Tim Lee has a remarkable story at Ars Technica about a remarkable copyright case, McGucken v. Newsweek. Its headline, “Instagram just threw users of its embedding API under the bus,” is not an exaggeration. (Disclosure: I am quoted in the story, and I learned about the case from being interviewed for it.) The facts are simple:
Photographer Elliot McGucken took a rare photo (perhaps this one) of an ephemeral lake in Death Valley. Ordinarily, Death Valley is bone dry, but occasionally a heavy rain will create a sizable body of water. Newsweek asked to license the image, but McGucken turned down their offer. So instead Newsweek embedded a post from McGucken’s Instagram feed containing the image.
This is the third case I am aware of in the Southern District of New York in the last two years on nearly identical facts. One of them, Sinclar v. Ziff Davis, held that the Mashable was not liable for an Instagram embed. The court reasoned that by uploading her photograph to Instagram, photographer Stephanie Sinclair agreed to Instagram’s terms of service, including a copyright license to Instagram to display the photograph – and also thereby allowed Instagram to sublicense the photograph to its users who used the embedding API. Thus, Mashable had a valid license from Sinclair by way of Instagram, so no infringement.
McGucken agrees with most of this reasoning, but stops just short of the crucial step.
The Court finds Judge Wood’s decision [in Sinclair] to be well-reasoned and sees little cause to disagree with that court’s reading of Instagram’s Terms of Use and other policies. Indeed, insofar as Plaintiff contends that Instagram lacks the right to sublicense his publicly posted photographs to other users, the Court flatly rejects that argument. The Terms of Use unequivocally grant Instagram a license to sublicense Plaintiff’s publicly posted content, and the Privacy Policy clearly states that “other Users may search for, see, use, or share any of your User Content that you make publicly available through” Instagram.
Nevertheless, the Court cannot dismiss Plaintiff’s claims based on this licensing theory at this stage in the litigation. As Plaintiff notes in his supplemental opposition brief, there is no evidence before the Court of a sublicense between Instagram and Defendant. Although Instagram’s various terms and policies clearly foresee the possibility of entities such as Defendant using web embeds to share other users’ content, none of them expressly grants a sublicense to those who embed publicly posted content. Nor can the Court find, on the pleadings, evidence of a possible implied sublicense. (citations omitted)
Lee did something smart with this dueling pair of cases: he got Facebook (Instagram’s owner) to go on record with its interpretation of its own terms of use.
“While our terms allow us to grant a sub-license, we do not grant one for our embeds API,” a Facebook company spokesperson told Ars in a Thursday email. “Our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content, if a license is required by law.”
In plain English, before you embed someone’s Instagram post on your website, you may need to ask the poster for a separate license to the images in the post. If you don’t, you could be subject to a copyright lawsuit.
This statement, I think it is fair to say, comes as a surprise to Mashable, to Judge Wood, and to all of the Instagram users who embed photos using its API. Major online services offer widely-used embedding APIs, and media outlets make extensive use of them. I would not say that it is universal, but it is certainly a widespread practice for which, it is widely assumed, no further license is needed. If that is not true, it is a very big deal, and a great many Internet users are now suddenly exposed to serious and unexpected copyright liability.
McGucken is not the end of the story. I would have said – and in fact I initially told Lee – that it is possible the court would reach a different conclusion at a later stage of the case, once it had more facts about Instagram’s terms of use. That … no longer seems likely. But it is still quite possible Newsweek could win and be allowed to use the embedded photograph. It raised a fair use defense, and might well prevail on that at a later stage. It might also be able to rely on the server rule.
The server rule, which can be traced to Perfect 10 v. Amazon.com from the Ninth Circuit in 2007, holds that only the person whose server transmits a copy of an image “displays” that image within the meaning of the Copyright Act. In an embedding case like Sinclair or McGucken, that would be Instagram, not Mashable or Newsweek – that is how embedding works. There is no dispute that Instagram is licensed to publicly display copies of these photographs; the photographers agreed as much when they uploaded them. So on the server test, no sublicense is needed; embeds are noninfringing.
The server test, although widely relied on by Internet users and Internet services, has also been criticized. The third SDNY embedding API case, Goldman v. Breitbart, held that the defendant websites could be liable for Twitter embeds of Goldman’s photograph. In a detailed opinion, the Goldman court considered and rejected the server test. (Side note: There was an important potential factual distinction in Goldman. There, unlike in Sinclair and in McGucken, the photograph had been uploaded to Twitter by unauthorized third parties, who could give no license to Twitter and thus none to the defendants. But this distinction played no part in Goldman’s legal analysis. While these facts could be relevant to the existence of a license, they don’t affect whether the image was displayed or by whom.)
To summarize, there are two possible routes to finding that API embeds of a photographer’s own uploads are allowed: either the service itself displays the image under the server rule, or the embedder displays it but has a valid sublicense. Goldman rejected the server rule, but did not consider the existence of a sublicense. Sinclair did not consider the server rule but held there was a sublicense. McGucken did not consider the server rule – inexplicably, Newsweek did not ask the court to hold that there was no direct infringement under the server rule – and held that there was no sublicense. No court has considered and ruled on both arguments together, despite the fact that they are joined at the hip.
A particularly careful and thorough critique of the server is Embedding Content or Interring Copyright: Does the Internet Need the “Server Rule”?, by Jane Ginsburg and luke Ali Budiardjo. They argue that the server rule misreads the Copyright Act and should, with Goldman, be rejected. They believe, however, that the sky will not fall, because licenses will fill any gaps that should be filled. They note that YouTube’s terms of service, for example, explicitly provide for a license grant from uploaders to YouTube’s users, and they predict that this practice will be common:
Therefore, it seems likely that platforms can (and will) utilize Terms of Service agreements that are sufficiently broad to protect themselves and their users from infringement claims based on user “sharing” of platform content through platform mechanisms.
I would have thought so, too. Hence my surprise at Instagram’s position. There are two possibilities here. One is that Instagram does not explicitly grant a license because it believes the server test is the law. That position has been risky ever since Goldman. The other is that Instagram is willing to expose its users to copyright liability when they use its system as intended. I think it is not unreasonable to describe this, as Ars does, as throwing its users under the bus.
One last twist. In late April, Sinclair filed a motion for reconsideration of the holding that Mashable had a sublicense from Instagram, including some challenges to the court’s interpretation of Instagram’s terms of use. The main brief in support of reconsideration could be clearer, but her reply brief puts the issue squarely: “Nowhere has Mashable put in the record any proof as to how Instagram ‘validly exercised’ its right in granting Mashable a sublicense of Plaintiff’s photo.” There things sat, until on June 2, Sinclair called the court’s attention to the McGucken order, and then today, June 4, called its attention to the Ars story published just hours before. I speculated to Lee that McGucken “is going to blow up the Sinclair case.” I shouldn’t have used the future tense. It already has.