McGucken v. Newsweek LLC

Background

Elliot McGucken, a fine art photographer based in Los Angeles, California, photographed a rare ephemeral lake in Death Valley National Park in March 2019 and posted photographs of it to his public Instagram account. Newsweek LLC published an online article about the lake and embedded one of McGucken’s Instagram posts. McGucken alleged that Newsweek reproduced and displayed his photograph without permission and brought a copyright-infringement action.

In an earlier order, the court dismissed McGucken’s claims for contributory and vicarious infringement but allowed his direct-infringement claim and request for enhanced damages to proceed. The parties then filed cross-motions for summary judgment on the remaining claim. Summary judgment is a decision without a trial that is appropriate when there is no genuine dispute about a fact that could affect the result and one side is entitled to judgment under the law.

Whether Embedding Displayed the Photograph

Newsweek argued that it copied only embed code—HTML instructions directing a browser to retrieve the image from Instagram’s server—and therefore did not display the photograph under copyright law. The court rejected that argument. It declined to apply the “server test,” under which an image is displayed only if the defendant’s own computer stores a copy, and relied on the Copyright Act’s broader definition of displaying a work as showing a copy through any device or process. The court held that Newsweek displayed McGucken’s photograph when it embedded the Instagram post in its article.

Express Sublicense

Newsweek argued that Instagram’s Terms of Use and Platform Policy gave it an express sublicense to embed McGucken’s public post. The court agreed that Instagram’s Terms of Use clearly gave Instagram authority to sublicense publicly posted content. But the court found the Platform Policy unclear about whether Instagram actually granted Newsweek that sublicense. The policy described the platform as licensed on a “nonsublicenseable” basis, stated that user content belonged to users rather than Instagram, reserved rights not expressly granted, and required users to have the necessary rights for content displayed on their websites.

Because a reasonable factfinder could conclude either that the Platform Policy did or did not grant Newsweek an express sublicense, the court denied summary judgment to both sides on this defense.

Implied Sublicense

Newsweek also argued that Instagram granted it an implied sublicense through its embedding function, instructions, terms, and public statements about embedding public posts. An implied license is a permission inferred from the parties’ conduct rather than stated expressly in a written agreement. The court found that a reasonable juror could conclude either that Instagram intended users of its application programming interface—a service that allows software and websites to access and share content—to embed and share public Instagram content, or that it did not grant such permission in this case.

The court therefore denied both parties’ requests for summary judgment on the implied-sublicense issue.

Fair Use

Newsweek alternatively argued that its use was fair use. Fair use can permit certain uses of copyrighted works, including news reporting, after considering the purpose and character of the use, the nature of the copyrighted work, the amount used, and the effect on the work’s market.

The court concluded that the fair-use question could not be resolved as a matter of law. The parties disputed whether Newsweek’s use was transformative, whether its commercial nature weighed against fair use, and whether Newsweek acted in bad faith. They also disputed how the photograph’s creative character, its prior publication, Newsweek’s use of the entire photograph, and possible effects on McGucken’s licensing market should be weighed. The court determined that a factfinder could reasonably decide for either side on these issues.

Willfulness

McGucken also sought summary judgment on whether Newsweek’s infringement was willful, an issue relevant to potentially enhanced statutory damages. The court denied that request because McGucken had not yet established that Newsweek was liable for copyright infringement.

Disposition

The court denied McGucken’s motion for summary judgment and denied Newsweek’s motion for summary judgment. The court directed the parties to submit a joint status letter proposing the next steps in the litigation by April 15, 2022.