Embedder Beware: Common Instagram Function May Expose Third Parties to Litigation Risk

By Patrick B. Monahan

Any consumer of journalism on the internet is likely familiar with embedded social media posts, which are often used to provide examples of a trend discussed in a story or to form the basis of the story itself. Embedded posts allow website operators to insert code that links back to where those posts live on a social network’s servers while displaying those posts in a visually pleasing format on the operator’s site. The content of the embedded post remains on the social network’s servers. Because they link back to the user’s original post, providing credit in that manner, using embedded posts is often considered a more generous or ethical way to share social media content than the use of screenshots. However, as several recent cases have shown, embedding Instagram posts without the permission of the original user may have unintended consequences for the embedder.

McGucken v. Newsweek LLC

The most recent decision pertaining to this issue came in late March of this year in McGucken v. Newsweek LLC (1:19-cv-09617-KPF (S.D.N.Y. March 21, 2022)). In March of 2019 the plaintiff, photographer Elliot McGucken, posted a photo of an ephemeral lake, a rarely-occurring natural phenomenon in Death Valley National Park, to Instagram. Newsweek attempted to contact McGucken seeking permission to use one of his photos in their article but did not receive a response. Newsweek then published its article and, rather than uploading any photos to their servers, incorporated one of McGucken’s Instagram posts via embedding. After registering his copyright in the photo in question, McGucken sent a cease-and-desist letter and ultimately initiated a lawsuit for copyright infringement, claiming, among other causes of action, that Newsweek infringed his copyright in the photo by embedding the Instagram post without his permission.

Newsweek maintained that its embedding of McGucken’s Instagram post did not constitute copyright infringement. In June of 2020, the Court dismissed ancillary infringement claims brought by McGucken but refused to dismiss the central claim against Newsweek, stating that dismissing that claim at that preliminary stage would be premature.

The case continued, and in mid-2021 each party moved for summary judgment, asking the Court to resolve the case in their favor without requiring a trial. McGucken asked the Court to find that Newsweek had willfully infringed his copyright, entitling him to a higher damages in an amount (up to $150,000) to be determined later. Newsweek asked the Court to find that either (i) embedding McGucken’s post did not constitute infringement, (ii) that Newsweek had a license to embed the post, or (iii) that the embedding constituted fair use. In its decision, the Court declined to rule in favor of either party, but its decision as to Newsweek’s claims are of particular interest.

First, the Court rejected Newsweek’s argument that it is not liable for copyright infringement because it did not “display” the photo in question. Newsweek argued that because it posted only the embedding code from Instagram, and not the photo itself, Instagram was the entity displaying the photo, not Newsweek. The Court declined to apply what is known as the “server test”, derived from Ninth Circuit decision in Perfect 10, Inc. v. Amazon.com, Inc. (508 F.3d 1146 (9th Cir. 2007)), which held that embedding an image did not qualify as “displaying” under the Copyright Act because the image remained on a third-party server and was not fixed in the memory of the infringer’s computer. The McGucken Court found that McGucken’s image was in fact “displayed” by Newsweek, noting that the server test was not widely used outside of the Ninth Circuit, and pointing out that one other recent decision in the Southern District of New York, in Nicklen v. Sinclair Broad. Grp., Inc. (551 F. Supp. 3d 188 (S.D.N.Y. July 30, 2021)), had made a compelling argument that the server test runs contrary to Congress’s goals in passing the Copyright Act, in particular the broad definition of “display” and Congress’s stated intent that the Act be adapted to new technologies and circumstances.

Second, the Court declined to find that Instagram granted either an express or implied license to Newsweek to display McGucken’s photograph, holding that disputes of material fact remained to be resolved at trial. The Court found that by agreeing to Instagram’s Terms of Use, McGucken granted Instagram a license to sublicense any publicly posted content he added to the platform. However, the Court declined to agree with Newsweek’s argument that under Instagram’s Platform Policy, use of Instagram’s embedding feature granted Newsweek either an express or implied sublicense from Instagram to use McGucken’s photograph, stating that reasonable jurors could reach the conclusions sought by either party and that the issue must wait for trial. As discussed below, Instagram has since attempted to clarify its position on the matter of a sublicense for embedding, but as its statements were made after the conduct at issue in this case, the Court declined to consider them as part of its analysis.

Finally, the Court declined to find at this stage that Newsweek’s use of McGucken’s photograph was fair use, noting that the multi-factor fair use balancing test is necessarily fact-intensive and would ultimately require the input of a jury at trial.

Following the Court’s decision, the parties notified the Court on April 13, 2022 that they had reached a settlement principle in the case, and Judge Failla conditionally discontinued the case while the parties finalized the settlement terms. While the question of whether social media embedding could constitute copyright infringement will not be resolved by this case, the fact that the question persisted through the summary judgment stage underlines the litigation risk that embedding without permission can create.


Instagram’s Response to Embedding Litigation

For its part, since cases concerning embedded posts made their way into the courts, Instagram has stated that use of embedding does not grant the embedder a sublicense from Instagram to use the photo(s) in a given post, telling Ars Technica in June of 2020 that “[o]ur platforms require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content if a license is required by law.” Further to that point, in December of 2021 Instagram gave its users the option to prevent the embedding of their posts without making their accounts private, which one could argue raises the question of whether Instagram users who don’t prevent embedding are granting third parties an implied license to embed.


Takeaways and Best Practices

The issues discussed above are complex and at this stage remain unresolved, with different bodies of law in different jurisdictions. In particular, in the Southern District of New York, a growing body of decisions has rejected the server test and found that embedding social media posts without permission does violate the display right granted to a copyright holder. There is a great deal of uncertainty over what is and is not permitted under copyright law, and reducing that uncertainty should be the goal for all parties involved, whether would-be embedder or Instagram poster.

Would-be embedders should recognize that embedding without permission can be treated as infringement, potentially triggering costly litigation. Accordingly, the safest course of action is to obtain a license from any Instagram user whose post you would like to embed, making the parties’ rights and obligations clear. For photographers and other Instagram users, disabling embedding in Instagram’s recently updated sharing settings will allow you to prevent unauthorized embedding without having to make your account private. Maintaining up-to-date contact information in your Instagram bio will still allow for third parties to communicate with you about using your work.

If you have any questions about best practices in social media content sharing, have found any instances of unauthorized sharing of your content, or need help with a license, please do not hesitate to contact us!