United States: Ninth Circuit Rules On Copyright Preemption Of Right-Of-Publicity Claims

Last week, in Maloney v. T3 Media, Inc., the U.S. Court of Appeals for the Ninth Circuit held that claims under state right-of-publicity law are preempted by the Copyright Act "when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use." Case No. 15-55630 (9th Cir. April 5, 2017). This decision offers significant protection to creators depicting or otherwise incorporating real individuals into their work and clarifies that, for purposes of determining copyright preemption of a right of publicity claim, it is the way in which the name or likeness is used, rather than the type of copyrightable work at issue, that is relevant.

The Right of Publicity and Copyright Act Preemption

All states have common-law doctrines and/or statutes prohibiting the commercial exploitation of a person's name or likeness without their consent. Although these so-called "right-of-publicity" laws vary from state to state, generally they provide an individual with the ability to sue to prevent the use of their name, picture, or other aspect of their persona on or in connection with a product or service, without his or her consent.

Often, the likeness at issue in a right-of-publicity claim is embodied in a copyrighted work, such as a book, work of art, film, or photograph. The Copyright Act provides the creator of a work, not its "subject," with certain exclusive rights to exploit that copyrighted work. Thus, at times, an individual's right to control the use of his or her likeness under state right-of-publicity laws can clash with a copyright owner's exclusive rights in a copyrighted work. Section 301 of the Copyright Act expressly provides that, in those instances, the copyright takes precedence, and any "rights under the common law or statutes of a State that are equivalent to copyright" are preempted. As a result, some uses of a person's likeness that might otherwise be covered by the right of publicity may instead lie within the ambit of the Copyright Act.

Courts must determine when a right-of-publicity claim is preempted and when it is not. The Ninth Circuit applies a two-part test to evaluate when a state law claim, such as the right of publicity, will be preempted by copyright: The court must decide (1) whether the state law's subject matter falls within the scope of copyright, and (2) whether the rights asserted under state law are equivalent to the rights granted by the Copyright Act. While this test seems straightforward, its application in right-of-publicity cases has not always seemed consistent or sufficiently clear. In Maloney, the Ninth Circuit clarified prior decisions and provided a clearer roadmap for applying the preemption doctrine in right-of-publicity cases.

The Maloney Case: How a Likeness is Used Determines Preemption, not Content of Work

The NCAA maintains a collection of photographs of NCAA games, to which it owns or controls the copyrights. Defendant T3Media operated a website, authorized by the NCAA, through which consumers could purchase and download copies of those photographs. Patrick Maloney and Tim Judge, former NCAA athletes, filed a class action asserting claims under California's right-of-publicity and unfair competition laws against T3Media, arguing that T3Media's sale, without their consent, of images depicting games in which they played, constituted commercial exploitation of their names and likenesses, in violation of their right of publicity. T3Media brought an anti-SLAPP motion to strike, a device under California law allowing defendants to dispose early of meritless suits targeting conduct protected under the First Amendment. The district court granted the motion on the grounds that the Copyright Act preempted the plaintiffs' claims.

On appeal, the Ninth Circuit affirmed the district court's decision. The plaintiffs had argued that photographs of people inherently encompassed likenesses, and thus "photograph-based" publicity rights claims automatically fell outside the subject matter of copyright, and so could never be preempted. The Ninth Circuit disagreed, making clear that preemption determinations should not focus on the content of a work, but on the way in which an individual's likeness was used. In this instance, the court held that where T3Media distributed, for personal use, copyrighted works that simply captured a likeness, the plaintiffs' right-of-publicity claims interfered with the exclusive rights of the copyright holder and were preempted. As the court stated, "Plaintiffs' position, by contrast, would give the subject of every photograph a de facto veto over the artist's rights under the Copyright Act, and destroy the exclusivity of rights that Congress sought to protect...." Op. at p. 30.

The court distinguished T3Media's use from an earlier case, Downing v. Abercrombie & Fitch, which held a right-of-publicity claim was not preempted where the defendant used photographs containing the plaintiff's likenesses to advertise t-shirts. 265 F.3d 994, 1003 (9th Cir. 2001). The court expressly noted that a right-of-publicity claim is not preempted when a person's name or likeness is used "on merchandise or in advertising," contrasting such uses with situations where the right-of-publicity claim seeks to control an artistic work in itself. Therefore, because T3Media distributed the copyrighted NCAA photographs themselves, rather than using those photographs on other merchandise or in advertising, T3Media's use fell within the scope of the Copyright Act, and the plaintiffs' claims were preempted.

Contrast With Other NCAA Right of Publicity Decisions

The Maloney decision is the latest in a series of right-of-publicity actions brought by former NCAA athletes against uses of their images. For example, in Keller v. Elec. Arts, Inc. (In re NCAA Student-Athlete Name & Likeness Licensing Litigation), the Ninth Circuit permitted the right-of-publicity claims of another former NCAA athlete against the publisher of a series of sports video games which allowed players to play using depictions of football players similar to actual NCAA athletes to go forward. 724 F.3d 1268 (9th Cir. 2013). The publisher had filed an anti-SLAPP motion based on a First Amendment defense, and a different Ninth Circuit panel held that the game's use of athletes' likenesses was not sufficiently transformative to support a First Amendment defense. The Maloney decision describes Keller in a footnote as a case involving the use of a plaintiff's likeness to "sell a video game," even though the likenesses were not used in marketing or advertising but were nevertheless a feature that made the game more desirable to consumers.

In Maloney, the Ninth Circuit importantly confirmed that the Copyright Act's preemption provision equally protects the owners of photographic works. It further made clear that where a right-of-publicity claim seeks effectively to "control the artistic work itself," it interferes with the copyright owner's exclusive rights and will be preempted.

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