McGucken v. Newsweek LLC

464 F.Supp.3d 594

Elliot MCGUCKEN, Plaintiff,

v.NEWSWEEK LLC, Defendant.

19 Civ. 9617 (KPF)

United States District Court, S.D. New York.

Signed June 1, 2020

Laura Maria Zaharia, Doniger/Burroughs, Brooklyn, NY, Scott Alan Burroughs, Doniger / Burroughs, Venice, CA, for Plaintiff.

Nancy Evelyn Wolff, Lindsay Rebecca Edelstein, Cowan, DeBaets, Abrahams & Sheppard LLP, New York, NY, for Defendant.

OPINION AND ORDER

KATHERINE POLK FAILLA, District Judge:

Plaintiff Elliot McGucken is a photographer who focuses on landscapes and seascapes. On March 13, 2019, Plaintiff posted on his Instagram account a photograph of an ephemeral lake (the "Photograph") that had appeared in Death Valley, California. The following day, Defendant Newsweek published an article about the ephemeral lake (the "Article"), embedding Plaintiff's Instagram post of the lake as part of the Article. Plaintiff brought this action for copyright infringement, alleging that Defendant reproduced and displayed the Photograph on its website without his consent. Defendant moves to dismiss the action for failure to state a claim, arguing, inter alia , that it either had a valid sublicense to use the Photograph as a result of Plaintiff's public post on Instagram, or that its publication of the Photograph constituted fair use. For the reasons set forth in the remainder of this Opinion, Defendant's motion is granted in part and denied in part.

BACKGROUND¹

A. Factual Background

1. Plaintiff's Allegations

Plaintiff is an individual residing in Los Angeles, California, while Defendant is a limited liability company located in New York, New York. (Am. Compl. ¶¶ 4-5). Plaintiff operates a public Instagram account on which he posts photographs he has taken of landscapes and seascapes. (See Wolff Decl., Ex. A). On March 13, 2019, Plaintiff posted the Photograph, depicting a large lake in Death Valley National Park, to his Instagram account. (See id. , Ex. B).

On March 14, 2019, Defendant published the Article, titled "Huge Lake Appears in Death Valley, One of the Hottest, Driest Places on Earth," on its website. (See id. , Ex. C). The Article noted that Plaintiff had captured photographs of the ephemeral lake and provided some quotes from Plaintiff about his observation of the lake. (Id. ). Most relevantly to this action, the Article incorporated Plaintiff's Instagram post of the Photograph, through a process known as embedding. (See id. ; Wolff Decl., Ex. I). As ably explained by the Honorable Kimba Wood,

Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party's server, into the coder's website. When an individual visits a website that includes an "embed code," the user's internet browser is directed to retrieve the embedded content from the third-party server and display it on the website. As a result of this process, the user sees the embedded content on the website, even though the content is actually hosted on a third-party's server, rather than on the server that hosts the website.

Sinclair v. Ziff Davis, LLC , No. 18 Civ. 790 (KMW), 454 F.Supp.3d 342, 343 (S.D.N.Y. Apr. 13, 2020) (internal citations omitted). At no point did Plaintiff give his consent to Defendant's use of the Photograph in the Article, nor did Defendant ever compensate Plaintiff for its use of the Photograph. (Am. Compl. ¶ 10).

On April 1, 2019, Plaintiff registered the Photograph with the United States Copyright Office, with the registration number of VA 2-145-698. (Am. Compl. ¶ 9; id. , Ex. B). Two days later, on April 3, 2019, Plaintiff sent a cease and desist letter to Defendant, providing notice of the putative infringement and requesting that Defendant remove the Photograph from the Article. (Id. at ¶ 11). However, Newsweek had not removed the Photograph or taken down the Article as of October 13, 2019. (Id. ).

2. Instagram's Terms of Use²

Given Defendant's argument that it held a valid sublicense to the Photograph due to Plaintiff's decision to post the Photograph publicly on Instagram (see Def. Br. 13), the Court provides an overview of the various agreements governing the parties’ use of Instagram. Everyone who signs up to use Instagram agrees to Instagram's Terms of Use. (Wolff Decl., Ex. D). The Terms of Use prohibit users from "post[ing] private or confidential information or do[ing] anything that violates someone else's rights, including intellectual property." (Id. , Ex. E at 4). The Terms of Use also provide 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).

(Id. ).

