Pic Credits- www.diyphotography.net
Introduction
One often stumbles across long drawn terms and conditions while accessing a website or creating an account that they choose to ignore and agree unconsciously. The latest cases of Sinclair v. Ziff Davis, LLC, Mashable, Inc. and McGucken v. Newsweek LLC highlight the sub-licensing terms of understanding laid down by Instagram and the plight of copyright owners. An ethical question often arises with respect to terms and conditions requiring copyright owners to sign away their licensing rights to social media platforms that permit embedding the copyrighted work by their authorised users. Consequently, while providing business and growth opportunities, should social media websites be allowed to leverage the content of copyright owners?
The practice of Embedding: Infringement or not?
The recent judgment delivered by the U.S. District Court (S.D.N.Y) in Sinclair’s Case addressed the legality of embedding and hinted towards its validity which cannot be construed as an infringement upon rights of copyright owners. Stephanie Sinclair uploaded pictures on her Instagram profile that she had designated to ‘public mode’. Mashable offered Sinclair a $50 licensing fee for the photograph which she had declined. Subsequently, defendants embedded her photograph via Instagram’s publicly available API. On non-compliance of repeated requests from Sinclair to take down the photograph, she sued Mashable for copyright infringement.
The court defined embedding as, “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.” The case was ruled in favour of the defendants with the Court holding that whenever users signs up for Instagram, they are bound by Terms of Use and Data Policy which grants Instagram “a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license” to the content that is posted on or through Instagram, when the profile is set to public mode.
However, the issue of embedding is far from being settled as in another recent judgment, Elliot McGucken v. Newsweek LLC, the same court has found that it was likely that no sublicense was actually formulated between the company (Newsweek) and Instagram, wherein the company decides to use another person’s photograph from their public profile without any authorization or fee. Despite the findings in Sinclair’s case, the court went on to take a different standpoint while stating that Instagram’s policies do not explicitly grant a sublicense and merely have the ability to do so.
The authors are of the view that Embedding violates the spirit of technological neutrality that permeates the U.S. Copyright Act, 1976. The Act explicitly covers media “now known or later developed.” The inclusion of this clause suggests that Congress intended to develop the copyright laws according to the technological advancements. Embedding encroaches upon the exclusive rights vested with the copyright owners by simply using the work without paying any fee. In Sinclair’s case, the copyright owner explicitly restricted Mashable to use her picture and despite that Mashable embedded it by circumventing her rights. This disregard towards the rights of the owner was upheld by the court by interpreting the user contract the way it did. However, in the McGucken case, the court has rightfully questioned the sublicensing terms that are incorporated by Instagram and has respected the display and reproduction rights of the owners. Subsequently, artists around the world started criticizing the practices adopted by Instagram and demanded a change in policies. Significantly, Instagram has now made it mandatory for the companies to seek the permission of the artists before embedding their work.
Application of Server Test
Server Test states that a defendant who is providing a framing or in-line hyperlink cannot be made liable for direct infringement unless the defendant also stores and supplies the copyrighted content pertaining to the link. In Perfect 10, Inc v. Amazon.Com, Inc. the court propounded that since embedding gives computer instructions to show the image as it emerged on the third party’s website, there is no copying and thus, no infringement. The court via this test held that no case for infringement can be made wherein, “… the owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner inline links to or frames the electronic information.”
In Sinclair’s case, the court did not delve into the application of the ‘Server Test’. Further, since 2017, the application of this test has been rejected by courts in different States. In Leader’s Institute v. Jackson, the Northern District Court of Texas while rejecting the Server Test explained: “the text of the Copyright Act does not make actual possession of a copy of a work a prerequisite for infringement. To display a work, someone need only show a copy of the work; a person need not actually possess a copy to display a work.” Significantly, the court in Goldman v. Breitbart News Network, held that embedding a tweet in a news article is infringing upon the copyright owner’s display rights. The court further dismissed the warnings highlighted by the defendants that a rejection of the server test would cause a chilling effect on the functionality of the internet and linking activities.
