature of this lawsuit revolved around the server test. This doctrine focuses on
the fact that a publication which uses a photo-embed code never stores the photo on its own
servers or transmits it to the user. Rather, the embed code instructs the user’s Internet browser
how to download the image directly from another site. In this case, the other site was Instagram,
and particular, Sinclair’s official, public account. A majority of courts have found such use of
third-party content to not constitute copyright infringement because the publisher is not
distributing or displaying the content to users. Other courts, including the Southern District of
New York, have found infringement in these instances claiming the technical details of how the
photograph reached the user’s browser does not overshadow the fact that the news websites
caused the photo to appear on user’s browsers without permission from the copyright holder.

2. Problematically, under the server test, those who evaded liability for direct infringement could
still be held liable for indirect copyright infringement.
Instead of relying on the server test, Mashable argued Sinclair granted a license to Instagram
to use her photo when she uploaded it. In addition, Instagram’s terms of service state that it has
the right to sub-license the photo to others. A copyright owner who permits a licensee to grant
sublicenses cannot bring an infringement suit against a sublicensee, so long as the licensee and
sublicensee have acted within the terms of their license and sublicense, respectively. Indeed, a
sublicensee cannot acquire valid rights to copyrighted works if the sublicensor had no right to
issue a sublicense in the first place.
By using Instagram’s embedding service, Mashable was lawfully sublicensing the photo from
Instagram. The court agreed with this argument in finding no copyright infringement had
occurred. This licensing-based reasoning clearly distinguishes between authorized and
unauthorized social media uploads. Importantly, through a site like Instagram, which is
automatically granted a license to content uploaded to its platform, the user who uploads content
may disable any third-party use of the same by marking the post as private. Sinclair appears to
have done just that as her photograph no longer appears in Mashable’s article. Moreover, any
sublicense arising out of an Instagram-posted photo is limited to the embedding tool. Thus, if
Mashable, or another entity, sought to use the photo for another purpose, it would require a
separate license from Sinclair.