By Christian Dennie
Patrick Maloney and Tim Judge (“Plaintiffs”) are former NCAA student-athletes who played for the Catholic University (“CU”) men’s basketball team between 1997 and 2001. In their final year at CU, they made it all the way to the Division III national championship game, and helped lead the underdog Cardinals to a 76-62 upset victory over the William Paterson University Pioneers. The game’s drama was captured in a series of photographs depicting the Plaintiffs in play, and later posing as members of the team with CU’s first-ever national championship trophy. The NCAA owns or controls the copyright to these photographs. It accordingly placed them into its collection, the NCAA Photo Library.
T3Media provides storage, hosting, and licensing services for a wide variety of digital content. In 2012, it contracted with the NCAA to store, host, and license the images in the NCAA Photo Library. The NCAA Photo Library itself contains thousands of photographs chronicling 70 years of NCAA sports history. Until 2014, T3Media made the photographs available to the public through its website, Paya.com.
Consumers could view digital thumbnails of the images contained in the NCAA Photo Library on Paya.com, and obtain a non-exclusive license for $20-$30 permitting users to download a copy of a chosen photograph. Brief descriptions of the events depicted in the images accompanied the digital thumbnails.Users were also required to assent to a “Content License Agreement” in order to download one of the photographs. Pursuant to that agreement, consumers could “use a single copy of the image for non-commercial art use.” Consumers did not obtain “any right or license to use the name or likeness of any individual (including any athlete, announcer, or coach) appearing in the Content in connection with or as an express or implied endorsement of any product or service.”
Procedural History and Claims
Plaintiffs commenced this action in the United States District Court for the Central District of California (“District Court”) in June 2014. They allege that T3Media exploited their names and likenesses commercially by selling photographs on Paya.com depicting their 2001 triumph. They purport to represent a putative class “of all current and former NCAA student-athletes whose names, images, and likenesses have been used without their consent by [T3Media] for the purpose of advertising, selling, or soliciting purchases of the photographs themselves.” The complaint asserts claims for violation of California’s statutory right of publicity, Cal. Civ. Code § 3344, common law right of publicity, and Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code § 17200 et seq.
In October 2014, T3Media moved to strike the complaint pursuant to California’s anti-SLAPP statute. Cal. Civ. Proc. Code § 425.16. T3Media argued that the federal Copyright Act preempts Plaintiffs’ claims, that they are barred by the First Amendment, and that California’s statutory exemption for news, public affairs, or sports broadcasts or accounts precludes liability for any publicity-right violations. The District Court granted T3Media’s motion to strike on March 6, 2015, holding that the Copyright Act preempts Plaintiffs’ claims, and declining to reach the other defenses.
According to the District Court, the Plaintiffs asserted rights that fell within the subject matter of copyright because their claims derived from the licensing of copyright photographs, which were original works of authorship fixed in a tangible medium of expression under the circumstances. The District Court rejected Plaintiffs’ argument that a publicity-right claim involving a photograph is not subject to preemption. It distinguished between claims derived from “selling a copyrighted photograph containing an athlete’s likeness,” which it said require preemption, and claims based on “using the athlete’s likeness contained in the photograph for some other purpose,” which it said do not. The District Court also concluded that Plaintiffs were asserting rights equivalent to the exclusive rights contained in the Copyright Act because they did not identify a use of their names or likenesses “independent of the display, reproduction, and distribution of the copyrighted images in which they are depicted.” Lastly, the District Court found that the Plaintiffs’ UCL claim was derivative of the publicity-right claims, and thus concluded that it failed because the publicity-right claims were preempted by the Copyright Act. The District Court denied Plaintiffs’ request for additional discovery because the identified topics did not bear on the issue of preemption. The District Court also acknowledged that Plaintiffs had been afforded “an opportunity to amend and to conduct at least minimal discovery,” so it struck the complaint without leave to amend and dismissed the action with prejudice. The court later awarded attorneys’ fees in T3Media’s favor. Cal. Civ. Proc. Code § 425.16(c)(1).
Ninth Circuit Analysis
The Ninth Circuit affirmed the District Court’s order granting T3Media’s special motion to strike, pursuant to California’s anti-SLAPP statute. The California anti-SLAPP statute, Cal. Civ. Proc. Code § 425.16, was enacted to allow for early dismissal of meritless First Amendment cases aimed at chilling expression through litigation.
Section 301 of the federal Copyright Act adopted a two-part test to determine whether a state law claim was preempted by the Copyright Act; first, whether the subject matter of the state claim fell within the subject matter of copyright, as described in 17 U.S.C. §§ 102 and 103; and second, if so, whether the rights asserted under state law were equivalent to the rights contained in 17 U.S.C. § 106.
At step one of the Copyright Act test, the Ninth Circuit held that the subject matter of the state law claims fell within the subject matter of copyright. Specifically, the Ninth Circuit held that a right of publicity 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. The Ninth Circuit concluded that Plaintiffs’ right of publicity claims and the derivative UCL claim challenged control of the artistic work itself, and accordingly, the subject matter of the state law claims fell exclusively within the subject matter of copyright.
At step two, the Ninth Circuit held that the rights Plaintiffs asserted were equivalent to rights within the general scope of copyright. The Ninth Circuit determined whether the rights plaintiffs assert under state law are “equivalent to rights within the general scope of copyright as specified by section 106 of the Copyright Act.” Section 106 affords copyright owners the “exclusive rights” to display, perform, reproduce, or distribute copies of a copyrighted work, to authorize others to do those things, and to prepare derivative works based upon the copyrighted work. 17 U.S.C. § 106. “To survive preemption, the state cause of action must protect rights which are qualitatively different from the copyright rights. The state claim must have an extra element which changes the nature of the action.” Plaintiffs waived any argument that the rights they assert are not equivalent to rights within the general scope of copyright. They did not argue the issue in their briefs, and the Ninth Circuit does not review issues raised only by amicus curiae. Even had they made the argument, the Ninth Circuit indicated the District Court was correct to conclude that the rights Plaintiffs assert are no different than the rights contained within the general scope of the Copyright Act. The complaint asserted statutory and common law right of publicity claims, and a claim for a violation of the UCL. Plaintiffs, however, did not identify any use of their likenesses independent of the display, reproduction, and distribution of the copyrighted material in which they are depicted. The Ninth Circuit has held that under those circumstances, none of Plaintiffs’ claims are qualitatively different from a copyright claim.
The Ninth Circuit concluded that Plaintiffs’ state law claims were preempted by Section 301 of the federal Copyright Act because Plaintiffs sought to hold T3Media liable for exercising rights governed exclusively by copyright law. The Ninth Circuit further held that Plaintiffs could not demonstrate a reasonable probability of prevailing on their challenged claims; and the District Court did not err in granting the special motion to strike, and dismissing without leave to amend.
Dennie can be reached at firstname.lastname@example.org