The Copyright Act's Preemption of Right of Publicity Claims

The Copyright Act’s Preemption of Right of Publicity Claims James M. Chadwick and Roxana Vatanparast

The statutory or common law of most factors. Recognition that these prag- the aid of a machine of device.”5 A work states permits claims for misappro- matic factors may be determinative is is fixed in a tangible medium of expres- priation of one’s name or likeness for important for anyone considering or sion “when its embodiment in a copy or commercial purposes. Such claims are litigating a right of publicity claim. phonorecord, by or under the authority often referred to as “right of publicity” of the author, is sufficiently permanent claims. Although historically treated General Preemption Principles or stable to permit it to be perceived, as a species of the tort of invasion of The Constitution’s Supremacy Clause reproduced, or otherwise communicated privacy, such claims are now generally provides that when state laws conflict for a period of more than transitory recognized as involving a form of intel- with the objectives of federal laws or the duration.”6 Section 106 grants copyright lectual property, particularly in con- Constitution, federal law will control.1 owners the exclusive rights to repro- nection with celebrities who assert not Federal law preempts state law when duce their copyrighted work, to prepare a “right to be left alone” but rather the (1) Congress expresses a clear intent to derivative works, to distribute copies, right to control and profit from the use preempt state law within a statute; (2) it to perform the work, and to publicly of their names and images. Such claims is clear, despite the absence of explicit display the work.7 Photographs, movies, may conflict with federal copyright law, preemptive language, that Congress has video and audio recordings, and other particularly with respect to the use of intended, by legislating comprehensively, works that may include a person’s image photographs, video, and sound record- to occupy an entire field of regulation; or voice are protected by copyright.8 ings. This is true in particular when or (3) compliance with both state and the party asserting a right of publicity federal law is impossible, or the state Express Preemption of State Laws claim does not hold the copyright to the law stands as an obstacle to execution of That Grant Equivalent Rights work at issue. congressional purposes and goals.2 Section 301 of the Copyright Act pro- The Copyright Act contains an vides thus: express preemption clause, which pro- Judicial Treatment of the Interaction vides that it preempts conflicting state Between the Right of Publicity and On and after January 1, 1978, all legal law to the extent that a state law grants the Copyright Act or equitable rights that are equivalent rights equivalent to those granted by to any of the exclusive rights within the Copyright Act. However, because Interests Protected the general scope of copyright as the Copyright Act does not define by the Right of Publicity specified by section 106 in works of equivalent rights, there is ambiguity Misappropriation of name or likeness authorship that are fixed in a tangible with respect to when the Copyright Act is a state statutory or common law tort. medium of expression and come preempts state right of publicity claims. Although state laws vary, they generally within the subject matter of copy- The current split in court decisions, provide a cause of action for the use of right as specified by sections 102 and even within the same jurisdiction, an individual’s name, image, identity, or 103, whether created before or after reflects this ambiguity. likeness by another, without permission, that date and whether published or The courts nominally apply an for commercial purposes.3 For example, unpublished, are governed exclusively abstract, two-part test in determining California’s right of publicity statute by this title. Thereafter, no person is whether right of publicity claims will be prohibits the use of “another’s name, entitled to any such right or equiva- preempted. In reality, however, deci- voice, signature, photograph, or like- lent right in any such work under the sions appear to turn on more pragmatic ness, in any manner, on or in products, common law or statutes of any State.9 merchandise, or goods, or for purposes James M. Chadwick (jchadwick@shep- of advertising or selling, or soliciting Congress created § 301(a) “for the pardmullin.com) is a partner in the Silicon purchases . . . without such person’s principal purpose of eliminating the dual Valley office of Sheppard, Mullin, Richter prior consent. . . .”4 system of state and federal law and re- & Hampton LLP, where he specializes in placing it with a unified federal system.”10 intellectual property law, communications Interests Protected by the and media law, and entertainment law. Copyright Act Inconsistent Application of Roxana Vatanparast (roxanav41@gmail. Section 102 of the federal Copyright Copyright Preemption to com) recently graduated from U.C. Hastings Act protects “original works of author- Right of Publicity Claims College of the Law. Starting this fall, she will ship fixed in any tangible medium of The test adopted by the courts for de- be an associate in the Intellectual Property expression . . . from which they can termining whether state law claims are Practice Group at Sheppard Mullin Richter be perceived, reproduced, or otherwise preempted by the Copyright Act is fairly & Hampton LLP. communicated, either directly or with uniform: (1) whether the subject matter of

