Tag Archives: Right of Publicity

A Victory for Creators and Licensors in Maloney vs T3 Ninth Circuit Decision

Maloney v. T3Media 

By Brianna Dahlberg of Cowan DeBaets Abrahams & Sheppard LLP

On April 5, 2017, in a victory for visual content creators and licensors, the Ninth Circuit affirmed the dismissal of a lawsuit brought by former college athletes alleging that T3Media had misappropriated their names and likenesses by selling licenses to photographs from the NCAA Photo Library. The Ninth Circuit held that the athletes’ claims for right of publicity and unfair competition under California law were preempted by the federal Copyright Act.

Read the entire article here.

Ninth Circuit Affirms Right To Display, License And Sell Photographic Prints Without Violating Subject’s Publicity Rights.

Maloney v. T3Media 

By Brianna Dahlberg of Cowan DeBaets Abrahams & Sheppard LLP

On April 5, 2017, in a victory for visual content creators and licensors, the Ninth Circuit affirmed the dismissal of a lawsuit brought by former college athletes alleging that T3Media had misappropriated their names and likenesses by selling licenses to photographs from the NCAA Photo Library. The Ninth Circuit held that the athletes’ claims for right of publicity and unfair competition under California law were preempted by the federal Copyright Act.

In their putative class action lawsuit, the athletes had sought to hold T3Media liable for displaying the photographs online and for offering non-exclusive licenses to consumers permitting them to download a single copy of a chosen image for non-commercial art use. The athletes did not own copyright to the photographs at issue—the copyrights were owned by the NCAA, who had contracted with T3Media to store, host, and license the images. T3Media responded to the athletes’ lawsuit by filing a special motion to strike under California law, which was granted by the district court. The Ninth Circuit affirmed the district court’s decision throwing out the athletes’ lawsuit and awarded attorneys’ fees to T3Media.

In its opinion, the Court clarified the test for determining whether a right of publicity claim is preempted by the Copyright Act. Section 301 of the Copyright Act provides a two-part test for determining whether a state law claim is preempted: first, the court asks whether the subject matter of the state law claim fell within the subject matter of copyright; and second, the court asks whether the state law rights asserted were equivalent to rights within the scope of copyright. Applying this test to the athlete’s right of publicity claims, the Court drew a distinction between claims based on the unauthorized use of a person’s likeness in advertising, and claims based on the mere display or distribution of an artistic work:

[A] publicity-right claim may proceed when a likeness is used non-consensually 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 is little more than a thinly-disguised copyright claim because it seeks to hold a copyright holder liable for exercising his exclusive rights under the Copyright Act.

The Ninth Circuit’s opinion in T3Media’s favor is consistent with longstanding practices in the visual content industry. It affirms that visual content creators and providers, by merely displaying and offering for license images that depict people, do not make any use that implicates the right of publicity. The decision provides clear guidance that will allow visual content creators and licensors to continue to offer creative, newsworthy, and culturally important images to the public.

Cowan, DeBaets, Abrahams & Sheppard LLP submitted an amicus brief in support of T3Media on behalf of the Associated Press, the Digital Media Licensing Association, Getty Images (US), Inc., the Graphic Artists Guild, the National Press Photographers Association, Inc., PhotoShelter, Inc., the Professional Photographers of America, Shutterstock, Inc., and ZUMA Press, Inc. [A copy of the amicus brief is here). We thank everyone who participated and joined the brief. The attorneys representing T3 Media were extremely grateful for our industry support to counter all the amicus briefs submitted by the various sports’ leagues.

 

Some Good News From Minnesota

After lots of phone calls and letters we have some good news:

MINNESOTA STATE LAWMAKER PULLS PRINCE BILL AMID CONCERNS

Associated Press

A Minnesota state lawmaker has decided to set aside a measure that would have clarified the rights of artists to control the commercial use of their names, likenesses and images, and extended those protections to heirs after a person’s death.

