Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 1 of 31
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`ELLIOT McGUCKEN,
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`NEWSWEEK LLC,
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`Plaintiff,
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`-v.-
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`Defendant.
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`19 Civ. 9617 (KPF)
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`OPINION AND ORDER
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`KATHERINE POLK FAILLA, District Judge:
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`Plaintiff Elliot McGucken is a fine art photographer based in Los Angeles,
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`California. In March 2019, Plaintiff visited Death Valley National Park to take
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`photographs. During that trip, Plaintiff photographed a rare ephemeral lake
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`that appeared in the park and subsequently shared that photograph on
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`Instagram. Defendant Newsweek published an article about the ephemeral
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`lake, and embedded in the article the photograph that Plaintiff had posted on
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`Instagram. Thereafter, Plaintiff brought this action for copyright infringement,
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`alleging that Defendant had reproduced and displayed his photograph on its
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`website without his consent.
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`By Opinion and Order dated June 1, 2020, the Court dismissed
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`Plaintiff’s claims for contributory and vicarious infringement, but allowed his
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`claim for direct copyright infringement and his prayer for enhanced damages to
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`go forward. See McGucken v. Newsweek LLC, 464 F. Supp. 3d 594 (S.D.N.Y.
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`2020) (“McGucken I”), reconsideration denied, No. 19 Civ. 9617 (KPF), 2020 WL
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`6135733 (S.D.N.Y. Oct. 19, 2020) (“McGucken II”). Now before the Court are
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`the parties’ cross-motions for summary judgment with respect to Plaintiff’s
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 2 of 31
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`remaining claim. Plaintiff asks this Court to find Defendant liable for copyright
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`infringement and willful infringement, such that the case would proceed to trial
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`solely on the issue of damages. Defendant asks this Court to find as a matter
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`of law that the embedding of the Instagram post did not actually infringe any of
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`Plaintiff’s exclusive rights under the Copyright Act; that it had a license to
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`embed Plaintiff’s Instagram post; or, alternatively, that its use of the Instagram
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`post constituted fair use. For the reasons that follow, the Court denies both
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`motions.
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`A.
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`Factual Background
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`1.
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`The Photograph
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`BACKGROUND1
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`In March 2019, Plaintiff, a fine art photographer based in Los Angeles,
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`California, posted several photographs of the ephemeral lake he observed in
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`1
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`This Opinion draws on evidence from Plaintiff’s Statement of Undisputed Facts
`Pursuant to Local Civil Rule 56.1 (“Pl. 56.1” (Dkt. #56)); Defendant’s Response and
`Counter-Statement of Material Facts Pursuant to Local Civil Rule 56.1(b) (“Def. 56.1
`Reply” (Dkt. #68 at 8-13)); Defendant’s Statement of Undisputed Material Facts
`Pursuant to Local Civil Rule 56.1(a) (“Def. 56.1” (Dkt. #68 at 1-8)); and Plaintiff’s
`Response and Counter-Statement of Material Facts Pursuant to Local Civil Rule 56.1(b)
`(“Pl. 56.1 Reply” (Dkt. #72)). The Court also considers the Declaration of Elliot
`McGucken in support of Plaintiff’s motion (“McGucken Decl.” (Dkt. #57)) and the
`exhibits attached thereto; the Declaration of Scott Alan Burroughs in support of
`Plaintiff’s motion (“Burroughs Decl.” (Dkt. #60)) and the exhibits attached thereto; and
`the Declaration of Sara Gates in support of Defendant’s motion (“Gates Decl.” (Dkt.
`#67)) and the exhibits attached thereto.
