Patrick Maloney v. T3media, Inc.
853 F.3d 1004
| 9th Cir. | 2017Background
- Plaintiffs Patrick Maloney and Tim Judge are former NCAA Division III basketball players whose game photographs (copyrighted and controlled by the NCAA) were hosted/licensed by T3Media via Paya.com for a fee as non‑exclusive downloads for "non‑commercial art use."
- Plaintiffs sued T3Media in California federal court alleging California statutory and common‑law right of publicity claims (Cal. Civ. Code § 3344 and common law) and a derivative Unfair Competition Law claim, claiming unauthorized commercial exploitation of their likenesses.
- T3Media moved to strike under California’s anti‑SLAPP statute, arguing among other defenses that the federal Copyright Act (17 U.S.C. § 301) preempts the publicity claims.
- The district court granted the anti‑SLAPP motion, holding the Copyright Act preempted the claims because plaintiffs challenged distribution of copyrighted photographs rather than use of their likenesses on merchandise or in advertising; the complaint was struck with prejudice and fees awarded.
- The Ninth Circuit affirmed, applying the two‑step § 301 preemption test: (1) whether the state claim’s subject matter falls within §§ 102/103; and (2) whether the state rights are equivalent to the exclusive rights in § 106.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 301 preempts photograph‑based publicity claims (subject‑matter step) | Publicity protects persona/likeness independent of any single photograph; likenesses are not fixed works so claims fall outside copyright subject matter | Photographs are pictorial works fixed in a tangible medium; claims challenging distribution of the works fall within copyright subject matter | Held: Subject matter includes the photographs; publicity claims challenging distribution of copyrighted images are within copyright subject matter |
| Whether publicity claims can proceed when likeness appears only in the copyrighted work (equivalence to § 106) | Right of publicity protects distinct persona interests and adds elements (e.g., commercial use) that make the claim qualitatively different from copyright | Plaintiffs assert no use of likeness independent of display/reproduction of the copyrighted images, so their claims seek to control rights reserved to copyright owners under § 106 | Held: Rights are equivalent to § 106; additional statutory elements (like "commercial use") do not make the claim qualitatively different |
| Whether an exception exists for photographs as opposed to performances/sound recordings | Photographs are different because a person’s mere likeness is not a copyrightable contribution, so publicity claims based on photographs should not be preempted | Preemption hinges on how the copyrighted work is used (e.g., advertising/merchandise vs. distribution of the work itself), not on the category of the copyrighted work | Held: No categorical photographic exception; the relevant distinction is whether the likeness is used on merchandise/advertising (no preemption) or the copyrighted work itself is distributed (preemption) |
| Whether the district court abused discretion by denying additional discovery under anti‑SLAPP/summary judgment context | Plaintiffs requested discovery to test preemption issues | T3Media argued discovery would not affect preemption; anti‑SLAPP requires plaintiffs to show probability of success and preemption is a legal bar | Held: No abuse of discretion; proposed discovery would not have altered the preemption conclusion and would be futile |
Key Cases Cited
- Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001) (publicity claim allowed where likeness was used to sell merchandise and to suggest endorsement)
- Laws v. Sony Music Entertainment, 448 F.3d 1134 (9th Cir. 2006) (publicity claims preempted when the allegedly misappropriated vocal performance was contained within a copyrighted sound recording)
- Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010) (publicity claims preempted where misappropriation was based entirely on unauthorized reproduction/distribution of copyrighted films)
- Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008) (distinguishing advertising/merchandise uses from expressive works; publicity claims not preempted where use was akin to advertising)
- Ray v. ESPN, Inc., 783 F.3d 1140 (8th Cir. 2015) (publicity claim preempted where dispute concerned distribution of copyrighted game footage and not advertising/merchandise use)
- Dryer v. National Football League, 814 F.3d 938 (8th Cir. 2016) (publicity claims fall within copyright subject matter when plaintiffs challenge expressive, non‑commercial distribution of fixed recordings)
- Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (Cal. Ct. App. 1996) (publicity claims preempted where performances fixed in a film became subject to copyright and claim sought to prevent reproduction/distribution)