464 F.Supp.3d 594
S.D.N.Y.2020Background
- Photographer Elliot McGucken posted a photograph of an ephemeral Death Valley lake to his public Instagram account on March 13, 2019; Newsweek embedded that Instagram post in an online article the next day without McGucken’s consent or payment.
- McGucken registered the Photograph with the Copyright Office on April 1, 2019, and sent Newsweek a cease-and-desist on April 3, 2019; Newsweek had not removed the embedded post as of October 2019.
- Instagram’s Terms, Privacy Policy, and Platform Policy grant Instagram a sublicensable license to user content and contemplate use via embeds and the API; those policies do not, on their face, show a sublicense from Instagram to a particular embedder.
- Newsweek moved to dismiss, arguing (1) it had a valid sublicense via Instagram embedding and (2) its use was fair use; it also sought dismissal of willfulness and of secondary liability claims.
- The court denied dismissal of the direct infringement claim and the fair-use defense, found McGucken plausibly pleaded willfulness for enhanced statutory damages, granted dismissal of contributory and vicarious liability claims for lack of factual allegation, and denied further leave to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Valid sublicense via Instagram embedding | McGucken argues no sublicense was granted to Newsweek; Instagram policies do not establish a sublicense to third-party embedders to defeat his claim | Newsweek contends Instagram’s Terms grant Instagram a sublicensable license and embedders exercise that sublicense when they embed public posts | Court declined to find a valid sublicense at the pleading stage: Instagram’s terms permit sublicensing, but no facts show a sublicense to Newsweek or an implied sublicense; denial of dismissal on this ground |
| Fair use of embedded Photograph | McGucken contends Newsweek’s use was non-transformative, commercial duplication that usurps market — not fair use | Newsweek contends embedding the public Instagram post in a news article is transformative and falls within news-reporting fair use | Court held fair-use was not established as a matter of law: first and fourth factors favor plaintiff (non-transformative, commercial duplication with presumption of market harm); second and third neutral; dismissal denied |
| Willfulness / enhanced statutory damages | McGucken alleges he sent a cease-and-desist and Newsweek kept the photo up, supporting willfulness | Newsweek argued plaintiff’s allegations were conclusory and insufficient to plead willfulness | Court found allegations (cease-and-desist + continued use) sufficient at this stage to plausibly plead willfulness; request to dismiss enhanced damages denied |
| Secondary liability (contributory / vicarious) and leave to amend | McGucken asserted contributory/vicarious claims against unidentified third parties but offered no factual detail | Newsweek argued the Amended Complaint contains only conclusory recitals and fails Iqbal/Twombly pleading standards | Court granted dismissal of contributory and vicarious claims for failure to plead facts; denied leave to amend because plaintiff had already amended and offered no plan to cure defects |
Key Cases Cited
- Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (establishes transformative-use inquiry in fair-use analysis)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (discusses requirement that new work alter original with new expression, meaning, or message)
- Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) (news reporting context and transformative-use considerations)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (market effect and unpublished-work considerations in fair use)
- NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004) (focus on market substitution in fourth-factor analysis)
- Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014) (purpose of Copyright Act and fair-use context)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading standard: plausibility requirement)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (limits on conclusory allegations in pleading)
- Ferdman v. CBS Interactive, Inc., 342 F. Supp. 3d 515 (S.D.N.Y. 2018) (application of fair-use factors to news use of photographs)
- Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339 (S.D.N.Y. 2017) (illustrative discussion of news reporting uses of images)