Copyright preemption and the right of publicity in the 9th Circuit

Maloney v. T3Media, Inc., No.15-55630 (9th Cir. Apr. 5, 2017)

Welp, the Ninth Circuit manages to gum things up again in the right of publicity/copyright intersection.  To the extent that, post-Reed, the right of publicity has to survive strict scrutiny as applied to nonadvertising uses, this incoherence may not be as important as it once was.  But we might all have fewer headaches if we read this decision as saying “conflict preemption” every time it says something about §301 preemption.  I have another suggestion below, as well.

Former student-athletes Patrick Maloney and Tim Judge alleged that T3Media exploited their likenesses commercially by selling non-exclusive licenses permitting consumers to download photographs from the National Collegiate Athletic Association’s (NCAA) Photo Library for non-commercial art use. The district court found copyright preemption and the court of appeals affirmed.

Plaintiffs contested only part one of the two-part §301 test, whether the subject matter of the state law claim fell within the subject matter of copyright.  Plaintiffs argued that the right of publicity was outside the subject matter of copyright because persona can’t be fixed in a tangible medium of expression.  The court of appeals disagreed for this type of use: “[A] publicity-right claim is not preempted when it targets non-consensual use of one’s name or likeness on merchandise or in advertising. But when 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 interferes with the exclusive rights of the copyright holder, and is preempted by section 301 of the Copyright Act.”  

Allowing the right of publicity to interfere with licensing a photo for non-commercial art use challenged the copyright owner’s “control of the artistic work itself.”

The court distinguished other cases in part by misrepresenting them.  E.g., “[i]n Brown v. Ames, 201 F.3d 654 (5th Cir. 2000), a record company misappropriated ‘the names and likenesses’ of ‘individual blues musicians, songwriters, [and] music producers’ on the company’s CD’s, tapes, catalogs, and posters. … [That case is distinguishable because it involved] the use of an individual’s likeness on unrelated merchandise or in advertising.”  Everything in that last phrase is true except for “unrelated”—the tapes, catalogs, and posters featured the artists at issue (and the advertising was for the goods embodying copies of their works).  The rule, the court here said, is that “when the ‘use’ of a likeness forms the ‘basis’ of a publicity-right claim, the claim is not preempted.… The crux of the issue is thus deciding when a publicity-right claim seeks to vindicate misuse of an individual’s likeness, as opposed to merely interfering with the distribution, display, or performance of a copyrighted work.”  “Use” here is standing in for advertising/merchandising use, which seems more like it would go to extra element than to subject matter of copyright.

Plaintiffs correctly pointed out that the case law sure seems to treat photos differently than other works protected by the Copyright Act.  The court responded that this distinction had no theoretical or statutory basis, which is also true.

Along with other precedents, the court relied on Nimmer on Copyright, which suggests that the right of publicity should be construed in accordance with the Restatement of Unfair Competition, “which limits liability to misappropriation for the purposes of trade.” [Which would be awesome if California hadn’t already made clear that its law was so much broader than that, unconstitutionally so.]  “The ‘use for trade’ considerations can almost perfectly distinguish between the cases finding preemption and those permitting publicity-right claims to proceed.”  And here we go again: the first footnote in this sentence says, “[t]he cases finding preemption concern the display or reproduction of copyrighted expressive works,” which is true.  The second footnote starts with Midler (ads), Waits (ads), White (ads), Wendt (at least arguably advertising use of robots “to draw customers to a bar,” as the court says), Toney (ads), Downing (ads), and Facenda (found to be an ad by the court).  But then it cites Comedy III—“images of The Three Stooges used to sell t-shirts”—which is a misrepresentation of the items at issue, because there were also prints in that case were declared to violate the right of publicity, even if we decide that cotton has less preemptive force than paper; separately, the Stooges were “used” to sell t-shirts in exactly the same way the images of the athletes here were “used to sell” the pictures of the athletes, but T-shirts are just different because publicity rights.  And finally the footnote cites Keller—“use of student-athlete likenesses to sell a video game”—which is even more ridiculous, since the only thing the defendants here were selling was pictures of the athletes, not extra creative content as in Keller. [Forget it, Jake. It’s the Ninth Circuit.]

Takeaway: “the crucial distinction is not between categories of copyrightable works, but how those copyrighted works are used.”  McCarthy agrees: “[A] photo archive that merely sells reproductions of photos of athletes is not infringing the right of publicity of the pictured athletes. Since the vast majority of athletes (both professional and amateur) do not own copyright in such photos, they have no right to control the mere reproduction and sale of their photos per se.”). [Right, and that’s perfectly consistent with Keller. If you believe that, I have a bridge in the shape of an incredibly famous person that I’d like to sell you.]  “We believe that our holding strikes the right balance by permitting athletes to control the use of their names or likenesses on merchandise or in advertising, while permitting photographers, the visual content licensing industry, art print services, the media, and the public, to use these culturally important images for expressive purposes.” [But not videogame makers, because that would be wrong.] Subjects of photos shouldn’t get “a de facto veto over the artist’s rights under the Copyright Act, and destroy the exclusivity of rights that Congress sought to protect by enacting the Copyright Act.”

That was all supposedly step one analysis—are the rights asserted within the subject matter of copyright?  Step two (which I would argue was mostly what they were doing above) was then easy because the rights plaintiffs asserted were “equivalent to rights within the general scope of copyright as specified by section 106.”   Plaintiffs didn’t identify “any use of their likenesses independent of the display, reproduction, and distribution of the copyrighted material in which they are depicted.” That’s not qualitatively different from a copyright claim.

Here’s a thought that might allow us to make sense of calling this §301 preemption: I’ve always been uncomfortable with the metaphysics of claiming that the right of publicity isn’t within the scope of a copyright claim. The mere fact that a persona, or a voice, or a face, is uncopyrightable does not mean that it’s outside the scope of copyright.  Coverage and protection are different.  Facts and ideas are uncopyrightable, but that doesn’t mean §301 allows states to grant anticopying protection to them. To the contrary, preempting such claims is a core job of §301, where uncopyrightable elements are embedded in a copyrighted work and where the right claimed is violated merely by copying.

That leaves us with the “extra element” issue.  We know that, in general, limiting the set of claims to a subset of copying does not provide the necessary extra element, e.g., “commercial use,” or “intentionally.” Try this: the right of publicity has an extra element if and only if the person’s identity is used to sell something other than a work including a representation of that person’s identity—that is, a classic advertising use where the advertised product is not itself an expressive work representing the person.  I think that could work.  It would require the application of preemption in Comedy III (what the court here calls “merchandising”) and Keller type cases.  But I consider that a feature rather than a bug.