Photographers and Visual Artists Beware! You May Lose Exclusive Control Of Your Copyrighted Work By Posting on Social Media
Many photographers and others involved in the visual arts often post their works on Instagram and other social media sites as a way to advertise and promote themselves, showcase their works, and try to license or sell the posted works. In most cases, the posted works are protected by copyright in favor of the author.
Among the rights granted to to the author of a copyrighted work are the exclusive right to control the reproduction and copying of the work, the exclusive right to control the distribution of the work (including to license the work), and the exclusive right to control the display of the copyrighted work. In a recent case from a federal court in New York that sent shockwaves through the copyright world, the court held that a third party who “embedded” a link to a photograph posted on the public portion of Instagram did not infringe the copyright owner’s exclusive rights because the terms and conditions for the use of Instagram grant Instagram the right to sublicense works posted on the public portion of Instagram.
The case in question is Sinclair v. Ziff Davis, LLC, Case No. 18-CV-790 (KMW), decided by Judge Kimba Wood of the United States District Court for the Southern District of New York on April 13, 2020, often referred to as the “Mashable” case because the website that was alleged to have infringed the plaintiff’s copyright was the Mashable site.
In the Mashable case, the plaintiff was a professional photographer who owned the exclusive copyright in a photograph (the “Photograph”) titled “Child, Bride, Mother/Child Marriage in Guatemala.” The plaintiff posted a copy of the Photograph to her Instagram account, which was a “public” account, viewable by anyone.
Mashable offered the plaintiff $50.00 to license the Photograph for use in connection with an article about female photographers, which the plaintiff rejected. Mashable nevertheless featured the Photograph in its article even though the plaintiff did not give Mashable permission or consent to use the Photograph, and in fact rejected Mashable’s attempt to obtain a license.
Mashable used a technical process called “embedding” to incorporate the Photograph into its article. Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party’s server, into the coder’s website. When an individual visits a website that includes an “embed code,” the user’s internet browser is directed to retrieve the embedded content from the third-party server and display it on the website. As a result of this process, the user sees the embedded content
on the website, even though the content is actually hosted on a third-party’s server, rather than on the server that hosts the website.
Judge Wood held that Mashable did not infringe the plaintiff’s copyright because the plaintiff granted Instagram the right to sublicense the Photograph when the plaintiff created her Instagram account and agreed to Instagram’s terms and conditions, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.
As Judge Wood explained her decision, the terms and conditions for use of the public portion of the Instagram site state that “by posting content to Instagram, the user “grant[s] to Instagram a nonexclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content
that you post.” Based on this language, Judge Wood found that, because Plaintiff uploaded the Photograph to Instagram and designated it as
“public,” she agreed to allow Mashable, as Instagram’s sublicensee, to embed the Photograph in its website so there was no copyright infringement.
There are a number of important take-aways from the Mashable case:
1. Although the Mashable case involved the Instagram terms and conditions, virtually all social media sites — like Twitter, Facebook, etc. — have the same or similar terms and conditions which allow sublicensing, so the Mashable case may be extended to infringement claims based on works posted on other social media sites.
2. The Mashable case is limited to situations where the accused infringer displayed the copyrighted work by embedding the work on its website. Traditional copyright infringement analysis still will apply in those cases where there is actual copying – in other words, where the accused infringer publishes a digital copy of a copyrighted work on its website rather than just using embedding.
3. It is not clear how far the Mashable case will extend. The Mashable case is a trial court decision that has no binding effect on any other court in the United States. There have not been any cases outside the Southern District of New York that have addressed the same issue as the Mashable case. In another recent decision from the Southern District of New York on June 1, 2020 that also involved embedding a copyrighted photograph from Instagram (McGucken v. Newsweek, LLC, Case No. 19-CIV-9617 (KPF)), Judge Katherine Polk Failla confirmed the Mashable holding but refused to dismiss her case because she found there was no evidence of a sublicense between Instagram and Newsweek. The McGucken decision is interesting and curious because the facts were virtually the same as the Mashable case.