Republican Rep. Joe Hoppe introduced the bill creating a so-called Right of Publicity after Minnesota native Prince died in April. Representatives handling Prince’s estate said they were concerned of others profiting off of Prince, including by selling unauthorized T-shirts with his image. But others worried the bill was moving too fast and could have unintended consequences.

Hoppe, whose district includes Prince’s famed Paisley Park home and studio, says he decided to pull the bill and take more time to consider some of the concerns raised.

He hopes to return with a new bill next year.

DMLA MEMORANDUM IN OPPOSITION, NY RIGHT OF PUBLICITY BILL

Senate Bill No. 5650/ Assembly Bill No. 7904

The Digital Media Licensing Association (“DMLA”), strongly opposes S.5650/A.7904. This right of publicity bill would grant a seventy-year retroactive and descendible right of publicity to all deceased residents of New York State. This proposed legislation would cause serious economic impact to the image licensing industry in New York State (a multi-billion dollar industry worldwide) and unconstitutionally deprive photographers and film owners the right to exploit their property and copyright interests in their still and motion images. Joining our opposition is the American Society of Media Photographers (“ASMP”),[1] Professional Photographer of America (“PPA”)[2] and the National Press Photographers Association (“NPPA”)[3].

 About DMLA

DMLA is a trade association representing the interests of entities who license still and motion images to the media, among many other users. Its members represent the interests of thousands of photographers and the copyrights in millions of images. Many images published in magazines, newspapers, news broadcasts, textbooks, brochures, or in advertisements, in print or on-line, were licensed by a member of DMLA. New York is home to many of DMLA’s members and all members, regardless of location, serve a crucial role in supplying publishers, media companies and advertisers located within New York with imagery that reflects our world, art and culture.

Any retroactive statute is an unconstitutional taking favoring the economic interests of out-of-state corporations over New York media companies.

New York, as the center of the media industry, has always erred in favor of protecting the First Amendment rights of those who own, license and publish images. To substantially expand the breadth of New York’s statutory right of publicity and create a burdensome retroactive statute will have a crippling and chilling effect on expressive speech. This proposed legislation would require the representatives and owners of valid federal copyrights in photographs that depict any New York State domiciliary who died since 1945 to obtain permission from heirs for any use that is considered a “commercial purpose.” It is not limited to celebrities but applies to anyone who died as a New York domiciliary and is depicted in an image or audio visual recording. As no descendible right of publicity has previously existed, these deceased persons have never specifically transferred this right. Instead of heirs inheriting these rights, it is likely that corporations with no interest in New York State, and whose only interest is exploiting publicity rights and restricting licensors from contractually dealing with preexisting images, will benefit from this proposed law. Photographers and licensing representatives will suddenly lose a right they have had for more than 110 years, an unconstitutional taking.

 The proposed bill is ambiguous and vague and will invite meritless litigation.

The language of this bill is ambiguous and vague, and invites unnecessary and burdensome litigation. Under the current law, NY Civil Rights Law § 50 & 51, the only type of use that requires consent of the person depicted is when the image is used for “advertising” or “trade” purposes. This proposed bill replaces 110 years of judicial interpretation of what constitutes an advertising or trade purpose with the ambiguous term “commercial purpose,” with only limited exceptions. Most importantly, the language in Section 34, Exemptions on Use Restrictions, is ambiguous and fails to provide a clear exemption for expressive works that are currently protected. Even worse it conditions the exemption for expressive works where the work “does not contain an image or likeness that is primarily commercial, not transformative and is not otherwise protected by the First Amendment to the United States Constitution or New York state constitution.” The bill fails to define what would make an image or an individual’s likeness “primarily commercial” or “transformative” and forces the creator of an expressive work to establish that the work is constitutionally protected. The proposed legislation unconstitutionally restricts visual images and other expressive works and will have a chilling affect on image creators and licensors and those that rely on access to visual imagery in creating new works.

