Copyright preemption bars athletes’ right of publicity claims against photo sales

Maloney v. T3Media, Inc., No. 14-cv-05048 (C.D. Cal. Mar. 6, 2015)
Plaintiffs, members of the Catholic University basketball team from 1997 until 2001, sued T3, which provides cloud-based storage, hosting and licensing services for digital content uploaded by third-parties. T3 entered into an agreement with the NCAA to store, host, and license thousands of photographs for which the copyrights are owned and/or controlled by the NCAA, including photos of plaintiffs.  People could view samples and descriptions of the photos, and buy a non-exclusive license to download a single copy of a photo for personal use.  Plaintiffs, on behalf of a putative class of current and former NCAA student-athletes, sued for violation of their statutory and common-law rights of publicity, and added a derivative UCL claim.  (Why doesn’t §230 take care of this in the 9thCircuit, at least for T3?)
The court granted T3’s special motion to strike under California’s anti-SLAPP law. The court quickly agreed that, as required by the anti-SLAPP law, the claims here arose from protected activity.  First, the challenged conduct was “publication made in a public forum in connection with a matter of public interest,” and second, it was “in furtherance of the exercise of the . . . constitutional right of free speech in connection with a public issue or an issue of public interest,” both of which are protected statutory categories. The website was a public forum even though it didn’t allow members of the public to comment; and anyway the statute applies in that second provision to private communications as long as they concern a public issue.  The statute doesn’t define a “public issue” or an “issue of public interest,” but it does provide that it shall be construed broadly. Courts have therefore found that “an issue of public interest . . . is any issue in which the public is interested.” And here, this wasn’t a hard call: “The photographs here depict moments in NCAA sports history.”
Under the anti-SLAPP law, the burden thus shifted to plaintiffs to prove a probability of prevailing on their claims—essentially an early summary judgment proceeding.
The court didn’t have to address the First Amendment or statutory defenses for depicting sporting events, because it found §301 preemption.  Section 301 preempts causes that concern the same subject matter and the same rights as copyright.  As to the subject matter, plaintiffs’ claims came from advertising and sale of images to the public; the images were photographs, which fall within the subject matter of copyright.
Plaintiffs argued that they weren’t asserting rights in the photos, but rather rights in their likenesses, which aren’t works of authorship.  This has always struck me as a distinction without a difference, given that the likenesses are an inseparable part of the photos.  But plaintiffs argued that under Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), publicity claims were categorically not preempted. 
T3 responded that Downing, and all the other cases plaintiffs cited, involved “the use of plaintiffs’ names and likenesses to sell commercial products and services . . . .”  By contrast, here “the plaintiffs are trying to prevent the display, reproduction, and/or distribution of copyrighted works.” Note that this distinction seems more relevant to part two of the §301 analysis (extra element), but the court agreed that Downing was only rejecting preemption as applied to use of photos in an ad campaign. 
In Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134 (9th Cir. 2006), the Ninth Circuit explained that, in Downing, “[defendant] had not merely published the photograph. Rather, it published the photo in connection with a broad surf-themed advertising campaign, identified the plaintiffs-surfers by name, and offered for sale the same t-shirts worn by the plaintiffs in the photo.”  Thus, the use of the name/likeness was separated from the copyrighted work itself.  Downinghad distinguished Fleet v. CBS, Inc., 50 Cal.App.4th 1911, 58 Cal.Rptr.2d 645 (Cal. Ct. App. 1996), by contrasting the Fleetplaintiffs, who sought to prevent the defendant from reproducing and distributing their copyrighted performances, with the Downing plaintiffs whose “claim [was] based on the use of their names and likenesses, which [were] not copyrightable.”  (Note, however, that the Fleet plaintiffs’ names and likenesses were used, as was Laws’ name in connection with her sampled song; it’s just that they were used in direct connection with identifying the subject matter—who was in the film or who sang the song, respectively.)
