Case 1:18-cv-00790-KMW Document 31 Filed 04/13/20 Page 1 of 9
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`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #: __________________
`DATE FILED: April 13, 2020
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`18-CV-790 (KMW)
`OPINION & ORDER
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`STEPHANIE SINCLAIR,
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`ZIFF DAVIS, LLC, and MASHABLE, INC.,
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`Defendants.
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`KIMBA M. WOOD, United States District Judge:
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`-against-
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`Plaintiff Stephanie Sinclair (“Plaintiff”), a professional photographer, brings this
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`copyright suit against Mashable, Inc. (“Mashable”) and its parent company, Ziff Davis, LLC
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`(“Ziff Davis”) (together, “Defendants”), alleging that Defendants infringed Plaintiff’s copyright
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`when Mashable posted one of Plaintiff’s copyrighted photographs on its website. Defendants
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`have moved to dismiss Plaintiff’s Second Amended Complaint. The Court finds that Mashable
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`used Plaintiff’s photograph pursuant to a valid sublicense from Instagram, and that Plaintiff fails
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`to state a claim for copyright infringement against Ziff Davis. Therefore, the Second Amended
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`Complaint is DISMISSED.
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`BACKGROUND
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`Plaintiff is a professional photographer. (Second Amended Complaint (“SAC”) ¶ 9, ECF
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`No. 15.) Plaintiff owns an exclusive United States copyright in the image titled “Child, Bride,
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`Mother/Child Marriage in Guatemala” (the “Photograph”). (Id. ¶ 47 & Ex. F.) Plaintiff
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`maintains a publicly-searchable website to showcase her photographs to potential customers. (Id.
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`¶ 15.) Plaintiff also maintains an account on Instagram, a photograph- and video-sharing social
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`media platform. (Id. ¶ 31 & Ex. D.) Plaintiff posted a copy of the Photograph to her Instagram
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`account, which is a “public” account, viewable by anyone. (Id.)
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`Defendant Ziff Davis is a digital media and advertising company that owns multiple
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`online brands and print titles. (Id. ¶ 16.) Ziff Davis owns Defendant Mashable, a media and
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`entertainment platform that operates the website www.mashable.com. (Id. ¶ 17.)
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`On March 11, 2016, an employee of Mashable contacted Plaintiff via email and sought to
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`license the Photograph for use in an article about female photographers, to be published on
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`Mashable’s website. (Id. ¶ 22.) Mashable offered Plaintiff $50 for licensing rights to the
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`Photograph. (Id.) Plaintiff did not accept Mashable’s offer. (Id. ¶ 23.) On March 16, 2016,
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`Mashable published an article about female photographers on its website, which included a copy
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`of the Photograph (the “Article”). (Id. ¶ 24.)
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`Mashable used a technical process called “embedding” to incorporate the Photograph into
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`the Article. (Id. ¶ 24, 36.) Embedding allows a website coder to incorporate content, such as an
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`image, that is located on a third-party’s server, into the coder’s website. (Id. ¶ 37.) When an
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`individual visits a website that includes an “embed code,” the user’s internet browser is directed
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`to retrieve the embedded content from the third-party server and display it on the website. (Id. ¶
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`38.) As a result of this process, the user sees the embedded content on the website, even though
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`the content is actually hosted on a third-party’s server, rather than on the server that hosts the
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`website.1 (Id. ¶ 39.)
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`Here, Mashable embedded in its Article the copy of the Photograph that Plaintiff had
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`previously uploaded to the server of Instagram. Instagram uses a service called “application
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`programming interface,” or “API,” to enable users to access and share content posted by other
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`1 A more detailed explanation of the embedding process is helpfully set forth in Goldman v. Breitbart News
`Network, LLC, 302 F. Supp. 3d 585, 587 (S.D.N.Y. 2018) (Forrest, J.).
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`2
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`users whose accounts are set to “public” mode. (Id. ¶ 33.) Pursuant to certain Instagram
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`policies, users can use the API to embed Instagram posts in their websites. (Id.) That is exactly
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`what happened here: Mashable used the API to embed, in the Article, the copy of the Photograph
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`that Plaintiff previously posted to her public Instagram account.
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`On or about January 19, 2018, Plaintiff demanded that Defendants take down the copy of
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`the Photograph from the Article, and compensate Plaintiff for infringing on her copyright. (Id.
