Unintended Sublicenses Through Social Media: “Embedding” and the Pitfalls of Public Posts

By Deborah Gubernick and Gabrielle Morlock

In this era of social media and image sharing, it is not uncommon for account holders to make their profiles public in attempt to garner as many followers and as much attention as possible. Social media platforms can be a form of relatively low-cost personal and corporate advertising. However, as a photographer recently learned, using social media platforms can have unintended consequences that compromise intellectual property rights.

Stephanie Sinclair, a professional photographer who is the exclusive U.S. copyright owner of a photo titled “Child, Bride, Mother/Child Marriage in Guatemala,” posted a copy of her photograph on her website and public Instagram account. She agreed to Instagram’s standard terms and conditions when creating her Instagram account, but Sinclair asserts she did not intend to grant sublicenses by doing so. Yet, the United States District Court, Southern District of New York held in Sinclair v. Ziff Davis, LLC and Mashable, Inc. that Sinclair had in fact granted a valid sublicense that allowed Mashable—a global, multi-platform media and entertainment company—the right to use embedded images of her photographs.

Prior to the lawsuit, Mashable requested a license to Sinclair’s photo in exchange for $50.00. Sinclair declined the request. Mashable nonetheless published an article that “embedded” Sinclair’s photo. “Embedding” allows an image to be displayed on a website through coding, while the image is hosted on a third-party server. The embedding process that Instagram uses is an “application programming interface” (API). Through this API, Instagram users can access and share content posted by other Instagram users with public accounts, including by embedding the public content on the user’s separate website, which is what Mashable did with Sinclair’s photograph.

Sinclair became aware of Mashable’s use of the photograph and demanded that Mashable (and its parent, Ziff Davis) remove her photo. Mashable refused. Sinclair sued Mashable and Ziff Davis. The court held that Sinclair granted Instagram the right to sublicense the photograph, and that it properly exercised its right by granting a sublicense to Mashable to display the photograph. By accepting Instagram’s Terms of Use upon creating an account, Sinclair granted Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to any content she posts on Instagram (subject to Instagram’s Privacy Policy). Further, designating an Instagram account as “public,” as did Sinclair, allows other users to embed publicly posted content to their websites using Instagram’s API.

Ultimately, Sinclair surrendered intellectual property rights by not fully comprehending the extent to which sublicenses can be created when using social media and associated terms of use. Intellectual property right holders may want to consider taking caution when posting content and carefully reviewing terms of use before posting content on any website or online or digital platform. Instagram users may also want to consider changing account settings to “private” instead of “public” to limit unintended “embedding” of their content by third parties.

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