IP Law Daily, TOP STORY—S.D.N.Y.: Fair use defense over Newsweek’s embedding of an Instagram post is punted to a jury, (Mar 23, 2022)

By Matthew Hersh, J.D.

The court also declines to rule as a matter of law whether Newsweek had a license to use the work.

Newsweek will have to convince a jury that it either acted with a license or could rely on the fair use defense in response to a photographer’s charge that it infringed on his copyright by embedding a link to his Instagram post, the federal district court in Manhattan has held. The court, in refusing to grant summary judgment in Newsweek’s favor on the two defenses, also dealt a further blow to the venerable weekly magazine by striking its claim that its use of embedding technology, instead of displaying the post directly from its own server, shielded it from a claim under the Copyright Act (McGucken v. Newsweek LLC, March 21, 2022, Failla, K.).

Elliot McGucken is a fine art photographer based in Los Angeles, California. In March 2019, he visited Death Valley National Park to take photographs. During that trip, he photographed a rare ephemeral lake that appeared in the park and subsequently shared that photograph on Instagram. Newsweek published an article about the ephemeral lake, and embedded in the article the photograph from the Instagram page.

The photographer sued Newsweek for copyright infringement, alleging that the magazine had reproduced and displayed his photograph on its website without his consent. In June 2020, the court dismissed the photographer’s claims for contributory and vicarious infringement, but allowed his claim for direct copyright infringement and his prayer for enhanced damages to go forward. (The court subsequently refused to dismiss the photographer’s amended complaint.).

Both parties cross-moved for summary judgment on a wide range of issues, leading to this opinion.

Copyright infringement. The court denied both parties’ motions for summary judgment on the copyright infringement claim. In reaching its conclusion, the court worked its way through a range of potential defenses raised by Newsweek. The court rejected one of the defenses, but found that two others were viable enough to remain in the case. But none of those defenses, the court also concluded, were strong enough to be resolved in the magazine’s favor as a matter of law. Thus, neither side would be entitled to summary judgment.

Display. Turning to Newsweek’s defenses, the court first rejected the magazine’s argument that its embedding of the Instagram post did not violate the photographer’s exclusive right to display the photo. Newsweek did not reprint the photo per se, but merely embedded within its online article an HTML code that directed viewers to the post as it appeared on Instagram itself. The magazine argued that this technical process did not constitute an infringing display, but merely provided viewer with “instructions on how to find the content, the same way it would not be a public display to provide someone with directions for how to see an artwork by Marc Chagall on display on the walls of the Metropolitan Museum of Art.” The court rejected the argument. It is true the Ninth Circuit follows what is called the “server test,” under which a computer “displays” a copy of an image only if that image is fixed within the computer’s memory. But that test is widely rejected outside of the Ninth Circuit, including by federal courts in Manhattan. After all, the court noted, “the Copyright Act defines ‘display’ as ‘to show a copy of’ a work.” Here, the copy was shown to Newsweek’s readers, rendering it a “display” under the plain terms of the Act. Thus, this defense would fail.

Licenses. Although Newsweek did not succeed on its claim about the display right, it had more success—albeit only qualified success—with its argument that its uses was licensed by Instagram. Under Instagram’s Terms of Use, while users of the service retain ownership of the content of their posts, Instagram has a right to sublicense that content to third parties. What remained in doubt, though, was whether Instagram had actually done so. The court noted that it had already found in its prior rulings that there was no evidence that the content was covered by any direct license between Newsweek and Instagram. The question at issue here was whether Instagram’s Platform Policy—a policy that generally allows developers and website operators to use APIs, plugins, code, and other technology to retrieve data from Instagram—was broad enough to cover the embedding. The court found that the question was sufficiently ambiguous that summary judgment for neither side was appropriate. Although Instagram’s current policies plainly bar embedding without the consent of the original poster, the terms of the policy in existence at the time contained contradictory language that “sufficiently muddied the waters as to precisely what a user of Instagram may do with user content.”

Similarly, the court found, a reasonable factfinder might conclude that Instagram implicitly granted—or alternatively, did not grant—a license to Newsweek by virtue of its conduct. For users of its API platform such as Newsweek, Instagram promoted the capability to “embed your own content as well as photos and videos from public profiles.” And indeed, all Newsweek had to do in order to embed the post in question was to click the “embed” button available to it, as a platform user, next to the post. Thus, it may well have been reasonable for Newsweek to understand that Instagram intended for platform users to be able to embed and share public Instagram content without the permission of the underlying poster. In any event, this would have to be resolved by a jury.

Fair use. Finally, the court also deferred for jury consideration the question of whether Newsweek’s conduct was covered by fair use. A central question, the court noted, was whether the magazine’s use of the photo was transformative, in the sense that it “merely superseded the objects of the original creation, or instead added something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Since Newsweek did not expressly comment on the photograph itself, but rather appeared to use the photo to illustrate its own story about the lake phenomenon, its position appeared weak—but not too implausible to go to the jury. So too would factual questions about whether Newsweek acted in good faith, the extent of creativity demonstrated in the photo, and the effect of the embedding on the photographer’s ability to license the work himself. A jury would, again, have to resolve the issues.

The 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

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