A federal judge from the Central District of California has granted summary judgment to the operator of the Website of the University of Texas at El Paso (UTEP) athletic department in a case in which a student athlete claimed that the operator did not own his publicity rights.
In so ruling, the court found that plaintiff Yahchaaroah Lightbourne surrendered his legal rights when he signed the Student-Athlete Image Authorization form.
Lightbourne played college football at UTEP from 2009 to 2011. Lightbourne received need-based financial aid in 2009 and athletic scholarships in 2010 and 2011.
UTEP had an online University Photo Store, which launched in mid-2012. In 2006, UTEP granted IMG College, LLC an exclusive license to implement a “University Sports Website” and granted it exclusive license to use student-athletes’ names, images, and likenesses. IMG in turn signed an agreement with CSTV Online, Inc. — a predecessor company to the defendant CBS Interactive, Inc. (CBSI) — granting CSTV the “exclusive right to serve as the university athletics Websites services partner . . . including the reproduction and sale of university-related photographic images . . . .” UTEP explicitly approved the launch of its University Photo Store.
UTEP’s University Photo Store was accessible from a link on UTEP’s athletic department Website. Nine photographs of Lightbourne, which were taken by UTEP staff photographers, appeared on the Photo Store.
In 2009, 2010, and 2011, Lightbourne signed Student-Athlete Image Authorization forms provided to him by UTEP. Each form reads in its entirety:
“I, [Yahchaaroah Lightbourne], hereby authorize the University of Texas at El Paso (UTEP) or its agents to make copies of, use, sell and distribute directly or through a third party, any photographic or other images taken in connection with my participation on a UTEP intercollegiate athletic team.”
The court noted that Lightbourne signed and dated each form. He was an adult when he signed each form. And no one at UTEP told Lightbourne that he could not play college football if he did not sign the (form). Further, UTEP’s athletic director testified that signing the (form) was not mandatory and that Lightbourne would have been allowed to play at UTEP even if he had not signed the forms.
After the filing of the lawsuit, CBSI moved for summary judgment.
The court found, primarily, that Lightbourne’s right of publicity claims fail “because he expressly consented to the challenged uses of his image.”
Plaintiff Relies on Section 12 of the NCAA Bylaw
The court then turned to Lightbourne’s more novel argument, which was that “there are genuine issues of material fact surrounding the issue of express consent and the import of the (forms),” that they “must be read in the context of the NCAA rules that prohibit the use of a student-athlete’s [name, image, or likeness] for commercial purposes.”
Specifically, the plaintiff pointed to Section 12 of the NCAA Bylaws, which read:
“12.5.2.2 Use of a Student-Athlete’s Name or Picture Without Knowledge or Permission. If a student-athlete’s name or picture appears on commercial items (e.g., T-shirts, sweatshirts, serving trays, playing cards, posters) or is used to promote a commercial product sold by an individual or agency without the student-athlete’s knowledge or permission, the student athlete (or the institution acting on behalf of the student-athlete) is required to take steps to stop such an activity in order to retain his or her eligibility for intercollegiate athletics. Such steps are not required in cases in which a student-athlete’s photograph is sold by an individual or agency (e.g., private photographer, news agency) for private use. (Revised: 1/11/97, 5/12/05)”
Lightbourne argued that Section 12.5.2.2 “does not permit student-athletes to grant consent to use their [names, images, or likenesses] for commercial purposes” and “by its own terms, requires Plaintiff or UTEP to attempt to stop CBSI’s conduct or risk losing eligibility and, by extension, the athlete’s scholarship.”
The court, however, found that Section 12.5.2.2 “is irrelevant for numerous reasons. First, it facially does not apply to the situation at bar, but rather applies only where a student-athlete’s image is used ‘without the student-athlete’s knowledge or permission . . . .’ (Id.) Because Lightbourne expressly consented to the sale of his likeness by UTEP and its agents, Section 12.5.2.2 by its plain meaning does not apply here.
“More fundamentally, Lightbourne does not even attempt to explain how Section 12.5.2.2 — even if it did apply to the situation at bar — would somehow vitiate his express legal consent. Rather, if Section 12.5.2.2 prohibited Lightbourne from assenting to the sale of his likeness, his signing of the (forms) would appear only to place him in breach of his alleged obligation to the NCAA. See Vick v. Patterson, 158 Cal. App. 2d 414, 418, 322 P.2d 548 (1958) … Thus, Section 12.5.2.2 is irrelevant to the instant Motion.”
The court concluded that “there is no genuine dispute of material fact as to whether Lightbourne expressly consented to the sale of his image on UTEP’s University Photo Store. As a result, a reasonable factfinder could not render a verdict in Lightbourne’s favor on his right of publicity claims.”
Yahchaaroah Lightbourne v. Printroom INC., et al.; C.D. Cal.; CASE NO. SACV 13-876-JLS (RNBx), 2015 U.S. Dist. LEXIS 111808; 43 Media L. Rep. 2211; 8/14/15
Attorneys of Record: (for plaintiff) Stuart McKinley Paynter, LEAD ATTORNEY, The Paynter Law Firm PLLC, Washington, DC; William Sorrell Sowders, LEAD ATTORNEY, Gust Rosenfeld PLC, Phoenix, AZ; Celeste H G Boyd, PRO HAC VICE, The Paynter Law Fi5rm PLLC, Chapel Hill, NC; Elaine T Byszewski, Hagens Berman Sobol Shapiro LLP, Pasadena, CA; Leonard W Aragon, Rachel E Freeman, Robert B Carey, PRO HAC VICE, Hagens Berman Sobol Shapiro LLP, Phoenix, AZ; Steve W Berman, PRO HAC VICE, Hagens Berman Sobol Shapiro LLP, Seattle, WA. (for defendant) Christy L Bertram, LEAD ATTORNEY, Johnson and Bertram LLP, Irvine, CA. Bruce Isaacs, LEAD ATTORNEY, Davis Wright Tremaine LLP, Los Angeles, CA; Eric S Hochstadt, James W Quinn, Yehudah L Buchweitz, PRO HAC VICE, Weil Gotshal and Manges LLP, New York, NY.
