(Reuters) - Online publishers that rely on Instagram posts for digital content should be paying close attention to a class action complaint filed last week in federal court in San Francisco.
The suit is by photographers who post copyrighted images on their Instagram pages. They contend that since 2013, Instagram and its parent, Facebook, have enabled the infringement of their copyrights by encouraging online publishers such as Buzzfeed, HuffPost, Mashable and People to embed Instagram posts in their articles.
Instagram’s embedding tool, according to the complaint, allowed these online publishers to display copyrighted images without obtaining photographers’ permission or paying a licensing fee. The prospective class, which is represented by the Duncan Firm, Hoben Law, Cera and The Law Offices of Todd M. Friedman and could include “many thousands” of photographers, claims that Instagram induced online publishers to embed links to Instagram posts in order to drive traffic – and ensuing ad revenues – to the site.
Facebook did not immediately respond to a query about the suit. Nor did spokespeople for Mashable or Meredith Corp, which owns People. A spokesman for Buzzfeed, which also owns HuffPost, declined to comment. Plaintiffs lawyer James Bartolomei of the Duncan Firm declined to provide a statement on the class complaint.
Bartolomei and other copyright lawyers have previously filed lots of suits for individual photographers who alleged that online publishers violated their copyrights by embedding Instagram posts. This case is different: It attacks the entire Instagram embedding system (or, if you prefer plaintiffs’ word, “scheme.”) To use a gardening analogy, photographers in the previous individual suits sought to cut back errant branches; in the class action, they are trying to pull up the entire tree by its roots.
The key to the photographers’ case is licensing – and they contend that recent admissions by Instagram parent Facebook prove that online publishers were not entitled to embed their copyrighted images.
This is a bit complicated. Instagram’s terms of service, as the complaint concedes, informs users that the site has a right to license third parties to embed Instagram users' posts. So online publishers facing copyright suits based on embedded Instagram posts have argued that they had a right to do so. Instagram account holders, they said, effectively granted online publishers a sublicense to their content by agreeing to Instagram's terms of service.
That argument seemed to work in April 2020 for Mashable. U.S. District Judge Kimba Wood of Manhattan dismissed a copyright suit by Pulitzer Prize-winning photojournalist Stephanie Sinclair, ruling that Instagram had granted Mashable a sublicense to embed posts containing Sinclair's copyrighted work. Mashable, she said, was exercising its right under the sublicense when it published Sinclair’s photo via an embedded Instagram post from Sinclair's account.
But those purported licensing agreements turned out to be as ephemeral as an Insta story. Several weeks after Wood's Mashable decision, U.S. District Judge Katherine Failla of Manhattan ruled in McGucken v. Newsweek that Instagram didn’t actually have a sublicensing agreement with Newsweek, despite Newsweek's contention that it did. Instagram, she said, put account holders on notice that their work might be embedded by publishers with sublicense agreements – but Newsweek hadn’t provided evidence that it had entered such an agreement.
Failla’s decision prompted Wood to revisit the Mashable decision. On reconsideration, she concluded that Mashable, like Newsweek, hadn’t shown that it had a sublicensing deal with Instagram.
In fact, a Facebook official admitted in June 2020, Instagram had not struck sublicensing deals with any online publisher. No third party was actually licensed to embed Instagram posts with copyrighted material.
The company made that concession to the tech news site Ars Technica. Ars Technica's headline summed up the impact of Facebook's surprise admission: Instagram just threw users of its embedding API under the bus.
Facebook lawyer Dale Cendali of Kirkland & Ellis confirmed the company's position on licensing online publishers to embed Instagram posts at a hearing last December in the Sinclair case against Mashable. “Facebook is free to, under its policies ... to grant such sublicenses,” Cendali told U.S. Magistrate Judge Barbara Moses of Manhattan. “But they did not do that. And they did not do that for anybody and the anybody would, of course, then include Mashable.” (Cendali, who did not respond to my email query on the photographers’ class action, demurred at the hearing when Moses asked if that meant Facebook and Instagram were, as Ars Technica said, throwing online publishers “under the bus.”) The Sinclair case settled soon after the December hearing.
The new class action argues that Instagram and Facebook seem to have deliberately left online publishers confused about whether they had entered sublicensing deals. That way, the complaint said, Instagram could "enjoy the benefits of the rampant infringements from its embedding tool," yet avoid liability for copyright claims by purporting to be "'agnostic' and 'neutral' as a service provider tech platform."
The photographers want an injunction to require Instagram to prevent or limit infringement, presumably by making it much harder for online publishers to embed Instagram posts containing copyrighted images without photographers’ consent.
Publishers have probably already become wary about embedding links to Instagram posts, following Facebook’s declaration that they aren’t sublicensed to use copyrighted images. Online news sites can also sometimes justify embedded Insta links. Last November, for instance, a federal judge on Long Island ruled that a tennis website made fair use of a copyrighted photo of tennis player Caroline Wozniacki in an embedded Instagram post from Wozniacki’s account because the post itself was news: Wozniacki had announced her retirement via Instagram.
Fair use isn’t a systemic defense for Instagram, though – and, in addition to an injunction, the photographers in the class action want damages and disgorged profits. If the class truly includes thousands of photographers, that could add up to a lot of money.
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