This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.

Judge Alison J. Nathan of the United States District Court for the Southern District of New York recently issued an important decision involving copyright infringement and the availability of content on social media sites like Twitter.  In Agence France Presse v. Morel, the court granted partial summary judgment to defendant and counterclaim plaintiff Daniel Morel, finding that the Agence France Presse ("AFP") and the Washington Post (the "Post") had infringed his copyrights in photographs he had taken after the 2010 earthquake in Haiti.

In January 2010, Morel was in Haiti when the devastating earthquake struck. The photojournalist captured images of the aftermath and posted them to Twitter through his TwitPic account.  Another Twitter user – Lisandro Suero – reposted the pictures claiming that he had exclusive photographs of the earthquake.  AFP obtained the photographs from Twitter, credited them to Suero, and transmitted them through its wires and to its partner, Getty Images ("Getty").  The Post obtained some of Morel's images from Getty and published them on its website.  Sometime in the immediate aftermath, efforts were made to correct the caption of the photos to credit Morel, and ultimately, to take down the pictures once it was apparent that Morel and his photo licensing agency were claiming exclusive rights over the images.

The dispute, however, didn't end there.  AFP moved first by filing a complaint against Morel for commercial defamation and seeking a declaration that AFP had not infringed Morel's copyrights in the photographs at issue.  AFP based its defamation claim on statements purportedly made by Morel and his attorney to third parties that AFP did not have a license to distribute Morel's photographs and that it had infringed his copyrights.  Morel filed a counterclaim against AFP, Getty and the Post (the "Counterclaim Defendants"), alleging that they had willfully infringed his copyrights.  He also claimed that AFP and Getty were secondarily liable for the infringement of others who had posted the photos and that they had violated the Digital Millennium Copyright Act ("DMCA").  Eventually, both sides filed summary judgment motions.

On summary judgment, the Counterclaim Defendants did not deny that they had copied, distributed, and displayed Morel's images.  Rather, their motions rested on several affirmative defenses.  Of particular interest was AFP's claim that by posting the photos on TwitPic/Twitter, Morel had granted AFP a license.  Specifically, AFP argued that it was a third party beneficiary of Twitter's Terms of Service ("TOS"), and that by accepting the TOS and posting his pictures, Morel had granted AFP a license for its use of the photographs.

Twitter's TOS provided, in part, that:

You retain your rights to any Content you submit, post or display on or through the Services. By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed).

. . .

You agree that this license includes the right for Twitter to make such Content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services, subject to our terms and conditions for such Content use.

. . .

You are responsible for your use of the Services, for any Content you provide, and for any consequences thereof, including the use of your Content by other users and our third party partners. You understand that your Content may be rebroadcasted by our partners and if you do not have the right to submit the Content for such use, it may subject you to liability. . .

AFP pointed out that Twitter's TOS stated: "Tip[:] What you say on Twitter may be viewed all around the world instantly. You are what you Tweet!" and "We encourage and permit broad re-use of Content."  AFP also relied on Twitter's Guidelines for Third Party Use of Tweets in Broadcast or Other Offline Media, which provide: "we welcome and encourage the use of Twitter in broadcast," to support its argument that the Twitter TOS intended to confer a benefit (in the form of a license) on AFP as one of Twitter's "other users."

Judge Nathan did not accept AFP's argument that the Twitter TOS were sufficient to defeat Morel's claims. She noted that, under California law (which governs Twitter's TOS), the intent to benefit a third party must appear from the language of the contract.  The intent must be "clearly manifest" in the terms of the agreement.  In reviewing the evidence that AFP put forth, the court concluded that the terms of the TOS did not necessarily require nor manifest the intent to grant the license urged by AFP, and in fact, suggested the opposite.  In other words, AFP was not a third party beneficiary of the TOS.

The court also noted that "in making its arguments on summary judgment AFP wholly ignores those portions of the Twitter TOS that are directly contrary to its position, particularly those portions stating that 'you retain your rights to any Content you submit, post or display' and 'what's yours is yours – you own your content.'"  The court found that "these statements would have no meaning if the Twitter TOS allowed third parties to remove the content from Twitter and license it to others without the consent of the copyright holder."  Because AFP and the Post raised no other defenses to direct liability, the court found them liable for copyright infringement.

Separately, Getty claimed that, as a "service provider," it was free from liability on account of the safe harbor provisions of the DMCA. It also argued that its conduct was not sufficiently "volitional" to be an infringement of Morel's copyrights.  The court, however, declined to grant summary judgment to either side on these issues, and similarly denied the parties' motions for summary judgment on willfulness, secondary liability, vicarious liability, and claims under the DMCA.

Finally, the court sided with AFP and Getty in finding that the plaintiff's copyright damages could not be multiplied based on the number of infringers with whom the defendants were jointly and severally liable.  Rather, the court held that both the Copyright Act and the DMCA provide for a single statutory damages award per work infringed, not per infringement.

Ultimately, the court's decision is an important reminder for everyone to review and understand the terms of use for shared content on social media sites.  Whether you are a content provider, a content user, or both, the terms of use on social media websites should factor in to your expectations regarding the who, what, when, and how of using content posted on these sites.  Notably, Twitter has modified its TOS since this lawsuit was initiated and there is no doubt that other social media sites are keenly aware of the impact of their terms of service.1  Users of those sites should be equally alert when it comes to the availability and use of content posted online.

Footnotes

1  For example, Instagram recently introduced changes to its terms of use (to go into effect on January 19th, 2013) that generated significant controversy.  Instagram's Terms of Use are available at: http://instagram.com/legal/terms/

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