Copyright Law Blocks Student-Athlete Suit over Sale of Game Photos

By Jennifer E. Rothman
April 6, 2017

Today, the Ninth Circuit held in Maloney v. T3 Media that former collegiate athletes’ right of publicity claims arising out of the licensing of their photos by T3 Media were barred by copyright law. The Ninth Circuit affirmed the district court opinion in the case. Unfortunately, rather than clarifying the district court’s muddled analysis, it only made matters worse, creating a host of problems and much confusion going forward. The court likely unwittingly vastly expanded the copyright preemption defense, even calling into question several recent decisions by the circuit.

The named plaintiffs, Patrick Maloney and Tim Judge, are both former members of the Catholic University, Division III 2001 Championship basketball team (pictured in the photo). The NCAA has a Photo Library with thousands of images taken from various sports over seventy years. In 2012, the NCAA contracted with the defendant in this case, T3 Media, to store host and license its Photo Library. T3 made the photographs available to the public at its website. Consumers could download photographs and receive a non-exclusive license to use these images for their own personal, noncommercial use for $20 to $30. (Some photos are now available here. The T3 site was closed in 2014.)

The website provided search functions and described the athletes in the photos, using their names. Judge Milan Smith, who authored the Ninth Circuit opinion, pointed to the description of a picture of Magic Johnson from his Michigan State days: “Michigan State’s Earvin ‘Magic’ Johnson (33) looks pleased with his performance during the NCAA National Basketball Championships.”

Maloney and Judge alleged violations of both California’s statutory and common law rights of publicity. They also alleged an unfair competition claim under California law which both the district court and Ninth Circuit deemed derivative of the underlying right of publicity claims.

As part of the students’ agreements with the NCAA, Maloney and Judge agreed to play in games that they knew were photographed and broadcast, and to appearing in various publicity stills as well, such as the ones they complained about. As such, they may not have been able to make out a prima facie right of publicity case under either of California’s right of publicity laws. But even if they could, the Ninth Circuit held that such nonconsensual uses of their identities in copyrighted works were preempted by Section 301 of the Copyright Act.

Section 301 of the Copyright Act preempts state laws that are “equivalent to any of the exclusive rights” of copyright and that “come within the subject matter of copyright.” Section 301 provides a two-step test for determining Section 301 preemption. The first step considers whether the state law covers matter within the scope of copyright law, and the second whether it provides rights that are equivalent to copyright. 

I have written at length about the incoherence of Section 301 and the many conflicting interpretations of its provisions, particularly in the context of the right of publicity. This Ninth Circuit panel pretended as if Section 301 were a sea of clarity, when it is no such thing.

Facilitating this simplified (mis)understanding of Section 301, was the court’s conclusion that Maloney and Judge had waived half of the analysis in the appeal. The appellants, according to the panel, conceded that their claims were equivalent to those of copyright. This allowed the court to avoid the challenging question of whether the extra elements of right of publicity laws, such as commercial use or use of a person’s identity, make it not equivalent to copyright law.  

As to the other part of the test―whether the right of publicity falls within the subject matter of copyright―the panel appeared to be at sea as well. In large part the Ninth Circuit went adrift because the Appellants did not focus on the right issue. Instead, most of the Appellant's brief was mired in the unconvincing distinction between performance cases in which preemption had been found (such as sound recordings, Laws v. Sony Music, and broadcast game footage, Dryer v. NFL), and cases involving photographs.

This fatal error allowed the Ninth Circuit to suggest that because photographs are copyrightable (which of course they are), the claim at issue was within the scope and subject matter of copyright. This conclusion has to be wrong. The prototypical right of publicity violation is for the capturing of a person’s image in a copyrightable photograph without their permission and slapping it on to an advertisement. The offending photograph is still copyrightable. The only thing that has changed in the context of an advertisement with an unwitting subject is whether the underlying subject agreed to the photograph and likely whether a First Amendment defense to the use would apply. Neither of these differences is relevant to copyright law or to copyright preemption analysis under Section 301.

The conclusion that the right of publicity is within the subject matter of copyright if a person's image is captured in a photograph (or other copyrighted work) is far from accepted, despite the Ninth Circuit's claim. In fact, both of the leading treatise authors on the subject (J.T. McCarthy & David Nimmer) have concluded (rightly) that a person's name, likeness and other aspects of their identity are not copyrightable.

As I have contended (and Nimmer and McCarthy have concluded), Section 301 on its own terms likely rarely, if ever, preempts right of publicity claims. To solve this problem, I have proposed a Supremacy Clause-based conflict-preemption analysis which would have led to the conclusion that the Maloney/Judge claims should be preempted here too. Jennifer E. Rothman, Copyright Preemption and the Right of Publicity, 36 UC Davis Law Review 199 (2002). The end result of the unsupportable analysis here by the Ninth Circuit therefore is not tragic.

However, it provides very little guidance going forward and much confusion.

First, the Ninth Circuit compounds its incoherent analysis by suggesting that preemption turns on whether a use is in advertising or merchandise. Questions that are irrelevant to copyright law and many right of publicity laws, and certainly to Section 301 of the Copyright Act. Even though some states limit their right of publicity to uses in advertising and merchandising, most do not.

Many cases have allowed liability in the context of expressive works, such as videogames and comic books. Notably, California’s common law right is not so limited and the very same Ninth Circuit―albeit a different panel―held that the use of student-athletes’ likenesses in an expressive videogame was not protected by the First Amendment. Keller v. Electronic Arts.  As I have written, I think that decision was wrong on First Amendment grounds. But, this decision in Maloney suggests that Electronic Arts should have won Keller (and later Davis v. Electronic Arts) on copyright preemption grounds – the use of the players was in a copyrighted expressive work and the complaint revolved around the display and distribution of this “artistic work.”  I very much doubt that is what the panel meant to do, but on its own terms the decision appears to suggest exactly that.

Second, another set of unanswered questions is raised by the decision. Does it indicate that the NCAA cannot sell derivative works of these photographs, such as t-shirts and mugs with the photographs on them? As copyright holders they should be able to do so, but this is “merchandise” which the Ninth Circuit says should be treated differently. Copyright law treats the sale of the photographs and the mugs the same. So does Section 301 of the Copyright Act, so does California’s common law right of publicity.

But not this court (and they are not alone)...setting up a potential Supreme Court battle. One can only hope that we will get more guidance in the future, but the Supreme Court is unlikely to take this case because the outcome is likely correct on the specific facts, and the case was decided under the controversial anti-SLAPP motion about which there is a circuit split.