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Between thought and expression

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When a photographer “tweets” her photographs on Twitter or a videographer posts his videos on Vimeo or YouTube, the works become available to be used by anyone in the world, right? After all, isn’t sharing the whole point of social media? In a legal sense, are the photographer and videographer not granting to the world an implied license to use their work by using social media to exhibit them?

That was essentially the argument advanced – unsuccessfully – on behalf of Agence France Presse (“AFP”) in Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y.). The case, in which summary judgment was granted earlier this year, has garnered much interest.  It is one of the only cases to address if, when and how user generated online content can be used for commercial purposes by third parties.

The facts of the case are as follows. Daniel Morel, the defendant and counterclaimant, was a photojournalist who took several iconic photographs of the aftermath of the 2010 earthquake in Haiti and then posted the photos on his Twitter account. Soon after he posted them, AFP obtained them from a third party, transmitted them to Getty Images which, in turn, then “licensed” the photos to news agencies like CNN. Morel accused the news agencies, Getty and AFP of infringing his copyright in the photos. AFP pre-emptively brought an action for a declaratory judgment that it had not infringed copyright, claiming that Morel had granted them an implied license in the photos when he posted them on Twitter. Morel counterclaimed for copyright infringement against AFP, brought third party claims against the news agencies and others and then sought summary judgment.

AFP argued that Morel had granted an implied license to AFP to use his photographs through Twitter’s terms of use.  AFP noted that Twitter’s terms of use that state that Twitter “encourage[s] and permit[s] broad re-use of Content" and grant Twitter “a worldwide, non-exclusive, royalty-free license…to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute [user’s content] in any and all media…” and further state that, by posting such content on Twitter, “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… subject to our terms and conditions for such Content use.”

AFP argued that it was a third-party beneficiary of Morel’s license to Twitter to use and display his photographs and, as such, was insulated from liability for infringement. 

U.S. District Court Judge Alison Nathan rejected AFP’s argument, granting partial summary judgment in favour of Morel.  While she acknowledged that Twitter’s terms of use permit and, indeed, promote the re-distribution of content by others in some circumstances (e.g. through “re-tweeting”), she found that the terms were “not intended to confer a benefit on the world-at-large… to commercially distribute it.”  Her reasons include portions of Twitter’s terms of use that contradict AFP’s position, particularly those portions stating that “[y]ou retain your rights to any Content you submit, post or display” and “what’s yours is yours – you own your content.”

In the past, Twitter has gone to court on behalf of its users’ ownership rights in their tweets. In 2012, Twitter resisted attempts by New York prosecutors to obtain from Twitter incriminating “tweets” posted by a participant in the Occupy Wall Street protests, arguing that users, not Twitter, are the “owners” of their content.  Twitter has not participated in the AFP case, however.

Agence France v. Morel is scheduled for trial in September of this year on the issues left over from the summary judgment, including whether the infringement was wilful, whether Getty Images is liable and the quantum of damages to be paid.

In the meantime, ownership of user generated online content remain a hot issue, and not only among intellectual property lawyers. Social media followers, in particular, are paying a great deal of attention to terms of use that affect ownership in content.  In December of last year, Facebook’s Instagram service was widely vilified when proposed amendments to its terms of use were interpreted to mean that Instagram could sell users’ photographs without permission.  Within days, Instagram publicly disavowed some of its plans.

The number of free terms of use/terms of service “generators” that are available online suggests that many website operators still think that including a “Terms of Use” behind a hyperlink at the bottom of the home page is a mere formality and that the content doesn’t really matter. After all, no one ever reads them, right? Cases like Agence France v. Morel suggest otherwise, particularly if the website includes user generated content.  For website operators, users who post content online and those who wish to mine user generated content for other purposes, the terms of use on a website are at least worth a look.

Here's a link to a variation of this article that was published recently in Lawyers Weekly.

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