`For ease of reference, the Court refers to Plaintiff’s Memorandum of Law in Support of
`His Motion for Summary Judgment as “Pl. Br.” (Dkt. #55); to Defendant’s Memorandum
`of Law in Support of Its Cross-Motion for Summary Judgment and in Opposition to
`Plaintiff’s Motion for Summary Judgment as “Def. Br.” (Dkt. #65); to Plaintiff’s
`Memorandum of Law in Opposition to Defendant’s Cross-Motion for Summary
`Judgment and Reply to Defendant’s Opposition to Plaintiff’s Motion for Summary
`Judgment as “Pl. Opp.” (Dkt. #71); and to Defendant’s Reply Memorandum of Law in
`Further Support of Its Cross-Motion for Summary Judgment as “Def. Reply” (Dkt. #73).
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`2
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 3 of 31
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`Death Valley, California to his public Instagram account. (Pl. 56.1 ¶ 1; Def.
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`56.1 ¶¶ 2, 11). Several news outlets used one or more of Plaintiff’s
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`photographs in their coverage of the ephemeral lake. (Def. 56.1 ¶ 19).
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`Defendant contacted Plaintiff to request permission to upload one of Plaintiff’s
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`photographs of the ephemeral lake (the “Photograph”) to the Newsweek website,
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`but Plaintiff did not respond. (Def. 56.1 ¶ 25; McGucken Decl., Ex. 3).
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`On March 14, 2019, Defendant published on its website an article titled
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`“Huge Lake Appears in Death Valley, One of the Hottest, Driest Places on
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`Earth” (the “Article”). The Article incorporated one of Plaintiff’s Instagram posts
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`of the ephemeral lake (the “Instagram Post”) through a process known as
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`embedding. (See Gates Decl., Ex. K).2 On April 1, 2019, Plaintiff registered the
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`Photograph with the United States Copyright Office and received the
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`registration number VA 2-145-698. (McGucken Decl., Ex. 2). Two days later,
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`on April 3, 2019, Plaintiff’s counsel sent a cease-and-desist letter to Defendant,
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`providing notice that Defendant’s use of the Photograph infringed on his
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`copyright and requesting that Defendant remove the Photograph from the
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`2
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`As explained by Judge Kimba Wood, and as this Court quoted in McGucken I,
`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.
`Sinclair v. Ziff Davis, LLC, No. 18 Civ. 790 (KMW), 2020 WL 1847841, at *1 (S.D.N.Y.
`Apr. 13, 2020) (internal citations omitted), adhered to in part on reconsideration,
`2020 WL 3450136 (S.D.N.Y. June 24, 2020).
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`3
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`Article. (Burroughs Decl., Ex. 5). It is unclear whether Defendant, in fact,
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`received this letter, because Defendant’s email system returned to Plaintiff a
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`message indicating that there was a “permanent error” associated with the
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`email address to which Plaintiff had sent the letter. (Id. at ¶ 4; see also id.,
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`Ex. 6). Plaintiff’s counsel attempted to send the letter to this email address two
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`additional times, but received the same “permanent error” response each time.
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`(Id. at ¶ 4). Defendant did not remove the Photograph from its site until after
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`this lawsuit was filed. (Id.).
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`2.
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`Instagram’s Agreements and Policies3
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`As in McGucken I, resolution of the parties’ cross-motions requires
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`discussion of the various agreements governing the parties’ use of Instagram.
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`All Instagram users must agree to Instagram’s Terms of Use in order to
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`use the platform. (Gates Decl., Ex. Q at 2). The Terms of Use provide, in
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`relevant part:
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`[W]hen you share, post, or upload content that is
`covered by intellectual property rights …, you hereby
`grant to [Instagram] a non-exclusive, royalty-free,
`transferable, sub-licensable, worldwide license to host,
`use, distribute, modify, run, copy, publicly perform or
`display, translate, and create derivative works of your
`content (consistent with your privacy and application
`settings).
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`(Id. at 6).
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`3
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`The Court quotes from the versions of these documents in effect during the relevant
`time period.
