Court Finds Misappropriation Claims Arising From Licensing of Copyrighted Photographs Are Preempted

by Davis Wright Tremaine LLP

Judge André Birotte Jr. of the U.S. District Court for the Central District of California has dismissed a lawsuit brought by former college athletes alleging that the licensing of copyrighted photographs from their NCAA playing days violated their rights of publicity. Maloney v. T3Media, Inc., CV14-5048-AB (VBKx) (C.D. Cal. Mar. 6, 2015), Dkt. No. 77 (Minute Order).

Plaintiffs Patrick Maloney and Tim Judge, both of whom played on the Catholic University men’s basketball team when it won the NCAA Championship in 2001, brought the putative class action, claiming that the licensing of copyrighted photographs from NCAA championship games violated their publicity rights. Defendant T3Media, Inc. (“T3Media”) operated an NCAA-sanctioned website through which members of the public could view and purchase non-exclusive licenses to the copyrighted photographs. The court dismissed the claims with prejudice, concluding that the plaintiffs’ right of publicity and unfair competition claims—which arose solely from the display, reproduction and distribution of photographs—were preempted by the Copyright Act.

T3Media provides digital hosting and licensing services for a wide variety of content, including news coverage, motion pictures, and photographs and footage of sports events, among other things. Through agreements with the copyright owners, T3Media displays and licenses copyrighted works to third parties, using an online distribution network.

In January 2012, T3Media entered into an agreement with the NCAA to store, host, and license a collection of photographs for which the NCAA owns or controls the copyright (the “NCAA Photo Library”). The collection includes thousands of photographs that visually chronicle more than 70 years of NCAA sports history, focusing on championship games involving almost two dozen sports.

From approximately Jan. 1, 2013 to Aug. 1, 2014, T3Media operated a website,, through which members of the public could view digital samples of photographs in the NCAA Photo Library and obtain non-exclusive copyright licenses that permitted them to download a copy of a photograph for their own personal use. Prospective licensees interested in using photographs for any other use—including advertising—had to obtain any necessary rights from the individuals depicted.

The plaintiffs filed a lawsuit in federal court in Los Angeles on June 27, 2014 (which was subsequently amended), claiming that T3Media’s display, reproduction, and license of these photographs violated their common law and statutory rights of publicity and constituted unfair competition under California Business & Professions Code § 17200. The plaintiffs also purported to represent a class consisting of “[a]ny current or former NCAA student-athlete who appears in a photograph that is or was publically available on or whose name is or was used on”

T3Media filed a Special Motion to Strike under California’s anti-SLAPP statute, Cal. Civ. Proc. Code § 425.16, asking that the entire case be dismissed with prejudice, arguing, among other things, that the claims were preempted by federal copyright law. The court agreed, and granted the SLAPP motion, dismissing the case in its entirety with prejudice.

As an initial matter, the court found that T3Media made the threshold showing that plaintiffs’ FAC was subject to a SLAPP motion, because each of the claims alleged in the FAC arose from the content of a publicly-accessible website, which is a public forum, and because the photographs at issue concerned a matter of public interest. Because T3Media had satisfied its initial burden under the SLAPP statute, the burden shifted to the plaintiffs under the SLAPP statute to demonstrate a probability of prevailing on each of their claims.

The court held that the plaintiffs could not meet their burden under the applicable two-part preemption analysis.

First, the court found that the photographs fell squarely within the subject matter of copyright, rejecting the argument advanced by the plaintiffs that the claims arose from the “depiction” of their likenesses, rather than from copyrighted photographs. The plaintiffs relied primarily on the 9th Circuit’s decision in Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), which allowed a misappropriation claim that arose from a catalogue that included photographs of the plaintiffs. In Downing, the 9th Circuit found that the claim was not preempted, stating that “[a] person’s name or likeness is not a work of authorship within the meaning of [the Act]… notwithstanding the fact that [Plaintiffs’] names and likenesses are embodied in a copyrightable photograph.” The district court found the case inapplicable, however, noting that the Downing court had evaluated the use of photographs in an advertising campaign, not simply the licensing of copyrighted photographs in which the plaintiffs were depicted.

In contrast, the plaintiffs in Maloney “d[id] not allege (or offer prima facie evidence to suggest) [T3Media] used their likenesses for any purpose beyond the four corners of the copyrighted photographs themselves.” For this reason, the court concluded that the plaintiffs’ claims fell within the subject matter of copyright, just like the claims in cases like Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134 (9th Cir. 2006), Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (1996), and Dryer v. Nat’l Football League, 2014 WL 5106738 (D. Minn. Oct. 10, 2014).

Second, the court found that the plaintiffs’ claims sought to vindicate rights equivalent to those protected under copyright law. The plaintiffs did not dispute that they sought to control the publication and sale of photographs, and the court made clear that this was sufficient to satisfy the second prong of the preemption analysis: “Plaintiffs have not identified a use of their names or likenesses independent of the display, reproduction, and distribution of the copyrighted images in which they are depicted.” Absent this “extra element,” the court held, “the rights plaintiffs are asserting under state law are equivalent to the exclusive rights contained in section 106 of the Copyright Act[,]” and plaintiffs’ right of publicity claims (and their duplicative unfair competition claim) were preempted.

The court noted that plaintiffs already had amended their initial complaint, and because further amendment would be “futile,” dismissed plaintiffs’ claims with prejudice. The court also denied plaintiffs’ request for discovery, noting that none of the topics of discovery that were identified bore on the issue of copyright preemption. Because “further discovery and amendment would be futile and inconsistent with California’s substantive interest in providing ‘a quick, inexpensive method of dismissing SLAPP suits[,]’” dismissal with prejudice was warranted.

The court did not reach the other defenses raised by T3Media in its SLAPP motion, including defenses arising from the First Amendment to the United States Constitution and state law.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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