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`¶ 41.) Defendants refused to do so. (Id. ¶ 42–43.) On January 29, 2018, Plaintiff brought this
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`copyright suit against Defendants. (ECF No. 1.) Plaintiff filed an Amended Complaint on
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`March 15, 2018, and, with consent of Defendants, filed a Second Amended Complaint on April
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`10, 2018. (ECF Nos. 11, 15.) On May 2, 2018, Defendants moved to dismiss the Second
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`Amended Complaint (the “Motion”). (ECF No. 18.)
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`LEGAL STANDARD
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`A complaint must be dismissed if it fails to state a claim upon which relief can be granted.
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`Fed. R. Civ. P. 12(b)(6). “To survive a motion to dismiss, a complaint must contain sufficient
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`factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Aschroft
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`v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
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`(2007)). For purposes of deciding a motion to dismiss, “[a] complaint is deemed to include any
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`written instrument attached to it as an exhibit, materials incorporated in it by reference, and
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`documents that, although not incorporated by reference, are ‘integral’ to the complaint.” Sira v.
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`Morton, 380 F.3d 57, 67 (2d Cir. 2004) (citations omitted).
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`DISCUSSION
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`I.
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`Mashable Used the Photograph Pursuant to a Valid Sublicense from
`Instagram.
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`Defendants contend that Mashable used the Photograph pursuant to a valid sublicense
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`from Instagram, so its use of the Photograph does not infringe Plaintiff’s copyright. It is well
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`established that a copyright owner may license his or her rights in copyrighted material,
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`including the rights of use, distribution, and sublicensing, to one or more parties. See Davis v.
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`Blige, 505 F.3d 90, 98–99 (2d Cir. 2007). A copyright owner who permits a licensee to grant
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`sublicenses cannot bring an infringement suit against a sublicensee, so long as both licensee and
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`sublicensee act, respectively, within the terms of their license and sublicense. See United States
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`Naval Inst. v. Charter Commc’ns Inc., 936 F.2d 692, 695 (2d Cir. 1991); cf. Spinelli v. Nat’l
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`Football League, 903 F.3d 185, 203 (2d Cir. 2018) (sublicensee cannot acquire valid rights in
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`copyrighted works if sublicensor had no right to issue a sublicense).
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`Here, Plaintiff granted Instagram the right to sublicense the Photograph, and Instagram
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`validly exercised that right by granting Mashable a sublicense to display the Photograph. By
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`creating an Instagram account, Plaintiff agreed to Instagram’s Terms of Use (“Terms of Use”).
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`See Motion at 12–13 (quoting Terms of Use (“By accessing or using the Instagram website, the
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`Instagram service, or any applications (including mobile applications) made available by
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`Instagram . . . you agree to be bound by these terms of use.”)).2 Plaintiff concedes that she is
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`bound by the Terms of Use. (Opposition to Motion to Dismiss (“Opp.”) at 19, ECF No. 23.)
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`The Terms of Use state that, by posting content to Instagram, the user “grant[s] to
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`Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide
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`license to the Content that you post on or through [Instagram], subject to [Instagram’s] Privacy
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`2 Plaintiff annexed Instagram’s’ Platform Policy to the Second Amended Complaint, but did not annex any of the
`other Instagram policies referenced therein. (SAC Ex. E, ECF No. 15-5.). The Court takes judicial notice of
`Instagram’s contemporaneous Terms of Use and Privacy Policy, both of which are publicly available online.
`See Fed. R. Evid. 201(b)(2); Force v. Facebook, Inc., 934 F.3d 53, 59 n. 5 (2d Cir. 2019). These agreements,
`which are incorporated into the Platform Policy by reference, are properly considered in deciding this motion to
`dismiss. See Sira, 380 F.3d at 67. Finally, the Court notes that Instagram’s policies have been updated since
`the infringement alleged in the Second Amended Complaint.
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`Policy.” (Terms of Use, Rights § 1.) Pursuant to Instagram’s Privacy Policy (“Privacy Policy”),
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`Instagram users designate their accounts as “private” or “public,” and can change these privacy
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`settings whenever they wish. (Privacy Policy, Parties With Whom You May Choose to Share
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`Your User Content § 1.). All content that users upload and designate as “public” is searchable by
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`the public and subject to use by others via Instagram’s API. (Id § 2.) The API enables its users
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`to embed publicly-posted content in their websites. (Platform Policy, Preamble.). Thus, because
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`Plaintiff uploaded the Photograph to Instagram and designated it as “public,” she agreed to allow
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`Mashable, as Instagram’s sublicensee, to embed the Photograph in its website.
