IP Law Daily Instagram technical instructions did not grant news magazine a sublicense to use posted photo
Wednesday, October 21, 2020

Instagram technical instructions did not grant news magazine a sublicense to use posted photo

By John W. Scanlan, J.D.

A reasonable reader would understand that the "Embedding Policy" webpage on Instagram did not grant a sublicense because it was not, in fact, a policy but only a set of technical instructions to developers for embedding Instagram content on other websites.

The language of an "Embedding Policy" on Instagram’s website did not constitute an express sublicense granted by the photographer to a news magazine that would permit the magazine to reproduce one of his photographs on its web site, the federal district court in New York City ruled in denying reconsideration of its decision not to dismiss the photographer’s copyright infringement claims. The court stated that it had not failed to take judicial notice of the Policy but instead had found it irrelevant to its analysis (McGucken v. Newsweek LLC, October 19, 2020, Failla, K.).

Eliot McGucken is a photographer. In 2019, he posted to his Instagram account a photograph that he had taken of a lake that temporarily appeared in Death Valley. Newsweek embedded McGucken’s Instagram post in an article about that lake that it published the following day. McGucken subsequently registered the photograph with the U.S. Copyright office and sent a cease-and-desist letter demanding removal of the photograph. Five months later, because Newsweek had not removed the photograph, he filed copyright infringement claims against Newsweek.

Newsweek moved to dismiss the suit for failure to state a claim, arguing that either it had a valid sublicense to use the photograph pursuant to Instagram’s Terms of Use or that its use constituted fair use. The district court granted in part and denied in part this motion. It ruled that Instagram’s Terms of Use clearly granted Instagram a license to sublicense the photographer’s posted content. However, it found that the language was not sufficiently clear for the court to find the existence of a sublicense between Instagram and Newsweek, nor could it decide the fair use issue. However, it dismissed the photographer’s claims for vicarious and contributory infringement for lack of factual support.

In the present proceeding, Newsweek moved for partial reconsideration of the court’s decision. It argued that Instagram’s Embedding Policy contained clear evidence of an express sublicense between Newsweek and Instagram, and that the court would have discovered that if it had taken judicial notice of the Embedding Policy. Alternatively, Newsweek argued that it was not given a full opportunity to brief the issue of the existence of a sublicense.

Lack of sublicense. The court stated that it had not ignored an express sublicense in the Embedding Policy. After reviewing the webpage provided by Newsweek that contained the Embedding Policy, the court had determined that the Policy was irrelevant to its analysis because it was not a policy regarding sublicensing but simply a set of instructions for developers for embedding Instagram content on other websites. By comparison, Instagram’s Platform Policy clearly provided terms and rules for use. The court noted that the Embedding Policy page was not incorporated into Instagram’s Terms of Use or other policies, unlike the Platform Policy and the Privacy Policy. Language cited by Newsweek as evidence of a sublicense was merely an explanation of what embedding users allowed users to do, with the court noting that if this were a sublicense, the portion stating that users were able to embed their own content would be extraneous. As a result, there was insufficient evidence of a sublicense to justify dismissal.

Opportunity to address issue. The court also disagreed with Newsweek’s alternative argument that it did not have a full opportunity to address the sublicensing issue. Observing that Newsweek had the opportunity to make its arguments in its opening brief, its reply brief, and in its two briefs for the motion for reconsideration, the court stated that it "does not require further briefing on this subject" and would not grant a "second bite at the apple."

This case is No. 1:19-cv-09617-KPF.

Attorneys: Laura Maria Zaharia (Doniger Burroughs Law Firm) for Elliot McGucken. Nancy Evelyn Wolff (Cowan, Debaets, Abrahams & Sheppard LLP) for Newsweek LLC.

Companies: Newsweek LLC

MainStory: TopStory Copyright TechnologyInternet GCNNews NewYorkNews

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