An unpublished decision in Lightbourne v. Printroom, Inc., No. SACV 13-00876, held similar claims by student athletes against a company selling photographs were not preempted by copyright.  But the critical distinction at issue was not identified, and the court didn’t find Lightbournepersuasive. “Defendant correctly observes the difference between merely selling a copyrighted photograph containing an athlete’s likeness and using the athlete’s likeness contained in the photograph for some other purpose.” 
Here, the likeness was only used “insofar as it is contained in the four corners of the copyrighted work,” justifying preemption.  But using the image to sell a box of cereal or a T-shirt would be use “for some purpose beyond the four corners of the copyrighted work” and would suggest endorsement of that other use.  (I think this result is right, but as expressed here it doesn’t make much sense.  If I buy a T-shirt with a celebrity on it, how is that different from buying a photo of the celebrity or a video of celebrity playing a game?  In both cases I am paying for a material object but what I really want is the representation of the celebrity; and yet I don’t think the court means to limit its holding to intangible downloads.  And note the recent Marley case in contrast to the automatic assumption that appearance on a T-shirt equals endorsement.)  The court here agreed with the Seventh Circuit that “the basis of a right of publicity claim concerns the message—whether the plaintiff endorses, or appears to endorse the product in question.”   Toney v. L’Oreal USA, Inc., 406 F.3d 905, 910 (7th Cir. 2005).  That only occurs when the use of the athlete’s likeness extends beyond the four corners of the work.  (But why?  Why couldn’t consumers assume that the athlete endorsed within the four corners?  Why doesn’t the athlete at least get a chance to prove that?  I don’t think he should, let me be absolutely clear, but the reason has to be more than just certainty in advance of evidence: it has to be that we aren’t willing to let the athlete control copyrighted works in that way.  That’s why I think conflict preemption works better than conventional §301 analysis.)
Because plaintiffs didn’t allege use beyond the “four corners” of the photos themselves, their claims were preempted.  Their claims sought to prevent T3 from distributing the copyrighted works themselves.  “Accepting Plaintiffs’ interpretation without separating the likeness from the work would impermissibly negate Copyright’s intended preemptive effect.    Further, 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.”
Plaintiffs argued that the contrary cases were distinguishable because they involved copyrightable performances.  But that was confusing the question of which exclusive copyright right was at issue with preemption. “For Plaintiffs’ claims to succeed, they must identify some use of their likenesses (as captured in the photographs) independent of the mere sale of the pictures. Otherwise, these sales fall squarely within the rights of display, reproduction, and distribution controlled by the Copyright Act” (citations omitted). The photos were only used to advertise their own sale.  (And that of other pictures?  Would showing them as a sample of what was available count to take this out of the preemption category?)  This attempt “to prevent nothing more than the reproduction, performance, distribution, or display of a [copyrighted work] is subsumed by copyright law and preempted.” Fleet.
Under these circumstances, plaintiffs’ “likenesses [can] not be detached from the copyrighted [work]” and their claims were preempted.  KNB Enterprises v. Matthews, 78 Cal. App. 4th 362 (Cal. Ct. App. 2000), addressed the defendant’s contention “that something more than a mere infringing use is required to avoid preemption of a [right-of-publicity] claim,” but found no preemption because the defendant didn’t have legal rights to publish the copyrighted work; that was not the case here.
Returning to Downing, the plaintiffs’ argument that it categorically established a no-preemption rule could be thought to apply to the second prong: “Because the subject matter of [plaintiffs’] right of publicity claims is their names and likenesses, which are not copyrightable, the claims are not equivalent to the exclusive rights contained in § 106.” (That sounds like prong one, but ok.)  To survive preemption, a state cause of action must have an extra element that changes the nature of the action. But here, there was no use of plaintiffs’ names or likenesses independent of the display, reproduction, and distribution of the copyrighted images in which they are depicted. Thus there was no extra element rendering their claims qualitatively different from the copyright holder’s right in the photographs themselves.  It wasn’t that plaintiffs would need to be the copyright owner to have rights, the court said: it was that they didn’t “identify a use of their likenesses independent of the copyrighted works.” As a result, their claims involved both the same subject matter and the same rights and were preempted.
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