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`Plaintiff advances a number of objections to this interpretation of her agreements with
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`Instagram, but none is persuasive.
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`First, Plaintiff argues that Mashable’s failure to obtain a license to use the Photograph
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`directly from Plaintiff means that Mashable should not be able to obtain a sublicense from
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`Instagram to use the Photograph. (Opp. at 11–12.) Plaintiff’s right to grant a license directly to
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`Mashable, and Instagram’s right, as Plaintiff’s licensee, to grant a sublicense to Mashable,
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`operate independently. Mashable was within its rights to seek a sublicense from Instagram when
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`Mashable failed to obtain a license directly from Plaintiff—just as Mashable would be within its
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`rights to again seek a license from Plaintiff, perhaps at a higher price, if Plaintiff switched her
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`Instagram account to “private” mode.
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`Second, Plaintiff argues that the Court cannot take judicial notice of the meaning of
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`Instagram’s agreements and policies because they are complex and subject to different
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`interpretations. (Opp. at 13–15.) Although the Court takes judicial notice of the existence of
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`Instagram’s agreements and policies, see supra at Note 2, the Court does not purport to take
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`judicial notice of their meaning. The meaning of these contracts is a question of law for the
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`court, rather than a question of fact to which the principles of judicial notice would be applicable.
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`See Markley v. Beagle, 429 P.2d 129, 136 (Cal. 1967) (“In the absence of conflicting extrinsic
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`evidence the interpretation of the contract is a question for the court.”); see also Terms of Use,
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`Governing Law & Venue (stating that Terms of Use are governed by California law).
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`Next, Plaintiff claims the agreements between Instagram and Plaintiff cannot confer a
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`right to use the Photograph upon Mashable because Mashable is not an intended beneficiary of
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`any of the agreements. (Opp. at 15–19.) But Mashable need not be an intended beneficiary of
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`the agreements by which Plaintiff authorized Instagram to sublicense the Photograph in order to
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`receive a valid sublicense from Instagram. Indeed, Plaintiff authorized Instagram to grant a
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`sublicense to, inter alia, anyone who uses Instagram’s API. Whether Mashable is an intended
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`beneficiary would only matter if Mashable were attempting to enforce one of the agreements
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`between Instagram and Plaintiff, which Mashable is not. See Bancomer, S.A. v. Superior Court,
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`52 Cal. Rptr. 2d 435, 440 (Cal. Ct. App. 1996) (discussing rights of intended and incidental
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`beneficiaries).
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`Plaintiff also contends that her authorization to Instagram to sublicense the use of the
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`Photograph is invalid because it was created by a series of complex, interconnected documents.
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`(Opp. at 20.) Specifically, the Terms of Use establish that Plaintiff grants Instagram a
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`sublicensable right of use, but the scope of the sublicense is detailed fully in Instagram’s
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`Platform Policy and Privacy Policy. Under California law, this practice is accepted: when one
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`document incorporates another by reference, “the original agreement and those referred to must
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`be considered and construed as one.” Republic Bank v. Marine Nat’l Bank, 45 Cal. App. 4th 919,
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`923 (Cal. Ct. App. 1996) (quoting Bell v. Rio Grande Oil Co., 23 Cal. App. 2d 436, 440 (Cal. Ct.
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`App. 1937)). While Instagram could certainly make its user agreements more concise and
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`accessible, the law does not require it to do so.
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`Plaintiff also contends that the agreements do not convey a valid sublicense because they
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`are “circular,” “incomprehensible,” and “contradictory.” (Opp. at 19–22.) But Plaintiff fails to
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`identify any inconsistent (let alone unenforceable) terms in Instagram’s agreement. Plaintiff
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`claims it is contradictory for Instagram to simultaneously demand that users respect the
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`intellectual property rights of others when uploading content to Instagram, while also granting
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`those users a right to share other users’ public posts containing copyrighted material. Plaintiff
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`misses the distinction between a user’s initial uploading of content to Instagram, and a user’s
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`subsequent sharing of content that has already been uploaded to Instagram. In the former
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`scenario, a user may not upload content to Instagram if doing so would violate the intellectual
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`property rights of another person. In the latter, users must comply with Instagram’s terms
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`governing the sharing of content; however, there is no concern about copyright violation, because
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`the user who initially uploaded the content has already granted Instagram the authority to
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`sublicense the use of “public” content to users who share it. These requirements pose no
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`contradiction, and enable copyright holders to avoid unlicensed sharing of their work by
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`choosing not to publicly post their copyrighted material on Instagram.
