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 9th
Circuit, 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. Downing
had distinguished Fleet v. CBS, Inc., 50 Cal.App.4th 1911, 58 Cal.Rptr.2d 645
(Cal. Ct. App. 1996), by contrasting the Fleet
plaintiffs, 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 Lightbourne
persuasive. “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.
1 comment:
A case like this bodes ill for copyright, moral rights and privacy in general. If intermediaries can use anti-SLAPP to defeat publicity right claims, what protection can consumer rely on to prevent free and obtrusive uses of their identity and privacy/personality-related material?
America's Internet governance is broken. It's only geared towards making all information free and reward the data-driven machines.
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