The proposed bill will stifle innovation, increase the cost of licensing images and result in futile searches for heirs of long deceased persons domiciled in New York.

The proposed legislation will stifle new and innovative ways of communicating with images which may require advertising support for publication. The ambiguity in the statutory language will result in an effort to obtain unnecessary consents which will be fraught with difficult research, may be futile, and cause unreasonable expense and delay. This will increase the costs and burdens of licensing images requiring increased usage fees. Members of these associations can ill afford these additional costs and the end result will be fewer images licensed, and fewer jobs in New York State. With the speed in which news and entertainment products are created today, to introduce new roadblocks for images of people long deceased is unjustified and raises serious First Amendment considerations.

The unintended consequences of departing from over 110 years of clear law is too great to merely satisfy the desire of a few celebrities agents that want to unreasonably exploit New York media companies and the provider of the images that they rely on for rich content. The chilling effect will be immediate and overwhelming.

For the above stated reasons, the members of DMLA, ASMP, NPPA and PPA strongly oppose S.5650/A.7904 and urge that it be defeated.

 

[1] ASMP was established in 1944 to protect and promote the interests of professional photographers who earn their living by making photographs intended for publication. There are more than 6900 members of ASMP, organized into 39 local chapters across the United States, with members representing literally every genre of professional publication photography.

[2] Founded in 1869, Professional Photographers of America (“PPA”) is the world’s oldest and largest association for professional photographers.  PPA’s membership consists of more than 29,000 direct members and an additional 20,000 members from more than 130 affiliated organizations.  In total, PPA’s membership reach includes some 50,000 professional photographers.

[3] Since its founding in 1946, the NPPA has been the Voice of Visual Journalists vigorously advocating for and protecting the rights of journalists. Its approximately 6,000 members include still and television photographers, editors, students, and representatives of businesses serving the visual journalism community.

 

MEMORANDUM IN OPPOSITION

SF3609

The Digital Media Licensing Association (DMLA), American Society of Media Photographers (ASMP),National Press Photographers Association (NPPA) and Professional Photographers of America (PPA) strongly oppose SF 3609 as currently drafted. This right of publicity bill is unnecessarily broad, vague, and would grant a retroactive and descendible right of publicity to all deceased residents of Minnesota looking back 50 years, regardless of whether an individual’s identity had commercial value or not. This proposed legislation would cause serious economic impact to the image licensing industry in Minnesota by unconstitutionally depriving photographers and film owners the right to exploit their property and copyright interests in their still and motion images.

DMLA and the other associations represent the interests of many thousands of still and motion photographers and the copyrights of millions of visual works. These members comprise the visual imagery community that are responsible for creating, supplying, distributing and licensing many of the images you find in Minnesota, whether in magazines, newspapers, textbooks, documentary films, television and cable programming, advertisements, websites , as well as all forms of traditional and newly developing digital media. These residents rely on their constitutional right under the federal Copyright Act to license images they create in order to earn a living and pay their taxes.

While we understand the Prince families’ desire to prevent unlawful commercial exploitation of his likeness, any bill must be carefully crafted with First Amendment protections to avoid unintended consequences that would inadvertently call into question the long established business practice of licensing and selling visual images to the media and to the public.

Significantly, there is no exemption for the distribution and licensing of a photograph (or video) depicting an individual for any purpose that is itself non-commercial and protected by the First Amendment. For example, the bill does not expressly permit photographers and their representatives to license photographs and videos to the media, a vital service without which most newspapers and other media entities would not have access to the images used in informing the public as to newsworthy and cultural events. Photographers and image aggregators should not have to face expensive litigation to determine the scope of the legislation as to whether the display and licensing of images is a prohibited “service” under the act which would require consent. The burden of obtaining consent to merely to display and license images is not merely impracticable, it is in most instances impossible, when considering how quickly images of public interest are distributed to the public and would result in censorship of newsworthy images. The bill has no requirement for registry of owners of these rights, making permissions even more impossible.

We would ask for an exemption, similar to one included in a recently proposed Arkansas bill, to protect the lawful business of licensing and selling visual imagery. The immunity provision should include a person practicing the profession of photography or his or her representative to distribute photographs for license and sale, or other transfer to third parties, and the promotion and advertising of such activities.

The bill as proposed does not protect important expressive works such as photographs. The fair use exception is based on outdated 1980’s California language rooted in old media and has resulted in expensive litigation for the image industry. In particular, the phrase “single work of original art” is constitutionally too narrow as most expressive works, such as photographs which are sold in multiples (editions). Photographs are entitled to full First Amendment protection as expressive works. Members of the various associations are entitled to sell photographs as art prints and audio visual works as expressive works, just as one would be entitled to sell a play, book or documentary film. Any list of exempt expressive works should expressly include photographs and visual works.

Finally, by identifying a narrow list of exemptions, the proposed legislation will stifle new and innovative ways of communicating with images. With lines between traditional media and new media blurring, it is important that strict rules are crafted using today’s media language. Any ambiguity will result in an effort to obtain unnecessary consents which will be fraught with difficulty, unreasonable expense and delay.

With the speed in which news, educational, entertainment and other expressive products are created, to introduce new roadblocks for the use of images depicting people is unjustified and raises serious first amendment considerations.

For the above stated reasons, the members of DMLA, ASMP, NPPA and PPA strongly oppose SF 3609 as written and urge you not to pass it in its current form.

 

i DMLA membership includes 150+ companies worldwide that are engaged in the archiving and distribution of images, footage, animation, and illustrations for purposes of licensing, such as Getty Images, and other libraries, with users and represented visual artist in Minnesota; American Society of Media Photographers;(ASMP), is an association of more than 7000 professional photographers, with members located in Minnesota; Professional Photographers of America (“PPA”) the world’s oldest and largest association for professional with a membership reach of approximately 50,000 professional photographers including members in Minnesota; and the National Press Photographers of America (NPPA), is the Voice of Visual Journalists with approximately 6,000 members that include still and television photographers, editors, students, and representatives of businesses serving the visual journalism community, also with members in Minnesota.

Copyright Trumps Right of Publicity- Permitting Display and Download of Basketball Photographs (Maloney v. T3Media, Inc.)

by Nancy Wolff, DMLA Counsel

The U.S. District Court for the Central District of California in Maloney v. T3Media, Inc. recently held that state right-of-publicity claims brought by former college basketball players complaining of photographs licensed of their likenesses without consent warranted dismissal with prejudice pursuant to California’s anti-SLAPP statute, which prohibits suits aimed at inhibiting free expression. Members of the 2001 NCAA Division III champion Catholic University basketball team sued T3Media, a cloud storage, hosting, and digital licensing service, alleging violations of their rights of publicity when photographs of the players from the NCAA championship were displayed and made available for licensing on T3Media’s website.

See entire article here

Copyright Trumps Right of Publicity- Permitting Display and Download of Basketball Photographs (Maloney v. T3Media, Inc.)

by Nancy Wolff,  DMLA Counsel 

The U.S. District Court for the Central District of California in Maloney v. T3Media, Inc. recently held that state right-of-publicity claims brought by former college basketball players complaining of photographs licensed of their likenesses without consent warranted dismissal with prejudice pursuant to California’s anti-SLAPP statute, which prohibits suits aimed at inhibiting free expression. Members of the 2001 NCAA Division III champion Catholic University basketball team sued T3Media, a cloud storage, hosting, and digital licensing service, alleging violations of their rights of publicity when photographs of the players from the NCAA championship were displayed and made available for licensing on T3Media’s website.

