In a right of publicity case, the US Court of Appeals for the Ninth Circuit upheld a district court decision granting a motion to strike under California’s anti-SLAPP statute on the basis of copyright preemption. Maloney v. T3Media, Inc., Case No. 15-5563 (9th Cir., Apr. 5, 2017) (Smith, J).

Patrick Maloney and Tim Judge, both former student athletes, brought a class-action suit against T3Media for violation of their rights of publicity (ROP) under California state law and common law, and brought unfair competition claims based on T3Media’s use of plaintiffs’ images on its website, which sells licensed photographs from the National Collegiate Athletic Association Photo Library chronicling newsworthy sporting events using thumbnail images and brief descriptions regarding the people and events contained therein. The district court granted T3Media’s motion to strike the ROP claims on the basis of federal copyright law preemption, and declined to reach the other defenses. Maloney appealed.

In a lengthy decision, the Ninth Circuit agreed with the district court that preemption applied under the appropriate test, explaining that the subject matter of the ROP state claim fell within “the subject matter of copyright as described in 17 USC §§ 102 and 103,” and that the ROP rights asserted by plaintiffs were “equivalent to the rights contained in 17 USC § 106, which articulates the exclusive rights of copyright holders.” Specifically, the photographs at issue were “original works of authorship fixed in a tangible medium” as required under § 102. The Court also concluded that plaintiffs waived their opportunity to argue that the rights they asserted against T3Media were not equivalent to the exclusive rights of copyright holders to “display, perform, reproduce, or distribute” copies of a copyrighted work, because that issue was raised only by amicus curiae, not by the plaintiffs at the district court level.

Plaintiffs argued that prior precedent created a distinction between a person’s likeness used in a photograph and a person’s likeness used in other ways, such as in a moving picture or musical recording. The Ninth Circuit, however, agreed with the district court’s dismissal of that argument, stating that such precedent “did not mint a categorical rule that publicity right claims relating to a likeness in a photograph are not subject to preemption” and drawing numerous distinctions in the cases cited by plaintiffs. The Court emphasized that such cases looked at how the likeness was used (commercial versus non-commercial) and whether the purpose of a plaintiff’s ROP claim is to “vindicate misuse of an individual’s likeness” rather than attempting to stop the distribution, display or performance of a copyrighted work. 

The Ninth Circuit pointed out that T3Media offered the photographs of historic/newsworthy sporting events under a non-exclusive license that permitted only a single copy of the image for non-commercial art use. There was no advertising or merchandise sold by T3Media that would imply an endorsement of its website by plaintiffs, and T3Media did not use the likenesses apart from describing the content of the thumbnail images.

Accordingly, the Ninth Circuit held that the district court did not err in its dismissal of plaintiffs’ claims with prejudice based on copyright preemption.

Practice Note: To make an end-run around preemption, a plaintiff must show in its ROP claim that the use of the plaintiff’s likeness is used in a commercial sense, rather than simply being captured in an artistic work for personal use.