On November 2, 2020, Judge Allyne Ross of the Eastern District of New York dismissed copyright claims brought by Danish photographer Michael Barrett Boesen against a sports website for its use of an Instagram post by former top-ranked tennis star Caroline Wozniacki that itself used a photograph by Boesen.[1] In holding that “embedding” the social media post was “fair use”—and therefore not a copyright infringement—because of its news value, the Court in Boesen v. United Sports Publications provided welcome guidance for media companies.

The case concerned a December 6, 2019 Instagram post by Wozniacki announcing her retirement from professional tennis. Wozniacki accompanied her heartfelt message to her fans with a cropped, low-resolution version of a 2002 photograph of herself taken by Boesen. United Sports Publications Ltd. (“United Sports”) embedded an image of Wozniacki’s Instagram post in a piece published on Long Island Tennis Magazine’s website reporting Wozniacki’s announcement. Boesen subsequently registered his copyright on the photograph, and sued United Sports in July 2020 for its unauthorized use of his photograph.

United Sports moved to dismiss Boesen’s copyright infringement claim on the basis that its publication of Boesen’s photograph was protected as a fair use under the Copyright Act, which allows the use of copyrighted materials “for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research.”[2] In evaluating fair use, courts balance four nonexclusive factors codified in the Copyright Act:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.[3]

The Boesen v. United Sports decision is notable for its analysis of the first fair use factor, adopting the reasoning set forward in another recent decision, Walsh v. Townsquare Media, Inc.[4] In Walsh, Judge Vernon Broderick of the Southern District of New York held that it was fair use for XXL Mag to embed an Instagram post by rapper Cardi B, featuring a copyrighted photograph.[5] Much like XXL Mag’s article reporting on Cardi B’s Instagram post, which announced that her Tom Ford lipstick collaboration had sold out, United Sports created “new meaning” for Boesen’s photograph of Wozniacki because it “reported on Wozniacki’s retirement announcement and the fact that it took place on Instagram.”[6] The court reasoned that United Sports did not use the photograph as an “illustrative device” to show what Wozniacki looked like while playing tennis—the purpose for which it was created. Rather, it embedded the Instagram post announcing her retirement—which incidentally included the photograph—because the article was reporting on the fact of Wozniacki’s retirement announcement via Instagram.[7] The other statutory fair use factors also favored United Sports:

  • Boesen had shared the image on his own social media page and website[8];
  • Wozniacki had altered the image by cropping it, United Sport’s story contained all the markings of an Instagram post, and embedding the post was the only way to inform readers about her retirement announcement on Instagram[9]; and
  • United Sport’s use of the image was unlikely to impact its market or value, particularly because it was a cropped and low-resolution version of the photograph that would be a poor substitute for the original.[10]

However, the court’s analysis in Boesen v. United Sports does not provide free rein to use copyrighted images on commercial websites simply because they appear on social media. As the Boesen decision cautions, it applies only to articles that “incidentally use copyrighted images in reporting on the posts themselves.”[11] Media outlets and others should continue to exercise caution in embedding copyrighted images as illustrations and not for their news value. For example, in another recent decision, McGucken v. Newsweek,[12] Judge Katherine Polk Failla of the Southern District of New York denied a motion to dismiss a copyright infringement claim against Newsweek for embedding a photographer’s Instagram post. There, the photograph served merely as an “illustrative aid” with some “token commentary”[13] and, after an analysis of the fair use factors, the court held that it could not dismiss the case as a matter of law.[14]

Because the parties did not brief the issue, the court in Boesen v. United Sports also avoided an examination of the “server test,” outlined in the 2007 decision, Perfect 10, Inc. v. Amazon.[15] There, the West Coast-based Ninth Circuit Court of Appeals found that a webpage that displayed a linked image, but did not actually copy it onto its own server, did not violate copyright law.[16] In the last few years, courts outside the Ninth Circuit have begun to call this rule into question. This includes in the Southern District of New York, where Judge Katherine B. Forrest rejected the server test on summary judgment.[17] A change in the prevailing law could lead to a further shake-up concerning when an entity may embed a copyrighted image.[18]

Given the apparently frequent use by celebrities (and other mere mortals) of copyrighted images on social medial,[19] we are likely to see more litigation of this kind.

[1] Boesen v. United Sports Publications, Ltd., 20-CV-1552 (ARR) (SIL) (E.D.N.Y. Nov. 2, 2020) (the “Decision”).

[2] 17 U.S.C. § 107.

[3] 17 U.S.C. § 107.

[4] No. 19-CV-4958 (VSB), 2020 WL 2837009 (S.D.N.Y. June 1, 2020).

[5] Decision at *7.

[6] Decision at *7.

[7] Decision at *9.

[8] Decision at *10.

[9] Decision at *11.

[10] Decision at *12.

[11] Decision at *9-10 (emphasis in original).

[12] 464 F.Supp.3d 594 (S.D.N.Y. 2020).

[13] McGucken at 606.

[14] The court in McGucken also determined it could not find at this early stage in the case whether Instagram’s Terms of Use and other policies granted a sublicense that allowed for embedding the post. While McCucken cites favorably Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020), which held posting a photograph on a public Instagram page impliedly granted a sublicense to embed because of Instagram’s Terms of Use, the court in Sinclair has since reconsidered that portion of its decision. See Sinclair v. Ziff Davis, LLC, 18-CV-790 (KMW), 2020 WL 3450136 (S.D.N.Y. June 24, 2020) (granting a motion for reconsideration and reversing grant of motion to dismiss as to the sublicense question). Instagram told technology publication Ars Technica that its terms do not grant a sublicense for embedded photos. See Timothy B. Lee, Instagram just threw users of its embedding API under the bus, Ars Technica (June 4, 2020), https://arstechnica.com/tech-policy/2020/06/instagram-just-threw-users-of-its-embedding-api-under-the-bus/.

[15] 508 F.3d 1146 (9th Cir. 2007)

[16] Perfect 10, 508 F.3d at 1161.

[17] Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585, 593 (S.D.N.Y. 2018) (“The plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.”). The Second Circuit declined to hear an interlocutory appeal, and the case ultimately settled.

[18] See Jane C. Ginsburg & Luke Ali Budiardjo, Embedding Content or Interring Copyright: Does the Internet Need the “Server Rule”?, 42 Colum. J. L. & Arts 417, 438-45 (2019), available at https://scholarship.law.columbia.edu/cgi/viewcontent.cgi?article=3326&context=faculty_scholarship.

[19] See, e.g., Bill Donahue, Celebrities Keep Getting Sued Over Instagrams Of Themselves, Law 360 (Sept. 17, 2020), https://www.law360.com/articles/1310980/celebrities-keep-getting-sued-over-instagrams-of-themselves.