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.

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.

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