Published in Communications Lawyer, Volume 25, Number 4, July 2008. © 2008 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof 1 may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. the state law claim falls within the subject for determining whether or when right of voice, we think it is clear that federal matter of copyright under § 102 of the publicity claims should be preempted.17 copyright law preempts a claim alleging Copyright Act and (2) whether the rights And in practice, courts tend to conflate misappropriation of one’s voice when asserted under state law are equivalent to the discussion of the equivalent rights the entirety of the allegedly misappro- rights created by § 601 of the Copyright element with the analysis of the subject priated vocal performance is contained Act.11 However, both elements of this matter element.18 within a copyrighted medium.”21 test present problems and have been the In fact, although nominally apply- On the other hand, in Downing, the subject of inconsistent interpretations. ing the two-part subject matter and Ninth Circuit held that a right of pub- equivalent rights test, the courts have in licity claim based on the use of plain- Judicial Interpretation of the Subject fact taken a different, more pragmatic tiffs’ images and names in a product Matter of Right of Publicity Claims approach to determining when right of catalog distributed by Abercrombie & Courts have struggled in defining publicity claims will be preempted by Fitch was not preempted. Abercrombie whether the subject matter of a right of the Copyright Act. purchased the rights to a photograph of publicity claim is a person’s likeness or several famous surfers from the photog- voice, i.e., their “persona,” or rather the Actual Distinctions on Which rapher. It used the photograph and the movie, video, photograph, or sound re- Preemption Typically Depends names of the surfers in a product cata- cording containing the person’s likeness Courts have reached differing conclu- log to promote a line of clothing with a or voice.12 sions with respect to whether right of surfing theme. The court noted thus: Many courts have held that the use of publicity claims are preempted by copy- an individual’s persona, not the work in right law. However, a few general trends The photograph itself, as a picto- which the persona is depicted, is at issue can be identified. First, right of publicity rial work of authorship, is subject in a right of publicity claim and that a claims are neither consistently preempt- matter protected by the Copyright right of publicity claim is not preempted ed nor uniformly allowed; rather, wheth- Act. See 17 U.S.C. § 101. . . . because a persona cannot be copyrighted er a claim is preempted is determined However, it is not the publication of and thus the subject matter element of based on the nature of each individual the photograph itself, as a creative the usual test is not met.13 This is the claim. Second, to the extent that the only work of authorship, that is the basis position adopted by two influential interest sought to be enforced through for Appellants’ claims, but rather, it treatises.14 Other courts, however, have a right of publicity claim is the right to is the use of the Appellants’ like- focused on the work in which a person’s control the otherwise authorized repro- nesses and their names pictured likeness or voice is used.15 duction or distribution of copyrighted in the published photograph.22 Neither approach is entirely satisfac- works (as opposed to the use of a work tory. If the subject matter of a right of for advertising purposes or the unauthor- The Ninth Circuit subsequently dis- publicity claim is an individual’s non- ized distribution of a work), most courts tinguished the Downing case as follows: copyrightable persona, then no right of have found that right of publicity claims publicity claim would ever be subject to are preempted by copyright law. Third, if Abercrombie went well beyond mere preemption. Yet courts have frequently a celebrity’s name, voice, or likeness is republication of the photograph. found such claims to be preempted. On used independently of any copyrighted Without obtaining plaintiffs’ consent the other hand, it is certainly possible work, a right of publicity claim probably to use their names and images, it that a persona depicted in a copyrighted will not be preempted. also offered t-shirts exactly like work could be exploited for commercial A comparison of pairs of cases, often those worn by the plaintiffs in the purposes in a manner that would support from the same jurisdictions, that reach photo. We noted that the photograph a legitimate claim for misappropriation. different conclusions illustrates where itself was within the subject mat- most courts will draw the line. ter protected by the Copyright Act. Judicial Interpretation But Abercrombie