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The Hidden Risks of Posting Publicly: How “Embedding” may compromise your copyright

Jul 24, 2020

By: Sepideh Nassabi, Litigator and Registered Trademark Agent

Image: Sepideh K. Nassabi, Litigator and Registered Trademark AgentStephanie Sinclair, an American photojournalist, is widely known for capturing gender and human rights issues around the world.  She recently received a disappointing verdict from a court in New York for her lawsuit against Mashable, Inc. and its parent company.

It all started when Sinclair declined to grant Mashable a license to use one of Sinclair’s photos, for which the company offered $50. Nevertheless, Mashable found a way to include the photo in a published article by “embedding” it through Instagram’s “application programming interface”. The court found that as per Instagram’s standard terms and conditions, which Sinclair accepted when she created her account, the photographer granted a valid sublicense to Mashable to use the embedding function to display her photo.

The term of use in question on Instagram states as follows:

“As part of our agreement, you also give us permissions that we need to provide the Service. We do not claim ownership of your content, but you grant us a license to use it. Nothing is changing about your rights in your content. We do not claim ownership of your content that you post on or through the Service. Instead, when you share, post, or upload content that is covered by intellectual property rights (like photos or videos) on or in connection with our Service, you hereby grant to us 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).”

Facebook and Twitter have similar sublicense terms of use.

Since Sinclair posted her photo on her public Instagram account, the embed code allowed Mashable to effectively use that photo without getting permission from the copyright owner. In the wake of Sinclair’s lawsuit, some photographers started calling for Instagram to allow its users to disable embedding of their photos. For the time being, Instagram does not seem interested in exploring that idea.

Sinclair has apparently filed a motion for reconsideration with the US District Court for the Southern District of New York. The motion was granted, which allows Sinclair’s lawsuit against Mashable to move forward.

We are following the case. In the meantime, you should note the following as it relates to Canada.

Under the Copyright Act in Canada, if you take a photo and post it to a social media account, it is not in the public domain. This means that the public does not own the photo, and it is subject to your copyright as the person who originally created the photo. By and large, the standard terms and conditions of major social media platforms acknowledge that the person who creates an original work owns the copyright in their terms of service. However, accepting those terms, as Sinclair did on Instagram, may nonetheless affect your legal position. Clicking “Agree” on a wall of text that you didn’t bother reading closely may carry the risk of amounting to an “implied waiver” of your intellectual property rights – thus giving social media outlets unintentional permission to use your copyrighted intellectual property at will.

It is critical for copyright holders to understand better how the terms of use can negatively impact their intellectual property rights. In some circumstances it may be wise to set the account to private to pre-empt any unwanted embedding of their content.

If you have questions regarding your trademark or intellectual property or any material mentioned in this post, contact Registered Trademark Agent and Litigation Lawyer Sepideh Nassabi at snassabi@mindengross.com.​

Thank you to Carol Liu, summer student, for her help in creating this post.

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