Nicklen v. Mashable, Inc.
1:20-cv-10300
S.D.N.Y.Jul 30, 2021Background:
- Paul Nicklen, copyright owner, posted a video of an emaciated polar bear to Instagram/Facebook on Dec. 5, 2017 and included licensing contact information.
- Sinclair published a news article that embedded Nicklen’s Instagram/Facebook-hosted video via the platforms’ HTML embed (API) code so the video appeared inline on Sinclair sites without user action.
- Sinclair did not obtain a license or Nicklen’s consent; Nicklen alleges Sinclair’s affiliates reposted and reembedded the Video across their station websites.
- Nicklen sued for infringement of his exclusive display (and other) rights under 17 U.S.C. § 106; Sinclair moved to dismiss arguing embedding is not a "display" and, alternatively, that the use was fair use.
- The Court denied the motion to dismiss: (1) embedding can constitute a public "display" under the Copyright Act, and (2) fair use could not be resolved on the pleadings.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does embedding a third‑party‑hosted video on a website "display" the work under the Copyright Act? | Embedding causes the video (or its images) to be seen on defendant’s site and thus is a display. | Embedding merely points the user’s browser to a third‑party server; under the Ninth Circuit "server rule" no display occurs unless defendant hosts a copy. | Embedding can be a display; court declines to adopt the server rule and holds Nicklen plausibly pleaded a display right violation. |
| Should the Ninth Circuit "server rule" (Perfect 10) govern here? | Server rule undermines statutory text and Congress’s broad, technology‑neutral display right. | Server rule limits liability and reflects technical differences when defendant does not store a copy. | Court rejects adopting Perfect 10’s rule here and distinguishes that case on facts. |
| Is Sinclair’s embedding fair use, justifying dismissal? | Use was commercial, copied the entire work, and threatens the licensing market. | Use was news reporting about the video’s virality and was transformative; no bad faith. | Fair use is fact‑dependent; some factors favor Sinclair and some favor Nicklen, so dismissal on fair use grounds is denied. |
Key Cases Cited
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (articulates the "server rule" treating embedding as non‑display where defendant does not host a copy)
- Am. Broad. Cos. v. Aereo, Inc., 573 U.S. 431 (2014) (court applies technology‑neutral analysis to transmission/showing of audiovisual works)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (establishes the four fair use factors and transformative‑use analysis)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (defendant bears burden of proving fair use)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (commercial nature of use is relevant to fair use analysis)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (market‑effect inquiry focuses on whether the use supplants a traditional market)
- TCA Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016) (recognizes rare circumstances where fair use can support dismissal)
- Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339 (S.D.N.Y. 2017) (news reporting about an image itself can be transformative)