Like many other states’ laws, the California common law and the California civil code prohibit the use of people’s identity for commercial advantage without their consent. The players asserted that, by displaying and offering licenses in photographs depicting their likenesses, T3Media did just that. However, as some recent decisions have also recognized, there is a critical distinction between a commercial transaction for a photograph, itself, and a commercial transaction where a photograph is used to promote or sell another product or service. This difference proved fatal to the plaintiffs’ right-of-publicity claims – not, as in other cases, as a result of statutory interpretation, but rather as a result of copyright preemption.

As the Maloney court explained, the NCAA owned copyrights in a vast photo library of college-sports-related images, including various photographs from the 2001 NCAA championship game depicting the plaintiffs. In 2012 the NCAA entered into a license agreement with T3Media permitting it to host those photographs as well as display them on its website and offer site visitors the opportunity to purchase a non-exclusive license to download a single copy of a photograph for personal use.

Claiming to represent a class of current and former college 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,” the plaintiffs filed a federal diversity action alleging violations of California’s right of publicity laws. T3Media filed a special motion to strike under California’s anti-SLAPP statute; because the court agreed that T3Media was engaged in protected activity – expression of an issue of public interest in a public forum – the burden shifted to the plaintiffs to demonstrate a probability of success on the merits. Presented with a choice of affirmative defenses, including copyright preemption, First Amendment and statutory exemptions, the court focused its opinion entirely on the issue of preemption, which is where the plaintiffs’ likelihood of success faltered.

For copyright law to preempt a state law claim, “the content of the protected right must fall within the subject matter of copyright” and “the right asserted under state law must be equivalent to the exclusive right contained” in the Copyright Act. With regard to the first prong, the court held that the photographs were properly the subject matter of copyright as a pictorial work under the Copyright Act, and that the plaintiffs’ attempt to distinguish the right of publicity in their likenesses as separate from their likenesses embodied in the photograph missed the mark. The plaintiffs argued that it was not publication of the photographs themselves that was problematic, but rather it was the commercial use of the plaintiffs’ likenesses and names contained in the photographs. The court was not convinced, and differentiated between “merely selling a copyrighted photograph containing an athlete’s likeness,” which would be protected by copyright law, and “using the athlete’s likeness contained in the photograph for some other purpose,” such as advertising another product, which would give rise to a right-of-publicity claim. Because the plaintiffs could not identify a use of their likenesses beyond the four corners of the photographs, the plaintiffs essentially sought to prevent T3Media from distributing copyrighted works. The court held that “it would destroy copyright holders’ ability to exercise their exclusive rights under the Copyright Act, effectively giving the subject of every photograph veto power over the artist’s rights under the Copyright Act and destroying the exclusivity of rights the Copyright Act aims to protect.”

As to the second prong, the court explained that, in order to avoid preemption, a state claim must protect rights which are “qualitatively different from the copyright rights.” The court reiterated that the plaintiffs had 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,” which would be encompassed by the exclusive rights contained in the Copyright Act. Without an “extra element” outside of the rights covered by the copyright law, the plaintiffs’ claimed rights were preempted.

T3Media’s holding is consistent with recent decisions such as 2013’s Thompson v. Getty Images in the Northern District of Illinois (which we reported on [here]) where the court found that Getty Images’ use of photographs depicting the plaintiff had not been “in connection with an offer to sell or a sale of some other product, merchandise, good, or service,” and as such, had not violated the plaintiff’s state right of publicity. Cases like Thompson, and now T3Media, demonstrate an understanding of the substantial difference between the act of licensing copyrighted images containing someone’s likeness, and utilizing that person’s likeness within the image for some other commercial purpose, such as advertising another product or service. This distinction is critical in this area of law, particularly for photographers and image licensors, and is often overlooked or misunderstood in parties’ briefs and in courts’ opinions alike. Since many state publicity statutes were written before images could be licensed online, and hence do not specifically address such licensing, this decision provides a significant federal preemption challenge to any overreaching right of publicity claim that attempts to restrict the ability to license images. These recent decisions may signal a shift in the courts’ understanding of the intersection of copyright and the right of publicity, and will hopefully lead to clearer precedent on this important issue.