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Right of Publicity Preempted by Copyright Law

In Maloney v. T3Media, Inc. d/b/a, No. 15-55630 (9th Cir. April 5, 2017) (Available Here), the Court of Appeals for the Ninth Circuit held that plaintiff’s 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.

    Plaintiffs, former student athletes, alleged that T3Media exploited their likenesses commercially by selling non-exclusive licenses permitting consumers to download photographs from the National Collegiate Athletic Association’s Photo Library for non-commercial use.  Plaintiffs asserted statutory and common law publicity right claims and an unfair competition claim under California law.

    The Ninth Circuit affirmed the District Court’s order granting T3Media’s motion to strike brought under 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.  Under anti-SLAPP, the moving defendant must show that the suit arises from an act in furtherance of defendant’s constitutional right to free speech, then the plaintiff must show a reasonable probability that it will prevail on its claims.  In the present case, the claims stem from the publication and distribution of expressive photographs over the internet, which relates to free speech.  Therefore, plaintiffs were required to show they could prevail and that their state law claims were not preempted by the Copyright Act.

    There is a two part test to determine whether a state law claim is preempted by the 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.

    First, the Ninth Circuit held that the subject matter of the state law claims fell within the
subject matter of copyright.  The Ninth Circuit found that 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 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 interferes with the exclusive rights of the copyright holder, and is preempted by section 301 of the Copyright Act.

    The Court further found that the plaintiffs’ publicity-right claims and the derivative Unfair Competition Law 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 Court held that the rights plaintiffs asserted were equivalent to rights within the general scope of copyright.  Accordingly, the state law claims were preempted by federal Copyright law.

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