Patrick Maloney, on behalf of himself and all others similarly situated; Tim Judge, on behalf of himself and all others similarly situated, Plaintiffs-Appellants,
T3Media, Inc., DBA Paya.com, a Colorado corporation, Defendant-Appellee.
and Submitted February 17, 2017 Pasadena, California
from the United States District Court for the Central
District of California No. 2:14-cv-05048-AB-VBK Andre
Birotte, Jr., District Judge, Presiding
M. DeStefano (argued), Robert B. Carey, and Leonard W.
Aragon, Hagens Berman Sobol Shapiro LLP, Phoenix, Arizona,
L. Sager (argued), Karen A. Henry, Eric M. Stahl, and Diana
Palacios, Davis Wright Tremaine LLP, Los Angeles, California,
Michael Rubin and P. Casey Pitts, Altshuler Berzon LLP, San
Francisco, California, for Amici Curiae the National Football
League Players Association, the Major League Baseball Players
Association, the National Hockey League Players'
Association, the National Basketball Players Association, and
the Major League Soccer Players Union.
Sansiveri, Washington, D.C., as and for Amicus Curiae
National Football League Players Association.
Prouty, New York, New York, as and for Amicus Curiae Major
League Baseball Players Association.
Zavelo, Toronto, Ontario, as and for Amicus Curiae Counsel
National Hockey League Players' Association.
Kohlman, New York, New York, as and for Amicus Curiae
National Basketball Players Association.
Newman, Sherman Dunn Cohen Leifer & Yellig P.C.,
Washington, D.C., for Amicus Curiae Major League Soccer
E. Wolff, Cowan DeBaets Abrahams & Sheppard LLP, New
York, New York, for Amici Curiae Associated Press, Digital
Media Licensing Association, Getty Images (US), Inc., Graphic
Artists Guild, National Press Photographers Association,
Inc., PhotoShelter, Inc., Professional Photographers of
America, Shutterstock, Inc. and Zuma Press, Inc.
D. Brown and Gregg P. Leslie, Reporters Committee for Freedom
of the Press, Washington, D.C., for Amici Curiae the
Reporters Committee for Freedom of the Press and 22 Media
Before: MILAN D. SMITH, JR. and JOHN B. OWENS, Circuit
Judges, and EDWARD R. KORMAN, [*] District Judge.
Anti-SLAPP Statute / Copyright Act
panel affirmed the district court's order granting
T3Media's special motion to strike, pursuant to
California's anti-SLAPP statute, the action brought by
plaintiffs/former student-athletes Patrick Maloney and Tim
Judge, alleging that T3Media exploited their likenesses
alleged that T3Media exploited their likenesses by selling
non-exclusive licenses permitting consumers to download
photographs from the National Collegiate Athletic
Association's Photo Library for non-commercial use.
Plaintiffs asserted statutory and common law publicity-right
claims and an unfair competition claim under California law.
California anti-SLAPP statute, Cal. Civ. Proc. Code §
425.16, was enacted to allow for early dismissal of meritless
first amendment cases aimed at chilling expression though
301 of the federal Copyright Act adopted a two-part test to
determine whether a state law claim was preempted by the Act;
first, whether the subject matter of the state claim fell
within the subject matter of copyright, as described in 17
U.S.C. §§ 102 and 103; and second, if so, whether
the rights asserted under state law were equivalent to the
rights contained in 17 U.S.C. § 106.
one of the Copyright Act test, the panel held that the
subject matter of the state law claims fell within the
subject matter of copyright. Specifically, the panel held
that 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 panel concluded that
plaintiffs' publicity-right claims and the derivative
Unfair Competition Law claim challenged control of the
artistic work itself, and accordingly, the subject matter of
the state law claims fell exclusively within the subject
matter of copyright.
two, the panel held that the rights plaintiffs asserted were
equivalent to rights within the general scope of copyright.
panel concluded that plaintiffs' state law claims were
preempted by section 301 of the federal Copyright Act because
plaintiffs sought to hold T3Media liable for exercising
rights governed exclusively by copyright law. The panel
further held that plaintiffs could not demonstrate a
reasonable probability of prevailing on their challenged
claims; and the district court did not err in granting the
special motion to strike, and dismissing without leave to
D. Smith, Jr., Circuit Judge
student-athletes Patrick Maloney and Tim Judge allege that
defendant T3Media, Inc. (T3Media) exploited their likenesses
commercially by selling non-exclusive licenses permitting
consumers to download photographs from the National
Collegiate Athletic Association's (NCAA) Photo Library
for non-commercial art use. Maloney and Judge assert
statutory and common law publicity-right claims and an unfair
competition claim under California law. The district court
held that the federal Copyright Act preempts plaintiffs'
claims and granted T3Media's special motion to strike
pursuant to California's anti-SLAPP statute. We affirm.
