Mashable is back in court, battling a copyright law case that began in 2016.

In 2016, Mashable asked Stephanie Sinclair, a well-known female social rights photojournalist, to feature her photograph of a Guatemalan mother and child in an upcoming article. The article was titled 10 Female Photojournalists With Their Lenses On Social Justice and highlighted Sinclair’s work alongside nine other highly respected female photojournalists.

But here’s the catch: Mashable only offered Sinclair $50 to license the image they wanted to use. Even one of my amateur photographer friends selling on Etsy would not accept $50 for one of his photos.

Mashable lowballed Sinclair and never expected her to accept the offer.   

Sinclair declined the offer. So, Mashable embedded her Instagram post with her photo into their article without her permission. She sued them for copyright infringement. The critical part of this case comes down to what is called the “server test.”

What is the Server Test? Perfect 10 vs. Google

The courts that utilize the server test reason that you have only committed copyright infringement if you use another’s photo and store a copy on your servers. But if you display the image, yet store it on someone else’s servers (e.g., Instagram’s), then you are not liable.

The Ninth Circuit first developed this case law in an early 2000’s copyright case where a nudie website, Perfect 10, sued Google for copyright infringement. This was before social media and Google was in the early days of providing image search results. Perfect 10 was actually going indirectly after websites that were improperly reposting its images, Google just happened to be showing thumbnails of those copied images in its search results. 

But Google didn’t store the actual copied images on its servers. While it did show thumbnails of the copyrighted images, the images themselves resided on third-party servers hosting the sites that were showing up in Google search results. Google merely provided an embedded link along with the thumbnails in its search results.

The Ninth Circuit essentially said that they do not believe that the actual copy of that image ever resided on Google’s servers. It only resided on the servers of the owner of the copyright, which was Perfect 10. Because of that, the Ninth Circuit held that Google had not committed copyright infringement by merely embedding links to the actual image locations on third-party servers.

For the next decade or so, people in the digital media industries – social media included – generally abided by and relied on the server test.

Everybody seemed to be happy – until 2016. 

The Tom Brady Viral Photo

In 2016, a photographer named Justin Goldman took a photo of Tom Brady with the Boston Celtics coach at a tumultuous time. Rumors spread and it went viral.

The photographer Snapchatted the photo. Twitter users retweeted the Snapchat. Major news outlets embedded those retweets into articles, just like they always had – relying on the safety of the server test. 

But in this case, the photographer sued. 

Goldman took on nine large media entities – including Vox, Time, Yahoo, and Breitbart, but not in the Ninth Circuit – Goldman brought this suit in the Second Circuit, specifically, the Southern District of New York. 

And he won. 

The Second Circuit basically said that the reasons they do not follow the server test include that they do not believe in getting into the technicalities of where the copy of the image lives when, in reality, the copyright law focuses on the appearance to the user. If a site is the one showing that image, it appears that it is the one committing copyright infringement. The viewer does not care whose server it sits on.

Additionally the Court reasoned that in the Google vs. Perfect 10 case, you had to click the image to get to Perfect 10’s website. In the Tom Brady case, the news media outlets embedded the photo onto their websites directly. The user did not have to click a thumbnail to get to the actual image, as in Google vs. Perfect 10, as soon as they reached the new media outlets’ sites, they were presented with the actual image–no clicking necessary. Which brings us to the “click test.”  

RELATED: Taylor Swift, Big Machine and Audible: The Battle over Copyright Control

The Click Test

The click test is an alternative to the Ninth Circuit’s server test, and looks at whether a user voluntarily clicks through to the original image or not as a threshold question for infringement. The Second Circuit in New York decided to reference this test instead of the server test. I think their reasoning was that the Perfect 10 vs. Google case was wrongly decided because it focused on technicalities of image storage, behind the scenes facts that are unknown to viewers, rather than how the image appeared to the user. 

These disparate tests lead us back to the Sinclair vs. Mashable case, where the judge used the server test, the click test, and also considered the contract language and terms and conditions of Instagram.

In April 2020, the judge seemingly put a stake in many photographer’s business models by ruling that the photographer gave away her copyright by posting the image on Instagram and that Instagram had given a sub-license to Mashable to embed photos in their articles (all this she allegedly found in the small print of Instagram’s terms and conditions). 

The case was tossed. They never even got into the facts. No witnesses were called. The judge simply said, “If you look at the contract language on Instagram, the photographer loses the case. There is no question.”

Is Embedding the Same as Copying?

Have you ever read Instagram’s terms and conditions? It is confusing to say the least!  Judges can’t even figure out what it all means. 

In April, the judge claimed that the terms and conditions were clear. Every photographer gives up their rights as long as the downstream media entity embeds the photo. The judge decided that she was not even going to have a trial about it.

Two months later, a similar case was tried in the Southern District of New York in front of a different judge. Facebook, the owners of Instagram, states in court “Our terms and conditions do not grant a sub-license to downstream media entities merely because they embed the photo. They still need to get copyright authorization from the original photographer.”  Typically, entities don’t tell courts what their terms and conditions mean–it’s up to courts to interpret contract language.  

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Case Reopened

Sinclair turned around and presented these statements to the judge as new evidence needing consideration and urged the judge to reopen her case. Miraculously, the judge did so. This time, she looked more closely at the terms and conditions, and was probably somewhat guided by Facebook’s own statements about what the terms and conditions said, and admitted that she might have been wrong (did I mention that even judges can’t make sense of Facebook/Instagram’s terms and conditions) and reopened the case. 

That is where we stand; the case is still pending. Currently, no one knows what those terms and conditions mean and how they will be interpreted. Which unfortunately leaves photographers in a tough position, since even judges can’t decide what actions on social media platforms will give away copyrights and which ones won’t.  

Tips for Content Creators to Protect Copyright

  • Watermarks. Your most reliable option to protect your copyright is to watermark your images, bearing in mind that there is also software able to remove those watermarks.
  • New York Headquarters. If you sue, you’ll have a much better chance of avoiding the server test if you bring a suit in New York.
  • Private Account. It’s a clear-cut copyright violation if someone steals an image from a private account, according to Instagram’s contract.
  • Ditch Social Media. Although tough to build a following without social media, know that when you upload a photo to social media, it’s stripped of the copyright metadata you assigned in your editing software. Read this article for more information.

My Judgement

Mashable knew what they were doing was ethically wrong. 

Embedding a link to a photo stored on someone else’s servers is still copyright infringement. There is no question. 

The Ninth and Seventh Circuits in California and Chicago do not think embedding is infringement. Many disagree with them. So do I.

Copyright should not get into the technicalities of what server the photo resides on. Infringement liability should fall upon whoever is posting the photo. 

To me, it is a clear cut case.