Guest Post: Copyright in Social media – AFP v. Daniel Morel

With social media interactions on the rise, it seems to be just a matter of time before questions of copyright infringement and issues over terms of service relating to social media start pouring into the courts. L. Gopika Murthy takes one such situation that’s arisen in an American case and examines how it may have been handled in India. This is her third submission in the SpicyIP Fellowship applicant series.

This post discusses the issues regarding copyright of content posted on Twitter and Twitpic in the context of Agence France Presse v. Daniel Morel[1] decided by the New York District Court in 2011. The post analyses the case not only in the context of US law but also attempts to analyse the issues of copyright infringement raised by the case if the same fact situation had occurred in India.[2]

 

On January 12, 2010, Daniel Morel, a professional photo journalist who has more than twenty five years’ experience in Haiti, took photographs of the aftermath of the devastating earthquake that shook Port au Prince, Haiti. As communications with Haiti were disrupted, Morel posted his photographs on Twitter and Twitpic, a third party application of Twitter that allows people to upload their pictures and to share them with other users. Within a few minutes, a resident of the Dominican Republic, named Lisandro Suero, copied Morel’s photographs, posted them on his own Twitpic page and claimed that he had exclusive photographs from Haiti for credit and copyright. Agence France Press, an international news agency copied Morel’s pictures from Suero’s Twitpic page and placed it on its online photo database, known as Image Forum. AFP also transmitted Morel’s photos to Getty, an image licensing company with the credit line AFP/Getty/Lisandro Suero. Morel sent cease and desist orders to AFP as well as other news outlets who were using Morel’s photographs. Despite this, AFP/Getty licensees continued to publish Morel’s photographs, many of them crediting Suero as the photographer.

 

Morel claimed that there had been direct and contributory infringement of his copyright by AFP. AFP counterclaimed that they had an express license to use Morel’s photographs and that therefore, there was no copyright infringement. Alternatively, AFP claimed that they were third party beneficiaries of the license agreement between Morel and Twitter.

 

AFP’s counterclaim that they had an express license to use Morel’s photographs was premised on Twitter’s terms of service which state that Twitter has been granted a non-exclusive, royalty free license along with the right to sub-license the content posted on their platform in any and all media and distribution platforms. Twitter’s terms of service also state that Twitter has the right to make the content posted on its website available for all companies, organizations or individuals who partner with Twitter. Similarly Twitpic’s terms state that a license to use the uploaded photographs has been granted to Twitpic and affiliated sites.[3]However, as Justice Pauley of the New York Court rightly noted, the license had been granted to Twitter and its partner organizations as well as to Twitpic and affiliated sites. As AFP had not even claimed that they were a partner organization/ company or an affiliated site of Twitpic, the license granted to Twitter and Twitpic by Morel does not extend to AFP. The Court also held that the provision that Twitter permits and encourages the broad re-use of content, while contradictory to their own license agreement, is insufficient to permit other users of Twitter such as AFP to re-use Morel’s copyrighted works. Hence, the Court ruled that AFP had no express license to use Morel’s photographs.

 

Section 30 of the Indian Copyright Act, 1957 (“the Act”) deals with the granting of licenses by owners of copyright. Before the Copyright (Amendment) Act, 2012, Section 30 required license agreements to be in writing and signed by the owner or his duly authorized agent. In such a situation, it is difficult to state with certainty, that Twitter’s terms of service would be a valid license agreement in the absence of Morel’s signature. However, after the 2012 amendment Section 30 states that an owner of copyright can grant any interest in the right by license in writing by him. Therefore, the requirement of signature of the owner of the copyright under Section 30 of the Act has been done away with. Hence, it is my opinion that Twitter’s terms of service would amount to a valid license agreement under the Act. However, the license has been granted to only Twitter and Twitpic and not to AFP. Thus, the Indian Courts are likely to come to the same conclusion as the New York District Court.

 

With respect to the issue of contributory infringement, the position under US and Indian law is now that contributory infringement arises when an infringing activity is induced or encouraged intentionally.[4] AFP’s only defence to the contributory infringement claim was that there was no infringement in the first place as they had an express license to use Morel’s photographs. However, as this contention was not upheld and as there was evidence to show that AFP, despite knowing that Morel was the photographer, had used his photographs crediting Suero as the photographer, the  Court ruled in favour of Morel on the contributory infringement claim. It is my opinion that the Indian Courts are also likely to come to a similar decision owing to the similar definition of contributory infringement.

 

AFP had also claimed that alternatively, they were third party beneficiaries of the license agreement between Morel and Twitter.  AFP was able to raise this claim because Twitter’s terms of serviceswere governed by California law and California law permits third party beneficiaries to enforce contracts made for their benefit. Twitter’s terms of service only necessarily required Morel to confer rights on Twitter’s partners and sub-licensees. However, as AFP had characterized themselves as users of Twitter and not as partners or sub-licensees, there was nothing on facts to show that Morel and Twitter as the contracting parties intended the contract to benefit AFP. The Court therefore held that AFP was not a third party beneficiary.

 

Under Indian law, it is well established that a third party beneficiary cannot enforce contracts even if it was intended for their benefit. Therefore, AFP probably could not bring forth this counter claim in the first place. Moreover, the reasoning of the New York District Court was justified when they held that AFP was not a third party beneficiary.

Admittedly, the New York District Court ruling was with respect to a motion to dismiss and not a decision on merits. Nevertheless, it is important because it highlights the importance of the provisions of terms of service of various social networking websites that are widely used in India while analysing the risks that run alongside with posting copyrighted material on such public platforms.

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