District court denies parties’ cross-motions for summary judgment in copyright infringement case concerning embedding of photograph from fine art photographer’s public Instagram feed into Newsweek article, rejecting Ninth Circuit’s “server test” and holding that embedding photo was “display” even though photo was never stored on Newsweek’s servers.

Plaintiff Elliot McGucken, a fine art photographer, brought suit against Newsweek for infringing the copyright in his photograph, which he shared on his public Instagram page, of a rare ephemeral lake in Death Valley, California. Plaintiff alleged that defendant Newsweek published an article on its website that embedded the photo without his authorization. The parties cross-moved for summary judgment—plaintiff sought a ruling that Newsweek was liable for willful copyright infringement, while Newsweek argued that (1) embedding the photo did not infringe any of plaintiff’s exclusive rights under Section 106 of the Copyright Act (i.e., his rights to reproduce, distribute, perform, display and/or create a derivative work based on the photo); (2) Newsweek had an express and/or implied license to embed the photo; and (3) its use of the photo to report a newsworthy event was transformative and constituted fair use. The district court denied both cross-motions.

The court addressed plaintiff’s infringement claim by analyzing each of Newsweek’s defenses in turn. First, Newsweek, citing the Ninth Circuit Court of Appeals’ server test, argued that it did not “display” plaintiff’s work within the meaning of the Copyright Act; rather, it merely showed a copy of the work by using Instagram’s embed code, consisting of HTML instructions on how to find plaintiff’s Instagram post. Under the server test, a website publisher is deemed to have displayed an image by using a computer to fill a computer screen with a copy of the photographic image, which has been stored in the computer’s memory. By contrast, a website publisher embeds an image with HTML code that simply provides the address of the image to the user’s browser. The browser then interacts with the third-party computer that stores the infringing image. Thus, because the image remains on the third party’s server and is not fixed in the memory of the infringer’s computer, embedding does not constitute “displaying” under the server test.

The district court declined to apply the server test, holding that Newsweek did, in fact, display plaintiff’s photograph by embedding it in the article. In so holding, the district court noted that courts other than those in the Ninth Circuit have persuasively argued that the test is contrary to the Copyright Act, which defines “display” as “to show a copy of a work.” The Ninth Circuit’s test, according to the district court, turns the “display” right into a subset of the reproduction right. The district court also observed that Congress “cast a very wide net” in terms of what constitutes a display under the Copyright Act. Under the server test, however, photographers promoting their work on Instagram would effectively reduce the display right by surrendering control over “how, when, and by whom their work is subsequently shown.” The Copyright Act, reasoned the district court, does not merely grant the exclusive right to display a work publicly so long as that “public” is not online.

Next, Newsweek argued that even if embedding the Instagram post constituted a display, plaintiff’s infringement claim failed as a matter of law because Instagram granted an express and/or implied sublicense to embed the photo. The district court held that genuine disputes of material fact existed as to whether Instagram granted defendant an express sublicense. Specifically, the court concluded that Instagram’s platform policy during the relevant time period was not sufficiently clear to support the existence of a sublicense between Instagram and Newsweek because it did not indicate what an Instagram user may do with user-generated content on Instagram and under what circumstances the user may do so. Similarly, the district court held that genuine disputes of material fact existed as to the existence of an implied sublicense between Instagram and Newsweek. According to the court, a reasonable juror could conclude it was reasonable for Newsweek to understand that Instagram intended users to have the ability to embed and share public Instagram content, given the ease of doing so and based on Instagram’s terms of use and public statements about embedding.

Finally, the district court addressed whether Newsweek'suse of plaintiff’s photograph in reporting on a newsworthy subject constituted fair use, addressing each of the four fair use factors: (1) the purpose and character of the use (including whether the use was transformative), (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the work as a whole, and (4) the effect of the use on the potential market or value for the work. The court concluded that genuine disputes of material fact existed as to whether embedding the photograph in a news article was transformative and whether it constituted fair use, precluding summary judgment.