A federal judge from the Northern District of California has denied a motion to dismiss filed by Electronic Arts, Inc. (EA), which sought to dismiss the claim of Michael Davis and the other retired professional football players, who claimed that EA violated the law when it used their likeness in its Madden NFL football game.
EA had argued in the case that the plaintiffs’ claims are preempted by the Copyright Act, relying heavily on a recent Ninth Circuit decision, Maloney v. T3Media, Inc., 853 F.3d 1004 (9th Cir. 2017).
In Maloney, the plaintiffs were former members of a college basketball team that had won a Division III NCAA national championship. See 853 F.3d at 1007. Images from the team’s winning game were captured in copyrighted photographs—copyrights that were owned or controlled by the NCAA. Id. Defendant T3Media licensed the right to post the NCAA’s Photo Library on its website and thereafter displayed the photographs of the plaintiffs, with a description identifying each player by name. The public could purchase licenses to download these images. See Maloney v. T3Media, Inc., 94 F. Supp. 3d 1128, 1132 (C.D. Cal. 2015) [“Maloney I”], aff’d, Maloney, 853 F.3d at 1007-08.
The Maloney plaintiffs filed suit in California state court, asserting right of publicity claims under California Civil Code §3344 and common law, as well as a claim under California’s Unfair Competition Law, Cal. Bus. & Prof. Code § 17200 et seq. Defendant T3Media removed the action to federal court, asserting complete copyright preemption. The district court agreed there was complete preemption and dismissed the action. The Ninth Circuit affirmed.
EA contends the same result should follow in the instant case.
The plaintiffs challenged this, arguing that EA “waived copyright preemption by failing to raise it in prior motions or in answers to earlier versions of the complaint.” EA countered that the plaintiffs’ claims are “now” preempted, and that it acted promptly after Maloney was issued.
“The implied assertion that Maloney established a new rule of law is questionable,” wrote the court citing Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1146 (9th Cir. 2006) (finding copyright preemption where the “identity” plaintiff sought to protect lay in copyrighted music recording). “Nevertheless, under the circumstances, it is more appropriate to address the merits of the copyright preemption argument than to find it waived.”
The court in Laws “adopted a two-part test to determine whether a state law claim is preempted by the Copyright Act:
“We must first determine whether the ‘subject matter’ of the state law claim falls within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103.
“Second, assuming that it does, we must determine whether the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. § 106, which articulates the exclusive rights of copyright holders. Id. at 1137-38.”
The court continued: “Applying that test, the Maloney court concluded the student athlete plaintiffs could not pursue state law claims from use of their images (and names) in the copyrighted photographs. After reviewing the precedents,” the Maloney court summarized the rule thusly: “In sum, our cases clarify that a publicity-right claim may proceed when a likeness is used non-consensually on merchandise or in advertising. But where a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim is little more than a thinly disguised copyright claim because it seeks to hold a copyright holder liable for exercising his exclusive rights under the Copyright Act.” Maloney, 853 F.3d at 1016.
“EA contends that plaintiffs in this case are in an identical position to the Maloney plaintiffs,” wrote the court in the instant opinion. “The alleged likenesses that the plaintiffs seek to protect appear in a copyrighted artistic visual work (the Madden games), and the work itself is being distributed for personal use. The plaintiffs’ likenesses are not being used on merchandise or in advertising.
“The plaintiffs insist that the Madden games are ‘merchandise’ and the use of their likenesses ‘in’ the games is therefore outside the scope of copyright. The plaintiffs have substituted the word ‘in’ for the word ‘on’ that is used in Maloney. Under the rule set out in Maloney, exemption from copyright preemption is only available when the likenesses are being used to promote a product or artistic work, either by appearing on merchandise, or in stand-alone advertising. The plaintiffs’ argument that they have always been alleging EA used their likenesses in the games for financial gain misses the point. They have not alleged the images have been used in stand-alone promotional material, or on the ‘merchandise.’
“EA’s attempt to bring this case within the ambit of Maloney nevertheless fails. The crucial distinction is that the likenesses of the Maloney plaintiffs were fixed in photographs, thereby satisfying the copyright prerequisite that the subject matter be an ‘original work of authorship fixed in any tangible medium of expression . . . from which [it] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.’ 17 U.S.C. § 102(a). EA has simply presumed that the alleged likenesses of plaintiffs here are subject to copyright.
“There is no dispute that video games are generally copyrightable, and EA obtained copyright registrations for each of the Madden Games. That a particular artistic work is subject to copyright protection, though, does not mean every element within the work is copyrightable. For example, a new book about Leonard Da Vinci is copyrightable as an original work of authorship, but excerpts from his notebooks reproduced as illustrations in the book would not be.
“Here, game play in the Madden games is dynamic, interactive, variable, and in the hands of the consumer. Plaintiffs contend the avatars allegedly representing their likenesses even have performance characteristics representing plaintiffs’ own capabilities in their time as active NFL players. While recordings of actual football games are subject to copyright notwithstanding the independent actions of players during the course of the games, such recordings satisfy the requirement of copyright that the work be ‘fixed’ in a tangible medium of expression. See Dryer v. NFL, 814 F.3d 938, 942 (8th Cir. 2016) (‘Although courts have recognized that the initial performance of a game is an ‘athletic event’ outside the subject matter of copyright . . . the Copyright Act specifically includes within its purview fixed recordings of such live performances.’); 17 U.S.C. § 101. The Madden games, in contrast, allow game play that is not fixed in a tangible medium of expression, and part of plaintiffs’ claims is that their identities are reflected in that game play.
“Thus, Maloney, which involved fixed photographs, does not govern here and the motion to dismiss must be denied.”
Michael E. Davis, et al. v. Electronic Arts, INC.; N.D. Cal.; Case No. 10-cv-03328-RS, 2017 U.S. Dist. LEXIS 216505; Copy. L. Rep. (CCH) P31,193; 12/11/17
Attorneys of Record: (for plaintiffs) Austin P. Tighe, Jr., Feazell & Tighe LLP, Austin, TX; Brian Douglas Henri, Henri Law Group, Palo Alto, CA; Michael Irwin Katz, Greenberg Gross LLP, Costa Mesa, CA; Sony Broto Barari, Bartko, Zankel, Bunzel & Miller, San Francisco, CA. Leonard W Aragon, PRO HAC VICE, Hagens Berman Sobol Shapiro LLP, Phoenix, AZ. (for Electronic Arts Inc., defendant) R. James Slaughter, LEAD ATTORNEY, Nicholas David Marais, Robert Adam Lauridsen, Keker, Van Nest & Peters LLP, San Francisco, CA; Joseph Taylor Gooch, Keker and Van Nest LLP, San Francisco, CA.
