he U.S. District Court for the Central District of California in Maloney v. T3Media, Inc. recently held that state right-of-publicity claims brought by former college basketball players complaining of photographs licensed of their likenesses without consent warranted dismissal with prejudice pursuant to California’s anti-SLAPP statute, which prohibits suits aimed at inhibiting free expression. Members of the 2001 NCAA Division III champion Catholic University basketball team sued T3Media, a cloud storage, hosting, and digital licensing service, alleging violations of their rights of publicity when photographs of the players from the NCAA championship were displayed and made available for licensing on T3Media’s website.
Like many other states’ laws, the California common law and the California civil code prohibit the use of people’s identity for commercial advantage without their consent. The players asserted that, by displaying and offering licenses in photographs depicting their likenesses, T3Media did just that. However, as some recent decisions have also recognized, there is a critical distinction between a commercial transaction for a photograph, itself, and a commercial transaction where a photograph is used to promote or sell another product or service. This difference proved fatal to the plaintiffs’ right-of-publicity claims – not, as in other cases, as a result of statutory interpretation, but rather as a result of copyright preemption.
As the Maloney court explained, the NCAA owned copyrights in a vast photo library of college-sports-related images, including various photographs from the 2001 NCAA championship game depicting the plaintiffs. In 2012 the NCAA entered into a license agreement with T3Media permitting it to host those photographs as well as display them on its website and offer site visitors the opportunity to purchase a non-exclusive license to download a single copy of a photograph for personal use.
Claiming to represent a class of current and former college athletes “whose names, images, and likenesses have been used without their consent by Defendant for the purpose of advertising, selling, or soliciting purchases of the photographs,” the plaintiffs filed a federal diversity action alleging violations of California’s right of publicity laws. T3Media filed a special motion to strike under California’s anti-SLAPP statute; because the court agreed that T3Media was engaged in protected activity – expression of an issue of public interest in a public forum – the burden shifted to the plaintiffs to demonstrate a probability of success on the merits. Presented with a choice of affirmative defenses, including copyright preemption, First Amendment and statutory exemptions, the court focused its opinion entirely on the issue of preemption, which is where the plaintiffs’ likelihood of success faltered.
For copyright law to preempt a state law claim, “the content of the protected right must fall within the subject matter of copyright” and “the right asserted under state law must be equivalent to the exclusive right contained” in the Copyright Act. With regard to the first prong, the court held that the photographs were properly the subject matter of copyright as a pictorial work under the Copyright Act, and that the plaintiffs’ attempt to distinguish the right of publicity in their likenesses as separate from their likenesses embodied in the photograph missed the mark. The plaintiffs argued that it was not publication of the photographs themselves that was problematic, but rather it was the commercial use of the plaintiffs’ likenesses and names contained in the photographs. The court was not convinced, and differentiated between “merely selling a copyrighted photograph containing an athlete’s likeness,” which would be protected by copyright law, and “using the athlete’s likeness contained in the photograph for some other purpose,” such as advertising another product, which would give rise to a right-of-publicity claim. Because the plaintiffs could not identify a use of their likenesses beyond the four corners of the photographs, the plaintiffs essentially sought to prevent T3Media from distributing copyrighted works. The court held that “it would destroy copyright holders’ ability to exercise their exclusive rights under the Copyright Act, effectively giving the subject of every photograph veto power over the artist’s rights under the Copyright Act and destroying the exclusivity of rights the Copyright Act aims to protect.”
As to the second prong, the court explained that, in order to avoid preemption, a state claim must protect rights which are “qualitatively different from the copyright rights.” The court reiterated that the plaintiffs had not identified “a use of their names or likenesses independent of the display, reproduction, and distribution of the copyrighted images in which they are depicted,” which would be encompassed by the exclusive rights contained in the Copyright Act. Without an “extra element” outside of the rights covered by the copyright law, the plaintiffs’ claimed rights were preempted.
T3Media’s holding is consistent with recent decisions such as 2013’s Thompson v. Getty Images in the Northern District of Illinois (which we reported on [here]) where the court found that Getty Images’ use of photographs depicting the plaintiff had not been “in connection with an offer to sell or a sale of some other product, merchandise, good, or service,” and as such, had not violated the plaintiff’s state right of publicity. Cases like Thompson, and now T3Media, demonstrate an understanding of the substantial difference between the act of licensing copyrighted images containing someone’s likeness, and utilizing that person’s likeness within the image for some other commercial purpose, such as advertising another product or service. This distinction is critical in this area of law, particularly for photographers and image licensors, and is often overlooked or misunderstood in parties’ briefs and in courts’ opinions alike. Since many state publicity statutes were written before images could be licensed online, and hence do not specifically address such licensing, this decision provides a significant federal preemption challenge to any overreaching right of publicity claim that attempts to restrict the ability to license images. These recent decisions may signal a shift in the courts’ understanding of the intersection of copyright and the right of publicity, and will hopefully lead to clearer precedent on this important issue.