4. Finally, and perhaps most importantly, Instagram itself has expressly stated and made clear that users of its embedding feature don’t get licenses from Instagram to display copyrighted photographs of others.
So what does this all mean? For photographs and visual artists, the safest way to protect their copyrights is to switch their Instagram and other social media accounts to private until we have more clarity about the reach of the Mashable decision. But of course, such a switch will prevent users on the Instagram platform from seeing their content, which can be a career liability for professionals. Unfortunately, right now, Instagram does not offer an option to make content public inside the Instagram platform while disabling embedding on external websites.
For media companies and those who want to display photographs and other works posted by others on Instagram and other social media sites, the decision is clear: do not rely on the Mashable decision to shield you from liability for copyright infringement even if you intend to just embed the work. Instead, get permission from the artist to display his or her work and do not display if the artist says no.
Trademark Trial And Appeal Board Confirms That A Social Media Website Is Not Trademark Use
On October 26, 2016, we posted about a decision from the Trademark Trial and Appeal Board (TTAB) finding that the use of a Twitter handle, by itself, was not sufficient use to establish trademark rights. You can find our October 26 post here: https://affinitylaw.wordpress.com/2016/10/26/a-social-media-handle-alone-may-not-be-sufficient-use-to-establish-trademark-rights/
In the recent case of In Re Florists’ Transworld Delivery, the TTAB confirmed that a social media website, by itself, is not sufficient use to support trademark rights. In In Re Florists’ Transworld Delivery, the world-famous florist FTD sought to register the trademark “Say It Your Way” for on-line retail store services and creating an on-line community for registered users to interact with other users. In support of its application, FTD submitted a copy of its Twitter page.
The Trademark Office refused registration on the ground that FTD’s Twitter page was not sufficient evidence of trademark use. On appeal, the TTAB agreed with the Trademark Office, explaining that a social media website publication like FTD’s Twitter page was neither an advertisement for FTD’s services nor FTD actually providing the services and thus was not sufficient trademark use to support registration.
The lesson to be learned is that while social media advertising can be critical to the development of a brand or trademark, social media advertising alone is not enough to create trademark rights. Instead, there must be some other way (either on the Web or brick & mortar) by which the trademark owner actually offers its goods and/or services to the public.
A Social Media Handle Alone May Not Be Sufficient Use To Establish Trademark Rights
There can be no doubt that individuals and businesses are becoming increasingly reliant on social media like Twitter, Instagram, Snapchat and the like to market and sell their products and services. As users of these social media platforms are aware, the individual users are identified by unique “handles” which really are code names. For example, our firm’s Twitter handle is “@AffinityLaw.” The question therefore arises whether a use of a social media handle is sufficient trademark use in and of itself to create trademark rights in the word/phrase comprising the handle.
In its recent decision in Nazon v. Ghiorse (Opposition No. 91216729), the federal Trademark Trial and Appeal Board (TTAB) addressed the issue of whether a Twitter handle constitutes sufficient use to create trademark rights. The claimed trademark in the Nazon case was “Sextrology” for astrological services. The Opposer opposed an application to register the trademark “Sexy Astrology” for similar services. Given the similarity of the marks and services, a principal issue was who had priority of use. Among her other arguments, the Opposer claimed that she had priority of use because she had used the word “sextrology” in her Twitter handle. The TTAB rejected this argument, finding that the use of “sextrology” as part of the Opposer’s Twitter handle did not constitute sufficient use to create trademark rights.
In so holding, the TTAB was clear that its finding was based on the absence of evidence that the Opposer was actually offering any services using her Twitter handle. Consequently, it remains to be seen whether the Nazon case announces a bright line rule that no social media handle can create trademark rights (which is not likely) or, more likely, whether the Nazon case stands for the proposition that a social media handle by itself does not confer trademark rights and some additional trademark use in conjunction with the handle is necessary to create rights.
Insights 