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Copyright Owners’ Love/Hate Relationship With TikTok and Instagram Raises Legal Issues
Friday, August 28, 2020

While the sirens sounding security concerns about TikTok reach fever pitch, the purveyor of 15-second viral videos desperately seeks to silence a distress signal from another detractor:  the music industry.  Meanwhile photographers publicizing their work on Instagram battle unlicensed embedding of their images by websites like Mashable and Newsweek.  What’s happening?  For those whose livelihood depends on copyrighted works, social media sites like TikTok and Instagram present a quandary.  These platforms can launch an artist’s work onto the world stage.  But they can also facilitate and accelerate the copyright infringement of that same work.  Thus a love/hate relationship has arisen between artists and social media platforms.  And as with many love/hate relationships, the simmering attendant legal issues promise to be hotly contested and perhaps lead to some developments in copyright law.

TikTok and the Music Industry

TikTok, the multi-billion dollar platform first founded in China in 2012 and launched worldwide in 2018, allows users to create and upload 15 second videoclips ranging from lip syncs to dance routines.  Songs used in TikTok videos have taken over the charts.  The problem?  The majority of TikTok clips include music—much of it unlicensed music.  Consequently, the music industry around the world has been trying to negotiate agreements with TikTok and its parent company, Beijing-based Bytedance. 

Last October, the National Music Publishers Association (“NMPA”) joined those calling for an investigation of TikTok over security concerns and asked that copyright theft be included in the scope of the examination.  In April 2020, NMPA’s chief executive, David Israelite, reportedly told the Financial Times a lawsuit was likely, estimating that 50 percent of the music publishing market was unlicensed with TikTok. 

But in July, NMPA signed an agreement with TikTok.  The NMPA agreement gives members the ability to opt-in to a licensing framework and is retroactive as of May 1, 2020.  That offers TikTok some relief from the looming legal storm, but the platform remains in contested negotiations with ICE, a joint venture representing music rights in the US, Germany and Sweden. 

Meanwhile, TikTok users grant TikTok a very generous license.  Although the user retains ownership of the copyright in the user’s created work, a user in the US grants TikTok:  

an unconditional irrevocable, non-exclusive, royalty-free, fully transferable, perpetual worldwide licence to use, modify, adapt, reproduce, make derivative works of, publish and/or transmit, and/or distribute and to authorise other users of the Services and other third-parties to view, access, use, download, modify, adapt, reproduce, make derivative works of, publish and/or transmit your User Content in any format and on any platform, either now known or hereinafter invented.

But does a user similarly grant a license to a third party who embeds a TikTok video?  TikTok addresses that in its Terms of Service with “Through-to-the-Audience Rights.”

All of the rights you grant in your User Content in these Terms are provided on a through-to-the-audience basis, meaning the owners or operators of third party services will not have any separate liability to you or any other third party for User Content posted or used on such third party service via the Services [defined as the Platform and related websites, services, applications, products and content].

So TikTok’s Terms of Service declare that users have no rights against any third party who picks up the video via TikTok’s services.  Or so it seems.  But the interpretation of terms of use may not be as incontrovertible as at first appears.  Recent cases involving Instagram may prove instructive.

Instagram and the Photography Industry

What TikTok has been to the music industry, Instagram has been to the photography industry: a blessing and a curse.  Two professional photographers who post their photographs on Instagram recently felt the sting of infringement, and each filed a complaint in federal court.  Both lawsuits relied on the premise that a third party who embeds a photo posted on Instagram is infringing the copyright of the original creator of the photo.  

The Terms of Use on Instagram at issue in both cases provided that:

[W]hen you share post, or upload content that is covered by intellectual property rights . . ., you hereby grant to [Instagram] a non-exclusive, royalty-free, transferable, sub-licensable, worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). 

Furthermore, Instagram’s Privacy Policy in place at the time noted that once a user had “shared User Content or made it public, that User Content may be re-shared by others.”  It also told users that any User Content made public “is searchable by other Users and subject to use under [Instagram’s] API.”  Finally, the Platform Policy, which governs API stated that the Platform was provided “to help broadcasters and publishers discover content, get digital rights to media, and share media using web embeds.” 

