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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
22 Aug 2018, Speaking Engagement, Koln, Germany

The panel discusses recent European legal developments around what you can and cannot put in your game – from the design of in-app purchases and rewarded ads to current age-rating trends and the ubiquitous loot box.

23 Aug 2018, Other, Washington, DC, United States

In August, NELI will present the nation's foremost annual public sector training surveying EEO and employment law developments impacting federal, state and local government employment, examining the effect of these developments on current practices, and providing practical advice to ensure compliance in the areas listed below:

5 Sep 2018, Other, Chicago, United States

As the world’s economies grow increasingly integrated through trade, acquisitions and joint ventures, U.S. international tax laws impact a greater percentage of businesses and transactions.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions