Proceedings: [In Chambers] Order Granting Defendant’s Special Motion to Strike Plaintiffs First Amended Complaint (Dkt. No. 36)
Carla Badirian, Deputy Clerk.
Pending before the Court is Defendant T3Media, Inc.’s Special Motion to Strike Plaintiffs’ First Amended Complaint (“FAC”) under California’s Anti-SLAPP Statute (Cal.Code Civ. Proc. § 425.16), filed on October 24, 2014. (Mot., Dkt. No. 36.) Plaintiffs Maloney and Judge, acting on behalf of the putative class, filed an Opposition on November 17, 2014 and Defendant filed a Reply on November 17, 2014. (Opp., Reply, Dkt. Nos. 68, 69.) This matter was taken under submission on November 25, 2014. (Dkt. No. 71.) For the reasons stated below, the Court hereby GRANTS the motion WITHOUT LEAVE TO AMEND and DISMISSES the action WITH PREJUDICE.
I. BACKGROUND
On August 25, 2014, Plaintiffs filed their First Amended Complaint (“FAC”) alleging the following claims: (1) deprivation of rights of publicity in violation of California Civil Code § 3344; (2) violation of rights of publicity under California Common Law; and (3) violation of the Unfair Competition Act, California Business & Professions Code § 17200 et seq. (See FAC, Dkt. No. 29.)
Plaintiffs were members of the Catholic University basketball team from 1997 until 2001. (FAC, ¶ 71.) The team won the 2001 Men’s Division III National Collegiate Athletic Association (“NCAA”) championship game. (FAC, ¶ 72.) Defendant provides cloud-based storage, hosting and licensing services for digital content uploaded by third-parties. (Ernest Weiser Declaration, Dkt. No. 36-1, ¶ 3.)
In or about January 2012, Defendant entered into an agreement with the NCAA to store, host, and license photographs for which the copyrights are owned and/or
Defendant owned and operated the website Paya.com from approximately January 1, 2013 until August 1, 2014. (Id. at ¶ 6.) On Paya.com, members of the public could view digital samples and brief descriptions of the people and events depicted in the photographs of the NCAA Photo Library. (Id.) Paya.com offered users the option to purchase a non-exclusive license to download a single copy of a photograph for their own personal use. (Id.) Users wishing to download photographs were first required to agree to the terms and conditions of the Paya.com “Content License Agreement.” (Id. at ¶ 8; see Weiser Decl., Dkt. No. 36-1, Ex. D.) Users interested in uses other than personal could contact Defendant through a “Make an Offer” button available on the website. (Id. at ¶ 14 subsection c.)
On August 1, 2014, Defendant posted on its Paya.com website that the “Paya.com[ ] licensing marketplace is no longer available.” (See id. at ¶ 51.) Defendant indicated that it was “relocating] the NCAA photo store” and directed interested users to fill out a form so that a T3Media representative could contact them. Id.
Plaintiffs propose to represent “a class action on behalf of all current and former NCAA student-athletes whose names, images, and likenesses have been used without their consent by Defendant for the purpose of advertising, selling, or soliciting purchases of the photographs” in the NCAA Photo Library. (FAC, ¶ 5.) Plaintiffs allege that Defendant’s actions constitute a misappropriation of Plaintiffs’ rights of publicity. (Id. at ¶¶ 75-78, 105, 108.) Plaintiffs further contend that any consent obtained by Defendant from student-athletes while they were still in school is void because NCAA rules prohibit the commercial exploitation of student-athlete images. (Id. at ¶¶ 22, 30,44,82.)
From those allegations, Plaintiffs assert causes of action under' California Law for:
(1) Violation of the right of publicity (Cal. Civ.Code § 3344);
(2) Violation of the right of publicity (Common Law);
(3) Violation of California Unfair Competition Law (“UCL,” Cal. Bus. & Prof.Code § 17200, et seq.)
Defendant now moves for a special motion to strike under California’s statute designed to prevent “strategic lawsuits against public participation” (SLAPPs).
II. LEGAL STANDARDS
California law allows for pre-trial dismissal of SLAPPs. Cal.Code Civ. Proc. § 425.16. Although framed as a rule of state procedure, California’s anti-SLAPP statute protects substantive rights and thus applies in federal court. Newsham v. Lockheed,
Under the statute, “[a] cause of action against a person arising from any act ... in furtherance of the person’s right of petition or free speech ... in connection with a public issue shall be subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim.” Cal.Civ.Proc. Code § 425.16(b)(1). The statute explicitly defines four categories of activities “in furtherance of ... free speech,” including “(3) any written or oral statement or writing made in a place open to the public or a public forum in connection with an issue of public interest, or (4) any other conduct in furtherance of the exercise of ... free speech in connection with a public issue or an issue of public interest.” Cal.Civ.Proc. Code § 425.16(e)(3)-(4).
In assessing motions to strike under the anti-SLAPP statute, the court takes a two-step approach. Navellier v. Sletten,
III. DISCUSSION
Defendant contends that Plaintiffs’ claims fall within the scope of the anti-SLAPP statute because the claims arise from Defendant’s “display, reproduction, and licensing of copyrighted photographs depicting NCAA student-athletes participating in championship games-” (Mot., p. 6 ¶ 2.) Defendant then argues that Plaintiffs cannot demonstrate a probability of prevailing on any of their claims because the claims are:
(1) preempted by Federal Copyright law;
(2) constitutionally barred under the First Amendment; and
(3) invalid because California law exempts from liability the “use of a ... likeness in connection with any news, public affairs, or sports broadcast or account.” (See Mot., pp. 9,13, 23.)
Plaintiffs do not dispute that Defendant engaged in protected activity under the statute’s first prong, but argue under the second prong that their claims meet the § 425.16 standard for probability of success on the merits. (See Opp., Dkt. No 68, p. 3 ¶ 1.)
A. Protected Activity Under Section 425.16
Although Plaintiff did not dispute the first prong, the Court must determine if Defendant met his burden of establishing that the challenged causes of action arise out of Defendant’s protected activity. CalCode Civ. Proc. § 425.16(b)(1). This threshold showing requires Defendant to demonstrate that Plaintiffs’ claims fit into one of the categories listed in Section 425.16, subdivision (e). See Navellier, 29
Defendant contends: (1) the “display of photographs and editorial captions on its websites falls under Section 425.16(e)(3)’s protection for publication made in a public forum in connection with a matter of public interest;” and (2) “Plaintiffs’ claims fall under (e)(4), which applies to ‘conduct in furtherance of the exercise of the ... constitutional right of free speech in connection with a public issue or an issue of public interest.’ ” (Mot., pp. 6-7 (quoting CaLCode Civ. Proc. § 425.16(e)(4)).)
1. Public Forum
Plaintiffs’ suit arises out of the “sale”
2. Public Issue
Even if the Paya.com website was not a public forum, section 425.16, subdivision (e)(4) includes conduct in furtherance of free speech rights, notwithstanding where the conduct takes place. CaLCode Civ. Proc. § 425.16(e)(4). The statute, consequently, applies to private communications, “so long as they concern a public issue.” Wilbanks,
The statute does not define a “public issue” or an “issue of public interest.” Courts have considered the statute’s explicit provision that it “shall be construed broadly” and found that “an issue of public interest ... is any issue in which the public is interested.” Nygard, Inc. v. Uusi-Kerttula,
The photographs here depict moments in NCAA sports history. (See Mot., p. 7 ¶ 2.) Considering the relevant case law and the direction to broadly construe the statute, this Court finds that the photographs here fall within the realm of an issue of public interest. CaLCode Civ. Proc. § 425.16(a); see Curtis Publ. v. Butts,
Since Defendant has made a threshold showing that the challenged causes of action arise from protected activity, the burden shifts to the Plaintiffs to prove a probability of prevailing on their claims.
B. Plaintiffs’ Probability of Prevailing on their Claims
The anti-SLAPP statute “subjects to potential dismissal only those actions in which the plaintiff cannot ‘state[ ] and substantiate! ] a legally sufficient claim.’ ” Navellier,
“[A] defendant may defeat a cause of action by showing the plaintiff cannot establish an element of its cause of action or by showing there is a complete defense to the cause of action, and there is nothing in the language of section 425.16 or the case law construing it that suggests one of these avenues is closed to defendants seeking protection from a SLAPP suit.” Peregrine Funding, Inc. v. Sheppard Mullin Richter & Hampton LLP,
1. Preemption by the Copyright Act
The Copyright Act (“the Act”) provides the sole remedy for all rights “that are equivalent to any of the exclusive rights within the general scope of copyright....” 17 U.S.C. § 301(a). The preemption analysis comprises two steps. “First, the content of the protected right must fall within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103. Second, the right asserted under state law must be equivalent to the exclusive rights contained in section 106 of the Copyright Act.” Downing v. Abercrombie & Fitch,
a. The Nature of the Work— Photographs Fall Within the Subject Matter of Copyright
The subject matter of copyright entails “original works of authorship fixed
Plaintiffs do not dispute that photographs are the proper subject matter of copyright. Rather, Plaintiffs attempt to distinguish their rights to their own likenesses and to publicity from the photographs themselves. Plaintiffs contend that the “protected right” they are asserting— their right of publicity — is “categorically not preempted by the Copyright Act because ‘[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.’” (Opp., p. 4 ¶ 2 (citing Downing v. Abercrombie & Fitch,
Plaintiffs’ own quotation from Downing highlights the critical distinction between “publication of the photograph” and the “use of the [plaintiffs’] likenesses.... ” (See Opp., p. 4 ¶ 2 (citing Downing,
[Defendant] went well beyond mere republication of the photograph. Without obtaining plaintiffs’ consent to use their names and images, it also offered t-shirts exactly like those worn by the plaintiffs in the photo. We noted that the photograph itself was within the subject matter protected by the Copyright Act. But [defendant] had not merely published the photograph. Rather, it published the photo in connection with a broad surf-themed advertising campaign, identified the plaintiffs-surfers by name, and offered for sale the same t-shirts worn by the plaintiffs in the photo.
Id. at 1141 (emphasis added).
The Downing decision differentiated between cases finding right-of-publieity
Here as in Fleet, Defendant’s “use of plaintiffs’ likenesses did not extend beyond the use of the copyrighted material it held.” Laws,
Plaintiffs argue that Fleet, as well as other cases cited by Defendant, are “inapplicable because they involve the use of copyrightable ‘performances, and many of them specifically distinguish those performance-based claims from claims, like Plaintiffs’, involving photographs.” (Opp., p. 5 ¶ 3.) Plaintiffs confuse the designation of which exclusive right under the Copyright Act is implicated, with whether or not the Copyright Act preempts the right-of-publicity claim.
For Plaintiffs’ claims to succeed, they must identify some use of their likenesses (as captured in the photographs) independent of the mere sale of the pictures. Dryer v. Nat’l Football League,
Plaintiffs allege that Defendant uses student-athletes’ “names, images, and likenesses ... for the purpose of advertising, selling, or soliciting purchases of the photographs themselves.” (FAC, p. 2 ¶ 5 (emphasis added).) Plaintiffs, however, do not allege how Defendant uses the photographs to advertise anything other than the sale of the pictures. Plaintiffs attempt “to prevent nothing more than the reproduction, performance, distribution, or display of a [copyrighted work] is subsumed by copyright law and preempted.” Fleet v. CBS, Inc., supra,
b. Equivalent Rights
To the extent Downing could be interpreted as providing a “categorical rule,”
Plaintiffs’ claim a deprivation of their right-of-publicity under both California common law and Civil Code section 3344. (See FAC, pp. 24-25.) The common law cause of action requires: “(1) the defendant’s use of the plaintiffs identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.” Downing,
“To survive preemption, the state cause of action must protect rights which are qualitatively different from the copyright rights. The state claim must have an extra element which changes the nature of the action.” Laws,
2. Additional Defenses: First Amendment and Statutory Exemption
Defendant argues two additional affirmative defenses. {See Mot., pp. 13-24.) First, Plaintiffs’ claims are constitutionally barred under the First Amendment; and second, Plaintiffs’ claims independently fail because California Law exempts from liability the “use of a ... likeness in connection with any news, public affairs, or sports broadcast or account.” Cal. Civ.Code § 3344(d). The Court does not address these defenses because Plaintiffs’ claims are preempted by the Copyright Act.
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS Defendant’s Special Motion to Strike under the anti-SLAPP and STRIKES Plaintiffs’ FAC. Cal.Code Civ. Proc. § 425.16.
Although it is generally error to grant “a defendant’s anti-SLAPP motion to strike a plaintiffs initial complaint without granting the plaintiff leave to amend” Verizon Delaware, Inc. v. Covad Communications Co., 377 F.3d 1081, 1091 (9th Cir.2004) (emphasis added), this is not Plaintiffs’ initial complaint.' Where, as here, a plaintiff has had an opportunity to amend and to conduct at least minimal discovery “[t]o allow amendment after an anti-SLAPP motion to strike has been granted eviscerates the purpose of the anti-SLAPP statute.” Flores v. Emerich & Fike, No. 1:05CV0291 OWWDLB,
IT IS SO ORDERED.
Notes
. The FAC refers to the “sale” of NCAA images, whereas Defendant’s website offers the ability to purchase a non-exclusive copyright license. (See Mot., p. 4 ¶ 1 fn. 5.) For clarity, "sale” will be used to designate the purchase of a non-exclusive license.
. In their opposition Plaintiffs state: “Downing’s holding did not rely on the fact that the photographs at issue were published as part of an advertising campaign_ Indeed, nowhere in the opinion’s discussion of copyright preemption does the Court even mention the fact that the photographs were used in an advertising context....” (Opp., p. 7 ¶ 1.)
. In opposition, Plaintiffs rely on an unpublished decision in Lightbourne v. Printroom, Inc., No. SACV 13-00876-JLS (RNBx), Dkt. No. 107, pp. 11-12, in which the court held similar claims by student athletes against a company selling photographs were not preempted by copyright. However, it does not appear that the parties in Lightboume identified the critical distinction at issue here. Unlike in Lightboume, Defendant correctly observes the difference between merely selling a copyrighted, photograph containing an athlete’s likeness and using the athlete’s likeness contained in the photograph for some other purpose. In the first scenario, the athlete’s likeness is only used insofar as it is contained in the four corners of the copyrighted work, and the athlete’s state-law publicity claims are preempted. In the second scenario, the athlete’s image is used for some purpose beyond the four corners of the copyrighted work (selling a box of cereal or a t-shirt, for example) and suggests the athlete’s endorsement of that other use. As the Seventh Circuit rightly observed, “the basis of a right of publicity claim concerns the message — whether the plaintiff endorses, or appears to endorse the product in question.” Toney v. L’Oreal USA, Inc.,
. The Copyright Act delineates six exclusive rights of a copyright owner. 17 U.S.C. § 106. These include: the right to reproduce, to distribute copies, to display the work publicly, and to perform the work publicly. Id.
. Professor Nimmer refers to this as the "extra element” test. See 1-1 Nimmer on Copyright § 1.01[B],
[I]f under state law the act of reproduction, performance, distribution, or display ... will in itself infringe the state-created right, then such right is pre-empted. But if qualitatively other elements are required, instead of, or in addition to, the acts of reproduction, performance, distribution, or display, in order to constitute a state-created cause of action, then the right does not lie ‘within the general scope of copyright,’ and there is no preemption.
Id.
. Although a non-controlling state-court decision, in Laws, the Ninth Circuit noted that it found the holding in Fleet "quite persuasive.” Laws, supra,
. In KNB Enterprises v. Matthews,
. Plaintiffs’ Opposition states: “Downing held that a right-of-publicity claim based on the unauthorized use of a name or likeness is categorically not preempted by the Copyright Act....” (Opp., p. 4 ¶ 2.)
. The Court pauses to acknowledge that plaintiffs need not possess rights in the copyrighted work for their right-of-publicity claims to be preempted. See, e.g., Laws,
. Plaintiffs oppose the motion in part on the ground that they have not had an adequate opportunity to conduct discovery on a handful of topics. (Opp., pp. 22-24, citing Fed.R.Civ.P. 56(f).) However, none of the topics of discovery Plaintiffs identify bear on the issue of preemption under the Copyright Act, but instead focus on Defendants' alternative arguments under the First Amendment and California Civil Code section 3344(d). There
. The Court SUSTAINS Defendant’s eviden-tiary objection number two for lack of foundation. (See Dkt. No. 63, pp. 2-3.) The Court OVERRULES Defendant's remaining objections to Plaintiffs’ evidence. (Dkt. No. 63.