United States: "All I've Got Is a Photograph" — Copyright Law's Preemption of Right of Publicity Claims

Last Updated: August 14 2017
Article by Caroline H. Mankey

The names and likenesses of celebrities, athletes and other public figures can be extremely valuable, as evidenced by the premium prices paid by many companies for celebrity endorsements and celebrity-branded goods. Think Jessica Simpson, Ivanka Trump and Sarah Jessica Parker shoes, Kate Hudson's Fabletics activewear, Kylie Jenner's makeup line, Heidi Klum's line of lingerie, Martha Stewart's housewares, Air Jordan shoes and innumerable others. In recognition of both the valuable property rights and the privacy rights associated with one's persona, many states have enacted statutes protecting individuals' rights of publicity. Although they vary slightly from state to state, these statutes generally prohibit the unauthorized use of an individual's name, likeness, voice or other recognizable indicia of identity from being used in advertising or in connection with the sale of goods or services without permission. Uses of names and likenesses in connection with news, public affairs, sports broadcasts or accounts, or political campaigns, are typically considered to fall within the protections of the First Amendment and are expressly excluded from the statutory prohibitions.

In addition to the potential conflict with First Amendment rights, the restrictions that right of publicity statutes place on commercial speech sometimes conflict with other federal rights, including copyrights. In such cases, the federal law of copyright will preempt state law protection of publicity rights.

In Maloney v. T3Media, Inc., 853 F.3d 1004 (9th Cir. 2017), the plaintiffs were former student athletes whose likenesses in photographs had been licensed by T3Media for use by third parties for non-commercial art use for fees of $20 to $30 each. The plaintiffs sued for state law claims of misappropriation of their rights of publicity under the California Civil Code and under common law and for unfair competition. T3Media moved, and the District Court granted the motion, to strike the complaint on the grounds that the claims were preempted by the United States Copyright Act. The plaintiffs appealed to the Ninth Circuit Court of Appeals.

The Ninth Circuit concurred that the Copyright Act preempted the plaintiffs' state law claims. Under Section 301 of the Act, all state law rights that are equivalent to copyright and that fall within the scope of federal copyright law are preempted. 17 U.S.C. § 301. The Ninth Circuit has adopted a two-part test for determining when a state law claim is preempted by the Act. First, it decides whether the subject matter of the state law claim falls within the subject matter of copyright. The subject matter of copyright consists of original works of authorship fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated. Second, the Ninth Circuit determines whether the rights asserted under state law are equivalent to the rights protected by the Copyright Act.

The key issue in dispute in Maloney v. T3Media was whether the plaintiffs' publicity rights fell within the subject matter of copyright and satisfied the first prong of the test for preemption. The plaintiffs maintained that right of publicity claims based on photographs fall outside the subject matter of copyright because they protect an individual's persona, which cannot be fixed in a tangible medium of expression.

The Ninth Circuit disagreed with the plaintiffs' premise that all photographs containing likenesses of individuals are exempt from preemption. Instead, the court distinguished preempted claims from claims that are not preempted based on the type of use that is made of a name or likeness. It concluded that a right of publicity claim is "not preempted when it targets non-consensual use of one's name or likeness on merchandise or in advertising," but a right of publicity claim is preempted "when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use."  

The court's characterization of the images in Maloney as being for personal use, however, is somewhat artificial. The challenged use in Maloney was the distribution of digital copies of the images online in exchange for license fees, which is inherently commercial, and not in effect any different than the sale of any other goods bearing a celebrity likeness. When provided to a consumer in exchange for a fee, the digital image is akin to any other item of merchandise. What the buyer does with the image is irrelevant to the analysis of whether that initial distribution and sale of the image to the buyer violates intellectual property rights. A buyer's subsequent commercial exploitation of a celebrity image would violate the Copyright Act and right of publicity statutes regardless of whether the source of the image was a digital download or another item of merchandise.

Furthermore, the Copyright Act itself does not define infringement based on the intended use by the buyer of an item of infringing merchandise. Infringing merchandise is commonly sold to buyers who are going to make solely personal use of the item. Imagine, for example, a coffee mug bearing an image of Justin Bieber. It is likely intended for the buyer's personal use. Therefore, the intended use by the buyer is not relevant to a determination based on the language of the Copyright Act as to whether a claim for misappropriation of a publicity right falls within the subject matter of copyright.

To reach its conclusion, the court relied on its reasoning in Downing v. Abercrombie & Fitch, 265. F.3d 994 (9th Cir. 2001), in which Abercrombie & Fitch had included in its catalog photographs of the plaintiffs participating in a surfing contest. In Downing, the Ninth Circuit found no preemption by distinguishing the publication of a photograph itself as a creative work of authorship from the use of likenesses to sell clothing. Thus, the court in Maloney concluded that the determination of whether a right of publicity claim falls within the subject matter of copyright turns on whether the claim "seeks to vindicate misuse of an individual's likeness, as opposed to merely interfering with the distribution, display, or performance of a copyrighted work." 

The undercurrent running throughout the Ninth Circuit's Maloney opinions is akin to a fair use analysis, although the words "fair use" do not appear anywhere in the opinion. The fair use doctrine authorizes "fair" uses of copyrighted material without the owner's consent for purposes such as criticism, comment, news, reporting, teaching, scholarship or research. In determining whether a use is fair, courts must consider: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purpose; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. In focusing on the fact that the buyers of the licenses to the digital images were permitted to use the works only for personal, non-commercial art use in Maloney, the court appeared to be applying the first factor of the fair use analysis.

The court in Maloney also relied on Fleet v. CBS Inc., 50 Cal. App. 4th 1911 (1996), which perhaps better exemplifies circumstances warranting preemption. In Fleet, the plaintiffs were actors in a film who sought to prevent CBS from using their names and likenesses in connection with the exploitation of the film after they had been denied the compensation they desired. Because the relief sought was solely to prevent CBS from exploiting its copyright protected film, the claim was preempted by the Copyright Act.

Perhaps a simpler way of articulating the distinction struck by the Ninth Circuit is this: When a copyright protected image is on goods or merchandise or in advertising that goes beyond the mere distribution or display of the work itself, a right of publicity claim is not preempted. But where the good or merchandise is the copyrighted work itself (or copies thereof), such as a film or photograph, a right of publicity claim is 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.

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