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`4
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 5 of 31
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`The Terms of Use also provide that users “must agree to the Data Policy
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`to use Instagram.” (Gates Decl., Ex. Q at 4). The Data Policy describes how
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`information on Instagram is shared with others and informs users that,
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`When you share and communicate using our Products,
`you choose the audience for what you share. … Public
`information can be seen by anyone, on or off our
`Products[.] This includes your Instagram username
`[and] any
`information you share with a public
`audience[.] You, other people using [Instagram], and we
`can provide access to or send public information to
`anyone on or off our products, including … through
`tools and APIs. Public information can also be seen,
`accessed, reshared, or downloaded through third-party
`services such as search engines, APIs, and offline media
`such as TV, and by apps, websites, and other services
`that integrate with our Products.
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`(Id., Ex. R at 8).4
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`The use of Instagram’s API is subject to Instagram’s Platform Policy.
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`(Gates Decl., Ex. Q at 7 (“[Y]our use of our API is subject to our Platform
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`Policy.”)). The Platform Policy defines Instagram’s “Platform” as “a set of APIs,
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`[Software Development Kits (‘SDKs’)], plugins, code, specifications,
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`documentation, technology, and services (such as content) that enable others,
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`including application developers and website operators, to retrieve data from
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`Instagram or provide data to [Instagram].” (See id., Ex. S (“Platform Policy”) at
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`2). According to the Platform Policy, the Platform is provided “to help
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`broadcasters and publishers discover content, get digital rights to media, and
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`4
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`An “API” or “application programming interface,” is a service that “enable[s] users to
`access and share content posted by other users whose accounts are set to ‘public’
`mode.” McGucken I, 464 F. Supp. 3d at 601 n.3 (quoting Sinclair, 454 F. Supp. 3d at
`344).
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 6 of 31
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`share media using web embeds.” (Id.). The Platform Policy instructs users to
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`“[c]omply with any requirements or restrictions imposed on usage of Instagram
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`user photos and videos … by their respective owners,” and also prohibits users
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`from “provid[ing] or promot[ing] content that violates any rights of any person,
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`including but not limited to intellectual property rights[.]” (Id. at 3-4). The
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`Platform Policy further provides that the Platform is “licensed to you on a
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`worldwide (except as limited below), non-exclusive, nonsublicenseable basis in
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`accordance with these terms,” and notes that “User Content is owned by users
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`and not by Instagram.” (Id. at 5).
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`B.
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`Procedural Background
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`The Court assumes familiarity with the procedural history detailed in the
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`Court’s June 1, 2020 Opinion and Order. See McGucken I, 464 F. Supp. 3d at
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`601-02. In that Opinion and Order, the Court granted Defendant’s motion to
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`dismiss Plaintiff’s claims for contributory and vicarious infringement; denied
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`Defendant’s motion to dismiss Plaintiff’s claim for direct copyright infringement
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`and prayer for enhanced damages; and denied Plaintiff’s request for leave to
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`amend. See id. at 611.
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`On June 15, 2020, Defendant filed a motion for reconsideration of the
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`Court’s June 1, 2020 Opinion and Order (Dkt. #36-37), which motion was
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`denied by this Court in an Opinion and Order dated October 19, 2020 (Dkt.
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`#41). Defendant filed its answer to the Amended Complaint on November 9,
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`2020. (Dkt. #42). On November 17, 2020, the Court endorsed the parties’
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`proposed Civil Case Management Plan, approving the parties’ proposed
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 7 of 31
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`discovery timeline and directing the parties to submit a joint status letter on or
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`before March 25, 2021. (Dkt. #45). In that joint letter, the parties informed
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`the Court that each party intended to move for summary judgment within 30
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`days of the close of expert discovery. (Dkt. #51). The Court subsequently held
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`a telephone conference with the parties, during which it set a briefing schedule
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`for the parties’ contemplated motions. (See Minute Entry for March 30, 2021).
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`Plaintiff filed his motion for summary judgment and accompanying
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`declarations on May 21, 2021. (Dkt. #54-60). Defendant filed its opposition
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`and cross-motion for summary judgment on June 21, 2021. (Dkt. #64-68).
