Patrick Maloney v. T3media, Inc.
122 U.S.P.Q. 2d (BNA) 1165, 853 F.3d 1004, 45 Media L. Rep. (BNA) 1529 (2017)
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Rule of Law:
The federal Copyright Act preempts a state law right of publicity claim when the claim is based on the reproduction and distribution of a copyrighted work itself, and not on the use of an individual's likeness in a separate context like advertising or merchandising.
Facts:
- Patrick Maloney and Tim Judge were student-athletes on the Catholic University men's basketball team.
- In 2001, their team won the NCAA Division III national championship.
- Photographs were taken of Maloney and Judge playing in the game and celebrating with the championship trophy.
- The NCAA owns or controls the copyright to these photographs and placed them in the NCAA Photo Library.
- The NCAA contracted with T3Media, Inc. to store, host, and license the images from the library.
- Through its website, T3Media sold non-exclusive licenses to consumers, allowing them to download copies of the photographs for $20 to $30.
- The license agreement specified that the downloaded image was for "non-commercial art use" only.
- The agreement also explicitly prohibited using the name or likeness of any individual in the photograph to endorse any product or service.
Procedural Posture:
- Patrick Maloney and Tim Judge filed a putative class action lawsuit against T3Media, Inc. in the U.S. District Court for the Central District of California.
- The complaint alleged violations of California's statutory right of publicity, common law right of publicity, and Unfair Competition Law.
- T3Media filed a special motion to strike the complaint pursuant to California's anti-SLAPP statute.
- The district court granted T3Media's motion, holding that the plaintiffs' claims were preempted by the federal Copyright Act.
- The district court dismissed the action with prejudice and awarded attorneys' fees to T3Media.
- Maloney and Judge, as appellants, filed a timely appeal to the United States Court of Appeals for the Ninth Circuit, where T3Media is the appellee.
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Issue:
Does the federal Copyright Act preempt state law right of publicity claims brought by former student-athletes whose likenesses are contained in copyrighted photographs that are licensed and sold for personal, non-commercial use?
Opinions:
Majority - M. Smith, Circuit Judge
Yes, the federal Copyright Act preempts the state law claims. A right of publicity claim is preempted when it challenges the copyright holder's exclusive right to distribute the copyrighted work itself, rather than a separate, non-consensual use of a person's likeness on merchandise or in advertising. The court applied a two-part preemption test. First, the subject matter of the claim falls within copyright because the claims arise from the licensing of copyrighted photographs, which are 'pictorial works' fixed in a tangible medium. The court distinguished this from cases like Downing v. Abercrombie & Fitch, where a likeness in a photo was used to advertise and sell other products. Here, the challenge is to the distribution of the copyrighted work itself. Second, the rights asserted under state law are equivalent to the exclusive rights of reproduction and distribution granted by the Copyright Act, as the plaintiffs' claims do not contain an 'extra element' that makes them qualitatively different from a copyright infringement claim.
Analysis:
This decision clarifies and reinforces the boundary between the Copyright Act and state right of publicity laws. It establishes that the critical factor in preemption analysis is not the type of copyrighted work, but how the individual's likeness within that work is used. By holding that claims challenging the mere distribution of a copyrighted artistic work are preempted, the court protects the core rights of copyright holders to exploit their works. This ruling provides greater certainty for photographers, stock photo agencies, and media companies, allowing them to license and distribute their copyrighted images without facing publicity-right claims from every depicted individual, provided the images are not used for explicit advertising or merchandising.