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`Plaintiff also contends that Instagram violated the terms of its license by granting
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`Mashable a sublicense to “sell” the Photograph. (Opp. at 20.) But neither Plaintiff nor Instagram
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`has “sold” the Photograph to anyone. Instead, Instagram granted Mashable a sublicense to
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`embed the Photograph on its website, and Mashable exercised its right pursuant to that
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`sublicense.3
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`Finally, Plaintiff’s argues that it is unfair for Instagram to force a professional
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`photographer like Plaintiff to choose between “remain[ing] in ‘private mode’ on one of the most
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`3 Because the Court finds that Instagram granted Mashable a valid license to display the Photograph, it need not
`reach the question, addressed in Goldman but unsettled in this Circuit, of whether embedding an image
`constitutes “display” that is capable of infringing a copyright in the image. See Goldman, 302 F. Supp. 3d at
`596 (holding that embedding constitutes display but noting possible viability of license as a defense).
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`popular public photo sharing platforms in the world,” and granting Instagram a right to sub-
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`license her photographs to users like Mashable. (Opp. at 12.) Unquestionably, Instagram’s
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`dominance of photograph- and video-sharing social media, coupled with the expansive transfer
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`of rights that Instagram demands from its users, means that Plaintiff’s dilemma is a real one. But
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`by posting the Photograph to her public Instagram account, Plaintiff made her choice. This Court
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`cannot release her from the agreement she made.
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`II.
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`Plaintiff Fails to Allege Ziff Davis’ Involvement in Mashable’s Alleged
`Copyright Infringement.
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`Defendants contend that Plaintiff fails to state a claim against Ziff Davis. They are
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`correct. Because corporations and their subsidiaries are legally distinct, “the legal relationship
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`between a parent and its subsidiary is insufficient to state a claim for copyright infringement
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`against the parent. . . . Rather, a parent corporation can be liable only if there is a substantial
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`continuing involvement by the parent specifically with respect to the allegedly infringing activity
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`of the subsidiary.” Dauman v. Hallmark Card, Inc., No. 96-CV-3608, 1998 WL 54633, at *6
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`(S.D.N.Y. 1998) (Keenan, J.) (citations omitted).
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`Here, Plaintiff has not pled facts that, if true, would establish Ziff Davis’ involvement in
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`the allegedly infringing activity. Plaintiff alleges that Ziff Davis owns Mashable, and that legal
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`notices on Mashable’s website, such as the “Privacy Policy,” “Terms of Use,” and “Cookie
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`Policy,” direct users to Ziff Davis’ corresponding policies. (SAC ¶ 17–18.) Plaintiff further
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`alleges that Mashable’s “Copyright Policy” directs individuals with copyright claims to contact
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`Ziff Davis’ copyright agent, and that Mashable lists Ziff Davis as its copyright agent. (Id. ¶ 18–
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`19.) None of these facts establishes that Ziff Davis had any involvement in Mashable’s allegedly
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`infringing activities, beyond the bare fact of corporate ownership; for instance, Plaintiff does not
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`claim that Ziff Davis had any role in contacting Plaintiff, posting the Article, or embedding the
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`Photograph in the Article. Plaintiff therefore fails to state a claim against Ziff Davis.4
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`CONCLUSION
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`For the foregoing reasons, the Second Amended Complaint is DISMISSED with
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`prejudice. The Clerk of Court is directed to close this case. All pending motions are moot.
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`SO ORDERED.
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`Dated: New York, New York
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`April 13, 2020
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`/s/ Kimba M. Wood
`KIMBA M. WOOD
`United States District Judge
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`4 Plaintiff concedes that she does not state a claim against Ziff Davis for contributory or vicarious copyright
`infringement, and that she does not allege any facts that would warrant a piercing of Ziff Davis’ corporate veil.
`(Opp. at 24.)
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