AND PROCEDURAL BACKGROUND
Patrick Maloney and Tim Judge are former NCAA
student-athletes who played for the Catholic University (CU)
men's basketball team between 1997 and 2001. In their
final year at CU, they made it all the way to the Division
III national championship game, and helped lead the underdog
Cardinals to an upset 76-62 victory over the William Paterson
University Pioneers. The game's drama was captured in a
series of photographs depicting the plaintiffs in play, and
later posing as members of the team with CU's first-ever
national championship trophy. The NCAA owns or controls the
copyright to these photographs. It accordingly placed them
into its collection, the NCAA Photo Library.
provides storage, hosting, and licensing services for a wide
variety of digital content. In 2012, it contracted with the
NCAA to store, host, and license the images in the NCAA Photo
Library. The NCAA Photo Library itself contains thousands of
photographs chronicling seventy years of NCAA sports history.
Until 2014, T3Media made the photographs available to the
public through its website, Paya.com.
could view digital thumbnails of the images contained in the
NCAA Photo Library on Paya.com, and obtain for $20 to $30 a
non-exclusive license permitting them to download a copy of a
chosen photograph. Brief descriptions of the events depicted
in the images accompanied the digital
thumbnails. Users were also required to
assent to a "Content License Agreement" in order to
download one of the photographs. Pursuant to that agreement,
consumers could "use a single copy of the image for
non-commercial art use." Consumers did not obtain
"any right or license to use the name or likeness of any
individual (including any athlete, announcer, or coach)
appearing in the Content in connection with or as an express
or implied endorsement of any product or service."
commenced this action in the Central District of California
in June 2014. They allege that T3Media exploited their names
and likenesses commercially by selling photographs on
Paya.com depicting their 2001 triumph. They purport to
represent a putative class "of all current and former
NCAA student-athletes whose names, images, and likenesses
have been used without their consent by [T3Media] for the
purpose of advertising, selling, or soliciting purchases of
the photographs themselves." The complaint asserts
claims for violation of California's statutory right of
publicity, Cal. Civ. Code § 3344, common law right of
publicity, and Unfair Competition Law (UCL), Cal. Bus. &
Prof. Code § 17200 et seq.
October 2014, T3Media moved to strike the complaint pursuant
to California's anti-SLAPP statute. Cal. Civ. Proc. Code
§ 425.16. T3Media argued that the federal Copyright Act
preempts plaintiffs' claims, that they are barred by the
First Amendment, and that California's statutory
exemption for news, public affairs, or sports broadcasts or
accounts precludes liability for any publicity-right
violations. The district court granted T3Media's motion
to strike on March 6, 2015, holding that the Copyright Act
preempts plaintiffs' claims, and declining to reach the
to the district court, the plaintiffs asserted rights that
fell within the subject matter of copyright because their
claims derived from the licensing of copyrighted photographs,
which were original works of authorship fixed in a tangible
medium of expression under the circumstances. The court
rejected plaintiffs' argument that a publicity-right
claim involving a photograph is not subject to preemption. It
distinguished between claims derived from "selling a
copyrighted photograph containing an athlete's likeness,
" which it said require preemption, and claims based on
"using the athlete's likeness contained in the
photograph for some other purpose, " which it said do
not. The district court also concluded that plaintiffs were
asserting rights equivalent to the exclusive rights contained
in the Copyright Act because they did not identify a use of
their names or likenesses "independent of the display,
reproduction, and distribution of the copyrighted images in
which they are depicted." Lastly, the district court
found that the plaintiffs' UCL claim was derivative of
the publicity-right claims, and thus concluded that it failed
because the publicity-right claims were preempted by the
Copyright Act. The court denied plaintiffs' request for
additional discovery because the identified topics did not
bear on the issue of preemption. The court also acknowledged
that plaintiffs had been afforded ...