The authors would like to highlight that this change in tide is due to persistent exploitation of the work of creators and copyright owners. Their work is subjected to mass unauthorized third-party embedding and the Server Test wrongfully protects this manipulation of the reproduction rights of the owners by bringing this practice under the ambit of fair use and contractual obligations. The authors argue that this test provides a free ride to technology companies to display the original work of owners to the internet users without the consent of the creator. This has resulted in a lack of acknowledgement and revenue for the original creators. Therefore, in the absence of any particular ruling, it is important that companies must now leave it upon the artists to allow or disallow embedding.
Adhesion Contracts and the Principle of Ignorantia Juris Non Excusat
The validity of adhesion contracts on social media solely depends upon the terms of the contract entered into by the parties. These are in the form of click and browse-wrap agreements and are presented on a take-it-or-leave-it basis. Just like the Sinclair Case, this does not necessarily mean that the adherent is completely aware of the terms and conditions while accepting the contract. In Agence France Presse (AFP) v. Daniel Morel, while dealing with third party beneficiaries and sub-licensing on Twitter, the New York District Court opined that the Terms of Service stated on Twitter’s website clearly mention that the license has been granted to Twitter and the organizations/subsidiaries who are affiliated to it and does not extend to third parties like AFP. Subsequently, the court held AFP liable for copyright infringement. However, in the Sinclair Case, unlike AFP, Mashable had acted within its agreement with Instagram.
Therefore, the authors promote the view that until the conundrum of the legality of embedding is resolved, the artists must read the terms thoroughly before uploading their work. Furthermore, once the artist agrees to the terms of the contract, he cannot plead ignorance. In the Indian context, Sections 20 and 21 of the Indian Contract Act, 1872 deal with the concepts of mistake of fact and law respectively. Section 20 makes a contract void if both the parties are under a mistake concerning the issue of fact. At the same time, Section 21 states that a contract is not voidable merely because it was caused due to a mistake of parties with regard to the lex loci. The actions of artists providing licensing rights to social media websites as per terms of use fall under the latter category.
India’s position vis-à-vis embedding
Artists’ Rights
Section 2(c) of Copyright Act, 1957 defines artistic work as “a painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or a photograph”. Subsequently, Section 14(c) assigns exclusive rights to the artist; to reproduce his work in any dimension, communication of work to the public, circulation of copies, and further assignment and adaption of his work. A combined reading of Section 14(c) and Section 3 in the context of a photograph suggests that a photographer has a right to publish his work in public. Furthermore, the Bombay High Court in Kesari Maratha Trust v. Devidas Tularam Bagul held that publication of a photograph by copying it from another published material without permission of the photographer amounts to copyright infringement. Generally, if the work has been used/copied without prior permission of the artist, it constitutes infringement. However, by accepting the terms of use on social media wherein there is a sub-licensing clause for his work, the artist knowingly or not, enters a contract to license his work.
Sub-Licensing of Work
Section 30 of the Act permits the copyright owners to grant an interest in their work to any person via a written contract. In the Sinclair case, the plaintiff being the licensor granted his licensing rights to Instagram. Although there exist no explicit provisions for sub-licensing, however, according to Instagram’s terms of use, it can sub-license the work to its API users. The incorporation of exclusive terms into the agreement confers sub-licensing rights on Instagram. The court in McGucken Case did not come to a similar conclusion, however, it didn’t also reject the findings of the Sinclair Case. Therefore, even though such agreements might seem unfair to the artists, it depends solely on the courts to determine the issue. Under Indian Law, the situation might play out in a similar manner as the conundrum of embedding and copyright infringement is harmonised by Section 30 of the Copyright Act, 1957 and Section 21 of the Indian Contract Act, 1872.
Conclusion
Instagram and Facebook’s platform policies make it clear to obtain the copyright owner’s consent before using their content in a commercial sense. It is quite evident that these social media platforms take no responsibility for any such infringement. Diligence and caution shall be given due consideration when the artist is entering into agreements of such nature. However, another issue that stands in conflict with embedding could be that of inculpating third party rights. A situation may arise when the copyrighted material itself might contain infringing aspects that shall give rise to claims in future. Thus, the issue cannot resolved by merely interpreting the contract, the courts should further delve into the legality of embedding as a practice violating the rights of artists envisaged under Section 14(c) of the Copyright Act, 1957.
(This post has been authored by Ambika Dilwali and Akshit Bhardwaj, penultimate year law students at Amity Law School, Delhi)