Social media platform sub licenses photographer’s copyrighted work. SINCLAIR v. ZIFF DAVIS

Social media platform sub licenses photographer’s copyrighted work. SINCLAIR v. ZIFF DAVIS

A copyright is a set of exclusive rights granted to the creator of a new work of expression.  When a creator fixes a work in a tangible medium they are automatically granted a copyright to the work.  The creator can strengthen the rights associated with the copyright in the United States by registering the work with the United States Copyright Office, but registration is required for a copyright to be granted.  The owner of a copyright is granted the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original, if someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  When a copyright owner feels that their copyright is being infringed on they can request an injunction and damages.  But, an accusation of copyright infringement is just the beginning of the process.

To prove copyright infringement, a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.  This kind of copying can be proven either with direct evidence that the defendant actually copied the work, or by showing that the defendant (i) had access to the work and (ii) that the works are substantially similar.  This is all based on the assumption that the defendant’s copying was done without permission.  If it turns out that the defendant had a license to copy the work, either explicit or implied, then copyright infringement has not occurred.

Social media is ubiquitous today.  Many people use social media to keep in touch with friends or promote themselves professionally.  When a user signs up for a social media platform, they must agree to a lengthy Terms of Use agreement that few people actually take the time to read.  A common section found in social media Terms of Use agreements is that the user grants the social media platform a right to republish media posted by the user.  While this may seem trivial to users that are using social media for fun, it can have an unintended consequence for professionals using social media to promote themselves.  Professional photographers make their income selling photographs and protect that income using copyright law.  If a social media platform can license photographs uploaded by a professional photographer, that can hurt a photographer’s ability to make a living.

The question then becomes, when a copyright owner uploads their work to a social media platform, can that work be licensed without the permission of the copyright owner?

STEPHANIE SINCLAIR, v. ZIFF DAVIS, LLC, and MASHABLE, INC., 1:18-cv-00790 (S.D.NY 2020) is a case where a post to a social media platform undermined a copyright owner’s ability to claim copyright infringement.

Plaintiff in this case is a professional photographer who owns a copyright in the image titled “Child, Bride, Mother/Child Marriage in Guatemala”.  Plaintiff maintains a publicly-searchable website to showcase her photographs to potential customers.  Plaintiff also maintains an account on Instagram, a photograph- and video-sharing social media platform.  Plaintiff posted a copy of the Photograph to her Instagram account, which is a “public” account, viewable by anyone.

Ziff Davis owns Defendant Mashable, a media and entertainment platform that operates a news website.  In 2016, an employee of Defendant contacted Plaintiff via email and sought to license the Photograph for use in an article about female photographers, to be published on Defendant’s website. Plaintiff was offered $50 for licensing rights to the
Photograph.  Plaintiff did not accept the offer.  Later in 2016, Defendant published an article about female photographers on its website, which included a copy of Plaintiff’s photograph.  Defendant’s website used a method to embed Plaintiff’s Instagram post in the Defendant’s article.  This embedding was done according to Instragram’s policies.

Plaintiff asked that Defendant take down her photograph, Defendant refused and Plaintiff sued for copyright infringement.  Defendants claimed that they used the Photograph pursuant to a valid sublicense from Instagram, so its use of the Photograph does not infringe Plaintiff’s copyright. Defendant motioned for dismissal.

The trial court noted a copyright owner who permits a licensee to grant sublicenses cannot bring an infringement suit against a sublicensee, so long as both licensee and sublicensee act, respectively, within the terms of their license and sublicense.  The trial court found that Plaintiff granted Instagram the right to sublicense the Photograph, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph. The trial court held that Mashable used Plaintiff’s photograph pursuant to a valid sublicense from Instagram, and dismissed the case.

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