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`Plaintiff filed his combined reply brief in further support of its motion for
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`summary judgment and opposition to Defendant’s cross-motion on July 9,
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`2021. (Dkt. #71-72). Finally, Defendant filed its reply brief in further support
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`of its cross-motion for summary judgment on July 23, 2021. (Dkt. #73).
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`Accordingly, the cross-motions for summary judgment are fully briefed and ripe
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`for the Court’s decision.
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`DISCUSSION
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`A.
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`Summary Judgment Under Fed. R. Civ. P. 56
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`Under Federal Rule of Civil Procedure 56(a), a “court shall grant
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`summary judgment if the movant shows that there is no genuine dispute as to
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`any material fact and the movant is entitled to judgment as a matter of law.”
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`Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322
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`(1986).5 A genuine dispute exists where “the evidence is such that a
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`reasonable jury could return a verdict for the nonmoving party.” Fireman’s
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`Fund Ins. Co. v. Great Am. Ins. Co. of N.Y., 822 F.3d 620, 631 n.12 (2d Cir.
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`2016) (internal quotation marks and citation omitted). A fact is “material” if it
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`“might affect the outcome of the suit under the governing law[.]” Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`While the moving party “bears the initial burden of demonstrating ‘the
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`absence of a genuine issue of material fact,’” ICC Chem. Corp. v. Nordic Tankers
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`Trading a/s, 186 F. Supp. 3d 296, 301 (S.D.N.Y. 2016) (quoting Celotex, 477
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`U.S. at 323), the party opposing summary judgment “must do more than
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`simply show that there is some metaphysical doubt as to the material facts,”
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`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); see
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`also Brown v. Henderson, 257 F.3d 246, 252 (2d Cir. 2001). Rather, the non-
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`moving party “must set forth specific facts showing that there is a genuine
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`issue for trial.” Parks Real Estate Purchasing Grp. v. St. Paul Fire & Marine Ins.
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`Co., 472 F.3d 33, 41 (2d Cir. 2006) (quoting Fed. R. Civ. P. 56(e)).
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`“When ruling on a summary judgment motion, the district court must
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`construe the facts in the light most favorable to the non-moving party and
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`5
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`The 2010 Amendments to the Federal Rules of Civil Procedure revised the summary
`judgment standard from a genuine “issue” of material fact to a genuine “dispute” of
`material fact. See Fed. R. Civ. P. 56, advisory comm. notes (2010 Amendments) (noting
`that the amendment to “[s]ubdivision (a) ... chang[es] only one word — genuine ‘issue’
`becomes genuine ‘dispute.’ ‘Dispute’ better reflects the focus of a summary-judgment
`determination.”). This Court uses the post-amendment standard, but continues to be
`guided by pre-amendment Supreme Court and Second Circuit precedent that refer to
`“genuine issues of material fact.”
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 9 of 31
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`must resolve all ambiguities and draw all reasonable inferences against the
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`movant.” Dallas Aerospace, Inc. v. CIS Air Corp., 352 F.3d 775, 780 (2d Cir.
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`2003). In considering “what may reasonably be inferred” from evidence in the
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`record, however, the court should not accord the non-moving party the benefit
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`of “unreasonable inferences, or inferences at war with undisputed facts.” Berk
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`v. St. Vincent’s Hosp. & Med. Ctr., 380 F. Supp. 2d 334, 342 (S.D.N.Y. 2005)
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`(quoting Cnty. of Suffolk v. Long Island Lighting Co., 907 F.2d 1295, 1318 (2d
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`Cir. 1990)). Moreover, “[t]hough [the Court] must accept as true the allegations
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`of the party defending against the summary judgment motion, ... conclusory
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`statements, conjecture, or speculation by the party resisting the motion will not
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`defeat summary judgment.” Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir.
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`1996) (internal citation omitted) (citing Matsushita, 475 U.S. at 587; Wyler v.
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`United States, 725 F.2d 156, 160 (2d Cir. 1983)); accord Hicks v. Baines, 593
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`F.3d 159, 166 (2d Cir. 2010). “When evaluating cross-motions for summary
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`judgment, the Court reviews each party’s motion on its own merits and draws
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`all reasonable inferences against the party whose motion is under
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`consideration.” Gustavia Home, LLC v. Hoyer, 362 F. Supp. 3d 71, 78 (E.D.N.Y.
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`2019) (citing Morales v. Quintel Entm’t, Inc., 249 F.3d 115, 121 (2d Cir. 2001)).
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`B.
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`Plaintiff’s Copyright Claim Is Not Amenable to Summary Judgment
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`Plaintiff’s remaining claim for copyright infringement arises out of
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`Defendant’s embedding of his Instagram Post in the Article. In his motion for
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`summary judgment, Plaintiff asks the Court to find Defendant liable for
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`copyright infringement as a matter of law. Defendant makes three arguments
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 10 of 31
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`in defense: (i) the embedding of the Instagram Post did not actually infringe any
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`of Plaintiff’s exclusive rights under the Copyright Act; (ii) Defendant had a
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`license to embed the Instagram Post; and (iii) Defendant’s use of the Instagram
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`Post constituted fair use. The Court begins by providing a high-level overview
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`of the Copyright Act and of the elements of Plaintiff’s copyright infringement
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`claim, before proceeding to assess each of Defendant’s proffered defenses to
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`that claim.
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`1.
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`Applicable Law
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`In order to establish a claim of copyright infringement, “a plaintiff with a
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`valid copyright must demonstrate that: [i] the defendant has actually copied
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`the plaintiff’s work; and [ii] the copying is illegal because a substantial
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`similarity exists between the defendant’s work and the protectible elements of
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`plaintiff’s.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57,
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`63 (2d Cir. 2010) (internal citation omitted). It is undisputed that Plaintiff
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`holds the copyright to the Photograph.
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`The primary source of federal copyright law is the Copyright Act of 1976,
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`17 U.S.C. §§ 101-810, which gives a copyright owner several “exclusive rights.”
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`Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 588 (S.D.N.Y.
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`2018) (quoting 17 U.S.C. § 106(5)). Section 106 of the Act defines the
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`“exclusive rights” granted by federal copyright law, which consist of the rights
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`“to do and to authorize” the reproduction, distribution, performance, and
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`display of a work, and the creation of derivative works based on a work. In re
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`Jackson, 972 F.3d 25, 43 (2d Cir. 2020) (quoting 17 U.S.C. § 106). To “display”
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`a work, under the Act, is to “show a copy of it, either directly or by means of a
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`film, slide, television image, or any other device or process.” Goldman, 302 F.
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`Supp. 3d at 588-89 (emphasis added) (quoting 17 U.S.C. § 101). A copyright
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`holder has the exclusive right to “transmit or otherwise communicate ... a
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`display of the work ... to the public, by means of any device or process.” Id. at
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`589 (quoting 17 U.S.C. § 101). The Act further defines “device or process” as
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`“one now known or later developed.” 17 U.S.C. § 101.
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`2.
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`Defendant “Displayed” Plaintiff’s Work
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`For its first argument in defense, Defendant claims that it is not liable for
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`copyright infringement because it did not actually “display” Plaintiff’s work as
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`that term is understood in copyright law. (Def. Br. 7). On this point,
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`Defendant argues that Instagram showed a copy of Plaintiff’s work, based on
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`Plaintiff’s posting of the Photograph to Instagram; and that Defendant merely
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`copied Instagram’s embed code, which consists of HTML directions to the
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`Instagram Post. (Id.; see also Def. Reply 1 (“The use of embed code, which is
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`not a ‘copy’ capable of containing a copyrighted work, is not a public display
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`but merely instructions on how to find the content, the same way it would not
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`be a public display to provide someone with directions for how to see an
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`artwork by Marc Chagall on display on the walls of the Metropolitan Museum
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`of Art.”)). In support of this argument, Defendant relies on the “server test”
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`established by the Ninth Circuit. (Def. Br. 8 (citing Perfect 10, Inc. v.