Instagram's Privacy Policy, which "applies to all visitors, users, and others who access the Service," provides that "other Users may search for, see, use, or share any of your User Content that you make publicly available through [Instagram], consistent with the terms and conditions of this Privacy Policy and our Terms of Use." (Wolff Decl., Ex. F at 2). In addition, "[s]ubject to your profile and privacy settings, any User Content that you make public is searchable by other Users and subject to use under our Instagram API." (Id. at 4).³ The Privacy Policy notes that once a user has "shared User Content or made it public, that User Content may be re-shared by others." (Id. ).

Finally, Instagram's Platform Policy governs the use of the API. (See Wolff Decl., Ex. G at 2). The Platform Policy states that the Platform is provided "to help broadcasters and publishers discover content, get digital rights to media, and share media using web embeds." (Id. ). However, the Platform Policy instructs users to "[c]omply with any requirements or restrictions imposed of usage of Instagram photos and videos ... by their respective owners," and also prohibits users from "provid[ing] or promot[ing] content that violates any rights of any person, including but not limited to intellectual property rights." (Id. at 2-3). The Platform Policy provides that the Platform is licensed to users, but "User Content is owned by users and not by Instagram." (Id. at 4).

B. Procedural Background

Plaintiff initiated this action on October 17, 2019, with the filing of a complaint against Defendant and other unidentified individuals. (Dkt. #1). On November 13, 2019, the Court scheduled an initial pretrial conference for February 20, 2020. (Dkt. #8). On December 6, 2019, Defendant informed the Court of its intention to file a motion to dismiss. (Dkt. #13). Plaintiff responded to Defendant's pre-motion letter on December 11, 2019. (Dkt. #14). On December 12, 2019, the Court ordered the parties to appear on January 7, 2020, for a pre-motion conference, and adjourned the initial pretrial conference sine die. (Dkt. #15). The parties appeared for the scheduled pre-motion conference on January 7, 2020, at which time the Court granted Plaintiff leave to amend his complaint and scheduled briefing for Defendant's contemplated motion to dismiss. (Minute Entry for January 7, 2020).

On January 24, 2020, Plaintiff filed the Amended Complaint. (Dkt. #17). On February 28, 2020, Defendant filed its motion to dismiss and accompanying memorandum of law and declaration. (Dkt. #20-22). Plaintiff filed its opposing memorandum, accompanied by a declaration, on April 13, 2020. (Dkt. #26-27). On April 20, 2020, Plaintiff requested leave to file a supplemental opposition brief in light of Judge Kimba Wood's decision in Sinclair , ostensibly with Defendant's consent. (Dkt. #28). The Court granted Plaintiff's request on April 21, 2020 (Dkt. #29), only to be informed the same day by Defendant that Plaintiff had allegedly misrepresented his intentions regarding the supplemental brief to Defendant (Dkt. #30). In response, the Court ruled that it would only consider those portions of the supplemental brief that directly addressed Judge Wood's decision in Sinclair . (Dkt. #31). On May 4, 2020, Defendant filed its reply brief. (Dkt. #34).

DISCUSSION

A. Motions to Dismiss under Fed. R. Civ. P. 12(b)(6)

When considering a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a court must "draw all reasonable inferences in Plaintiff's favor, assume all well-pleaded factual allegations to be true, and determine whether they plausibly give rise to an entitlement to relief." Faber v. Metro. Life Ins. Co. , 648 F.3d 98, 104 (2d Cir. 2011) (internal quotation marks omitted); see also Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) ("To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." (internal quotation marks omitted)). A plaintiff is entitled to relief if he alleges "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ; see also In re Elevator Antitrust Litig. , 502 F.3d 47, 50 (2d Cir. 2007) ("While Twombly does not require heightened fact pleading of specifics, it does require enough facts to nudge plaintiff's claims across the line from conceivable to plausible." (internal quotation marks omitted) (citing Twombly , 550 U.S. at 570, 127 S.Ct. 1955 )).

That said, a court is not bound to accept "conclusory allegations or legal conclusions masquerading as factual conclusions." Rolon v. Henneman , 517 F.3d 140, 149 (2d Cir. 2008) (internal quotation marks omitted); see also Harris v. Mills , 572 F.3d 66, 72 (2d Cir. 2009) ("[A]lthough a court must accept as true all of the allegations contained in a complaint, that tenet is inapplicable to legal conclusions, and threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do...