 In her lawsuit against Mashable, Inc. (“Mashable”), Stephanie Sinclair, a photographer known for exploring human rights issues around the world, sued the media and entertainment platform for infringing use of one of her photographs posted on her public Instagram account.  (Sinclair v. Ziff Davis, LLC, No. 18 Civ. 790 (KMW) (SDNY April 13, 2020)).  Mashable used the process known as “embedding” to incorporate the photo into an article on female photographers.  Relying on Instagram’s Terms of Use, Mashable moved to dismiss the complaint arguing that it had a sublicense from Instagram to display the photo which it accessed using Instagram’s API (“application programming interface”) to access and share content posted by Sinclair.  In April, Judge Wood agreed with Mashable and granted the motion to dismiss. 

In early June 2020, however, Judge Failla, also in New York’s Southern District, considered the same issue and refused to grant a motion to dismiss after concluding Instagram’s terms were somewhat ambiguous.  (McGucken v. Newsweek, LLC, No. 19 Civ. 9617 (KPF) (SDNY June 1, 2020)).  In that case, Elliot McGucken, a photographer known for landscapes and seascapes, posted a photograph of an ephemeral lake in Death Valley, California.  Newsweek then published an article about the lake that embedded McGucken’s photo.  Buoyed by Judge Wood’s holding in April, Newsweek moved to dismiss McGucken’s complaint, but Judge Failla denied the motion.

Reading Instagram’s terms of use and the other policies, Judge Failla, like Judge Wood, found that under the terms of use, a user grants Instagram a “license to sublicense” publicly posted content.  She also agreed that Instagram’s various terms and policies “clearly foresee the possibility of entities such as [Newsweek] using web embeds to share other user’s content.” But she concluded—and here’s the rub—that “none of [Instagram’s terms] expressly grants a sublicense to those who embed publicly posted content.” (emphasis added).  Nor was the court persuaded that, at the early stage in the proceedings, sufficient evidence supported a finding that Instagram extends an implied license to embedders.  Although the court acknowledged that it may be possible to read Instagram’s terms and policies to grant a sublicense to embedders, the court necessarily drew all reasonable inferences in the plaintiff’s favor, since it was considering a motion to dismiss, and thus denied Newsweek’s motion. 

Three days after Judge Failla entered her order, an Instagram spokesperson publicly stated to Ars Technica, a tech industry news publication, that it did not grant a sublicense to embedders to display embedded images on other websites.  After providing the Ars Technica article to Judge Wood and armed with the order in McGucken as persuasive authority, Sinclair successfully requested that Judge Wood reconsider her April order granting Mashable’s motion to dismiss.  In her June 24, 2020 order, Judge Wood, having reconsidered the issues, concluded that absent the licensor’s “explicit consent” to use a copyrighted work, the terms of the governing contracts were insufficiently clear to warrant dismissal.  Thus Sinclair has the opportunity to continue her lawsuit. 

Coming Developments in Copyright Law?          

It seems that most similar cases, including the case against our fictional TikTok embedder-defendant, will ultimately turn on the Terms of Use our fictional user-plaintiff “clicked” her consent to when she created her account.  But perhaps those terms won’t entirely control the outcome.  Such cases are likely to resurrect the ongoing debate surrounding the “server test.” The “server test” defense has gained acceptance only in the Ninth Circuit in Perfect 10, Inc. v. Amazon.com, Inc. (508 F.3d 1146 (9th Cir. 2007)) but is touted as the most workable solution to the question of infringement in the world of the internet.  

Under this theory, only the host, not the embedding website, can be liable for any infringement.  Understanding the theory requires understanding linking and embedding.  Embedding allows a website coder to incorporate content located on a third-party server into the coder’s website.  When visiting the website, a visitor’s internet browser retrieves content from a third-party server and displays it so it appears to be on the website initially viewed by the visitor.  In linking the content, rather than embedding it, a website coder simply provides a link visible to the visitor which, when clicked, takes the visitor to the third party site.  In either case, the content is hosted on a third-party server and not on the website initially viewed by the visitor. 

Eleven years after Perfect 10, a federal district court judge in the Southern District of New York rejected the “server test” in Goldman v. Breitbart News Network, LLC (302 F.Supp. 3d 585 (SDNY 2018)), relying on reasoning in American Broadcasting Cos., Inc. v. Aereo, Inc. (573 U.S. 431 (2014)) that copyright liability could not be avoided through technical workarounds.  Because the Goldman case settled, the Second Circuit never had the opportunity to weigh in on the matter.  Perhaps Ms. Sinclair or Mr. McGucken will give them that chance. 

In any event, given the ever-burgeoning social media world, the mercurial alliance between the creative community and social media platforms promises to offer a never-ending saga punctuated with legal skirmishes. 

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