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`Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)). Under that test, a website
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`publisher displays an image by “using a computer to fill a computer screen
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`with a copy of the photographic image fixed in the computer’s memory.” Perfect
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`10, Inc., 508 F.3d at 1160. In contrast, when a website publisher embeds an
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`image, HTML code merely “gives the address of the image to the user’s
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`browser,” and the browser “interacts with the [third-party] computer that
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`stores the infringing image.” Id. at 1161. Because the image remains on a
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`third-party’s server and is not fixed in the memory of the infringer’s computer,
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`embedding does not qualify as “displaying” under the server test. Id. at 1159.
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`This Court rejects Defendant’s argument. For starters, it notes that the
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`server test has not been widely adopted outside of the Ninth Circuit, see
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`Goldman, 302 F. Supp. 3d at 591, and that other courts have persuasively
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`argued that such a test may be “contrary to the text and legislative history of
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`the Copyright Act,” Nicklen v. Sinclair Broad. Grp., Inc., 551 F. Supp. 3d 188,
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`2021 U.S. Dist. LEXIS 142768, at *12 (S.D.N.Y. July 30, 2021). After all, the
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`Copyright Act defines “display” as “to show a copy of” a work, 17 U.S.C. § 101,
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`and not “to make and then show a copy of the copyrighted work.” Nicklen,
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`2021 U.S. Dist. LEXIS 142768, at *13. The Ninth Circuit’s approach, under
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`which no display is possible unless the alleged infringer has also stored a copy
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`of the work on the infringer’s computer, would seem to make the display right
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`merely a subset of the reproduction right. Id. (internal citation omitted). The
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`Copyright Act makes clear, however, that to “show a copy” is to display it. Id.
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`(citing 17 U.S.C. § 101).
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`Congress did “not intend … to freeze the scope of copyrightable
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`technology” to then-existing methods of expression. H.R. Rep. 94-1476, 47, 51
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 13 of 31
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`(1976). Specifically, in considering the display right, Congress cast a very wide
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`net, intending to include “[e]ach and every method by which the images ...
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`comprising a ... display are picked up and conveyed,” assuming that they reach
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`the public. Id. at 64. It further noted that “‘display’ would include the
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`projection of an image on a screen or other surface by any method, the
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`transmission of an image by electronic or other means, and the showing of an
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`image on a cathode ray tube, or similar viewing apparatus connected with any
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`sort of information storage and retrieval system.” Id. Indeed, an infringement
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`of the display right could occur “if the image were transmitted by any method
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`(by closed or open circuit television, for example, or by a computer system)
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`from one place to members of the public elsewhere.” Id. at 80.
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`Under the server test, “a photographer who promotes his work on
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`Instagram … surrenders control over how, when, and by whom their work is
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`subsequently shown — reducing the display right, effectively, to the limited
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`right of first publication that the Copyright Act of 1976 rejects.” Nicklen, 2021
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`U.S. Dist. LEXIS 142768, at *15. Defendant is correct that Plaintiff
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`“maintained control” over the Instagram Post in the sense that he “could (and
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`still can) take it down at any time.” (Def. Br. 10). But “it cannot be that the
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`Copyright Act grants authors an exclusive right to display their work publicly
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`only if that public is not online.” Nicklen, 2021 U.S. Dist. LEXIS 142768, at
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`*15. Therefore, the Court finds that Defendant did in fact display Plaintiff’s
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`Photograph when it embedded the Photograph in the Article. See id. at *8-16
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`(finding that news outlet “displayed” copyright owner’s video, within meaning of
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`Copyright Act, when it embedded video in online article about the video’s
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`popularity without obtaining license).
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`3.
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`Genuine Disputes of Material Fact Exist as to Whether
`Instagram Granted Defendant an Express Sublicense
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`Defendant argues as a second line of defense that even if the Court were
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`to find that Defendant “displayed” Plaintiff’s Photograph on its website, Plaintiff
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`still could not succeed on his infringement claim because Defendant had a
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`license — more specifically, a sublicense — to embed the Instagram Post in the
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`Article. (Def. Br. 12). Plaintiff responds that this claim is “demonstrably false,”
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`and that Instagram’s terms are “unambiguous” that third parties must obtain
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`permission to use Instagram content from other users. (Pl. Opp. 12-13). As
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`set forth herein, the Court cannot find in favor of either side’s position.
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`Ownership of a valid license to use a copyrighted work is generally a
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`defense to copyright infringement. See Jose Luis Pelaez, Inc. v. McGraw-Hill
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`Glob. Educ. Holdings LLC, 399 F. Supp. 3d 120, 128 (S.D.N.Y. 2019); see also
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`Spinelli v. Nat’l Football League, 903 F.3d 185, 197 (2d Cir. 2018) (“A valid
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`license to use the copyrighted work immunizes the licensee from a charge of
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`copyright infringement, provided that the licensee uses the copyright as agreed
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`with the licensor.” (internal citation and quotation marks omitted)). The
`
`existence of a license to engage in the challenged copying is “an affirmative
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`defense to a claim of copyright infringement ... that the alleged infringer must
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`plead and prove.” Sohm v. Scholastic Inc., 959 F.3d 39, 48 (2d Cir. 2020)
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`(quoting Yamashita v. Scholastic Inc., 936 F.3d 98, 104 (2d Cir. 2019)). Here,
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`the parties dispute the existence of a license, and Plaintiff argues that even if
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 15 of 31
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`Instagram’s terms could be read to grant a sublicense, Defendant breached
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`conditions precedent to the formation of that license. (See Pl. Br. 15-17; Def.
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`Br. 14-18).
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`The Terms of Use unequivocally grant Instagram a license to sublicense
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`Plaintiff’s publicly posted content. McGucken I, 464 F. Supp. 3d at 603; see
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`also Sinclair v. Ziff Davis, LLC, No. 18 Civ. 790 (KMW), 2020 WL 3450136, at *1
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`(S.D.N.Y. June 24, 2020) (“[B]y agreeing to Instagram’s Terms of Use, Plaintiff
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`authorized Instagram to grant API users … a sublicense to embed her public
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`Instagram content, as set forth in Instagram’s Platform Policy.”). But while
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`there is no dispute that Instagram had the authority to grant a sublicense to
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`Defendant, the parties vigorously dispute whether Instagram in fact exercised
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`this authority.
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`In McGucken I, this Court observed that while Instagram’s various terms
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`and policies clearly foresee the possibility of entities such as Defendant using
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`web embeds to share other users’ content (see Platform Policy at 2 (noting that
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`Instagram’s Platform exists in part “to help broadcasters and publishers
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`discover content, get digital rights to media, and share media using web
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`embeds”)), the Court declined, at the pleadings stage, to read the terms and
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`policies as granting a sublicense to embedders. See 464 F. Supp. 3d at 603-
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`04; see also McGucken II, 2020 WL 6135733, at *2-3 (denying Defendant’s
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`motion for reconsideration with respect to the Court’s determination that “there
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`was insufficiently clear language to support, in the context of a Rule 12(b)(6)
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`motion, the existence of a sublicense between Instagram and Defendant”). The
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 16 of 31
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`Court notes that the parties have not offered any evidence of a sublicense
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`between Instagram and Defendant that was not already considered in
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`McGucken I and McGucken II. Instead, the parties continue to debate the legal
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`significance of the terms of Instagram’s Platform Policy, which the Court
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`continues to find insufficiently clear to support, as a matter of law, the
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`existence of a sublicense between Instagram and Defendant.
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`The Platform Policy in place during the relevant period begins by stating,
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`“By using the Instagram Platform, you agree to this policy.” Paragraph Eight of
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`the Platform Policy, entitled “Licensed Uses and Restrictions,” reads, “The
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`Instagram Platform is owned by Instagram and is licensed to you on a
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`worldwide (except as limited below), non-exclusive, nonsublicenseable basis in
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`accordance with these terms.” (Platform Policy at 5). “Platform” is defined as
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`“a set of APIs, SDKs, plugins, code, specifications, documentation, technology,
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`and services (such as content) that enable others, including application
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`developers and website operators, to retrieve date from Instagram or provide
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`data to us.” (Id. at 2). The Court acknowledges that one plausible reading of
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`the Platform Policy is that users of the Instagram Platform possess an express
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`“worldwide” “non-exclusive, nonsublicenseable” license to use the content that
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`is posted on Instagram. However, in the very same paragraph containing this
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`reference to a license, the Platform Policy provides that “User Content is owned
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`by users and not by Instagram,” and that “[a]ll rights not expressly granted to
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`you are reserved by Instagram.” (Id. at 5). Moreover, the “terms” referenced in
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`Paragraph Eight include “represent[ing] and warrant[ing] that you own or have
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 17 of 31
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`secured all rights necessary to display, distribute and deliver all content in
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`your app or website”; and “represent[ing] and warrant[ing] that you satisfy all
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`licensing, reporting, and payout obligations to third parties in connection with
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`your app or website.” (Id.). Further, while the definition of “Platform” includes
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`the word “content,” it does not contain the defined term “User Content.” The
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`Court perceives this language as sufficiently muddying the waters as to
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`precisely what a user of Instagram may do with user content on the Platform,
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`and under what circumstances.
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`Because a reasonable factfinder could conclude that the Platform Policy
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`did not unambiguously grant Defendant a sublicense permitting it to embed
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`Plaintiff’s Instagram Post, Defendant is not entitled to summary judgment on
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`the theory that it had an express sublicense to embed Plaintiff’s post. (Cf.
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`Gates Decl., Ex. Q at 2 (unambiguously stating that “when you share, post, or
`
`upload content that is covered by intellectual property rights …, you hereby
`
`grant to [Instagram] a non-exclusive, royalty-free, transferable, sub-licensable,
`
`worldwide license[.]”)).6 Conversely, because a reasonable factfinder could
`
`6
`
`
`As noted, the Court considers only those policies in effect at the time of Defendant’s
`publication of the Photograph. The Court recognizes that since this litigation
`commenced, Instagram has changed its policies to make clear that the Platform Policy
`grants a license “only to the extent permitted in these Terms,” including a requirement
`that the embedder “obtain (and represent that you own or have secured) all rights
`necessary from all applicable rights holders to … display… content.” See
`https://developers.facebook.com/terms (last accessed March 15, 2022); see also
`Hunley v. BuzzFeed, Inc., No. 20 Civ. 8844 (ALC), 2021 WL 4482101, at *1 (S.D.N.Y.
`Sept. 30, 2021) (“[A]ccording to the Instagram Platform Policy, Instagram embed users
`are not automatically granted a license, sublicense, or implied sublicense to freely
`embed or display the photos and videos of Instagram account holders absent
`confirmation that [Defendant] received ‘all rights necessary to display the content of
`general Instagram users.’”).
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`Case 1:19-cv-09617-KPF Document 83 Filed 03/21/22 Page 18 of 31
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`conclude that the Platform Policy did grant Defendant such a sublicense,
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`Plaintiff is not entitled to summary judgment on his claim of copyright
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`infringement.
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`4.
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`Genuine Disputes of Material Fact Exist as to Whether
`Instagram Granted Defendant an Implied Sublicense
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`Defendant argues that even if the Court (or a jury) were to conclude that
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`no express sublicense existed, Instagram granted Defendant