had not merely of Equivalent Rights Laws and Downing published the photograph. Rather, it Section 301 does not define what it For example, compare Laws v. Sony published the photo in connection means for a right asserted in a state law Music Entertainment, Inc.,19 with with a broad surf-themed advertising action to be equivalent to one of the rights Downing v. Abercrombie & Fitch.20 In campaign, identified the plaintiffs- provided in the Copyright Act. Courts Laws, the Ninth Circuit held that a right surfers by name, and offered for have generally applied the equivalent of publicity claim by a performer based sale the same t-shirts worn by the rights element in one of two ways: a state on the authorized use of part of a copy- plaintiffs in the photo. By doing so, law right is equivalent to a right protected righted song in another song was pre- it had suggested that the surfers had by copyright law if either (1) no addi- empted. The performer had transferred endorsed Abercrombie’s t-shirts.23 tional element beyond exercise of one of the copyright for her song to a record the rights protected by the Copyright Act producer. The record producer licensed Daboub and Brown is required to violate the state law (the the song for sampling, with attribution, Similarly, compare Daboub v. Gib- “extra element” test), or (2) the state law in another song. The performer claimed bons24 with Brown v. Ames,25 both from is violated simply by the exercise of a that the use violated her right of public- the Fifth Circuit. In Daboub, the Fifth right protected by the Copyright Act.16 ity. The court said, “Although Califor- Circuit held that a right of publicity However, neither of these tests pro- nia law recognizes an assertable interest claim based on the performance and vides a clear or logically consistent basis in the publicity associated with one’s recording by the band ZZ Top of a

Published in Communications Lawyer, Volume 25, Number 4, July 2008. © 2008 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof 2 may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. song written, performed, and recorded in the tangible medium of videotape, The court did not explain why the photos by another band many years earlier they fell within the subject matter of the being in some tangible form precluded was preempted. The court found that Copyright Act; and the rights asserted by copyright preemption (an odd conclu- plaintiffs’ right of publicity claims the players to control the distribution or sion, given that works are not subject “center[ed] on the improper copying of display of the video were equivalent to to copyright protection unless fixed in a the song, an interest clearly protected rights protected by the act. tangible medium). Nor did it explain its by the Copyright Act.”26 Toney addressed a right of publicity statement that the Illinois Publicity Act On the other hand, in Brown, the Fifth claim by a model who had agreed to “would not preempt copyrights” when, Circuit held that a right of publicity the use of her photograph in advertising in fact, the issue presented was precisely claim by musicians based on the use of and promoting hair care products for a the contrary, i.e., whether the Copyright their names and likenesses on CDs and limited period. A successor to ownership Act preempted Brown’s right of public- cassettes containing their copyrighted of the product line used the photograph ity claim. This decision is troubling songs and on catalogues and posters beyond the agreed time. The Seventh because it could prevent a photographer promoting the CDs and cassettes was Circuit held that the claim was not pre- from licensing a photograph of a celeb- not preempted. The court noted thus: empted. The court noted thus: rity to anyone. On the other hand, in The Romantics v. [T]he tort of misappropriation of Applying the facts of this case to the Activision Publishing, Inc.,34 a federal name or likeness protects a person’s requirements for preemption, we find court in Michigan held that the use persona. A persona does not fall with- that Toney’s identity is not fixed in a of the song “What I Like About You” in the subject matter of copyright. It tangible medium of expression. There in the highly successful Guitar Hero does not consist of “a ‘writing’ of an is no “work of authorship” at issue video game could not support a right ‘author’ within the meaning of the in Toney’s right of publicity claim. A of publicity claim. Plaintiffs, members Copyright Clause of the Constitu- person’s likeness—her persona—is not of the band that originally recorded the tion.” Furthermore . . . appellees’ authored and it is not fixed. The fact song, did not dispute that they were not names and likenesses do not become that an image of the person might be the copyright holders nor that the video copyrightable simply because they fixed in a copyrightable photograph game producer had obtained a license to are used to identify the source of a does not change this. . . . Unlike use the song from the music publisher copyrighted work. Therefore, their copyright law, “commercial purpose” that owned the copyright. The court held misappropriation claims do not fit is an element required by the [state that “[p]laintiffs’ ‘identity’ claims to the the terms of § 301 preemption.27 right of publicity statute]. . . . Clearly sound of the Song are essentially claims the defendants used Toney’s likeness regarding the licensing of a copyrighted The Court distinguished its prior without her consent for their com- work, falling squarely within the ‘sub- decision in Daboub as follows: mercial advantage. The fact that the ject matter’ of the Copyright Act.”35 photograph itself could be copy- Thus, these two recent cases involv- In Daboub, the plaintiffs alleged that righted, and that defendants owned ing the conveyance of apparently valid ZZ Top had both infringed their copy- the copyright to the photograph that copyright licenses reached entirely dif- right in and misappropriated one of was used, is irrelevant to the IRPA ferent conclusions. their songs, and this Court held that claim. The basis of a right of publicity section 301 of the Copyright Act pre- claim concerns the message—whether Making Sense of It All empted the state law misappropriation the plaintiff endorses, or appears to The cases described above do not turn claim. The crucial difference between endorse the product in question.31 on subject matter (i.e., whether the work the two cases is that in Daboub the at issue is copyrightable or is, at least, basis of the misappropriation claim, AMCIPP Division and The Romantics the kind of work to which the Copyright as well as the copyright infringement Recent cases have continued this pattern Act applies). Each of the cases rejecting claim, was the song itself, bringing it of reaching different conclusions under preemption involved works (photographs within section 301’s ambit, whereas apparently comparable circumstances. depicting plaintiffs) that were within the here the basis of the misappropria- For example, in Brown v. AMCIPop subject matter of the Copyright Act. tion claim was defendants’ use of Division,32 an Illinois appellate court Nor do the cases turn on any plaintiffs’ names and/or likenesses.28 recently affirmed the denial of a motion equivalency of the rights protected by Baltimore Orioles and Toney to dismiss claims made by singer James copyright and by the right of publicity. A similar contrast can be seen between Brown (subsequently deceased) against Particularly in the Downing, Toney, and Baltimore Orioles v. Major League stock photography agency Corbis for Brown cases, the right of publicity claim Baseball Players Ass’n29 and Toney licensing photographs of him for use indisputably overlapped and interfered v. L’Oreal USA, Inc.30 In Baltimore by others. Brown did not dispute that with the exercise of rights provided by Orioles, the Seventh Circuit held that Corbis held or had properly licensed the the Copyright Act, i.e., the right to re- baseball players’ rights of publicity did copyrights to the photographs. Nonethe- produce and display a copyrighted work. not allow them to control the videotap- less, it held that because it was “possible Rather, in cases involving copying and broadcast of baseball games. that the photos as displayed on Corbis’s righted works that include some aspect Even though the court concluded that Internet Web page can be interpreted of an individual’s persona, it appears that the baseball games themselves were as tangible, the Publicity Act as applied preemption usually turns on the specific not copyrightable, once they were fixed here would not preempt copyrights.”33 use made of the copyrighted work. The

Published in Communications Lawyer, Volume 25, Number 4, July 2008. © 2008 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof 3 may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. common elements of the cases finding goes beyond the reproduction, display, Copyright Act Preemption, Te x . In t e l l . Pr o p . that there is no preemption are as fol- distribution, or sale of a copyrighted or L.J. 443, 445–46 (Spring 2004). lows: (1) some use of the work beyond copyrightable work containing a person’s 11. See, e.g., Laws v. Sony Music Entm’t, merely selling or distributing copies of name, likeness, or voice, for example a Inc., 448 F.3d 1134, 1137–38 (9th Cir. 2006); the work itself, particularly the use of photograph, movie, or audio recording; Brown v. Ames, 201 F.3d 654, 657 (5th Cir. the image or work for purposes of adver- and (2) states or implies the endorsement 2000); NBA v. Motorola, Inc., 105 F.3d 841, tising and promotion; and (2) an impli- of products or services. Unless these 848 (2d Cir. 1997). cation of endorsement by or association elements are present, a right of public- 12. Jennifer E. Rothman, Copyright Pre- with the person depicted, particularly if ity claim is the equivalent of a copyright emption and the Right of Publicity, 36 U.C. he or she is a celebrity.36 claim and should be preempted. If the Da v i s L. Re v . 199, 233–34 (Nov. 2002). In addition, courts have often con- work at issue is reproduced, displayed, 13. See, e.g., Downing v. Abercrombie & sidered, either explicitly or implicitly, distributed, or sold by a copyright holder Fitch, 265 F.3d 994, 1003–05 (9th Cir. 2001); whether the case involves the authorized or licensee and does not suggest any Toney v. L’Oreal USA, Inc., 406 F.3d 905, use of a copyrighted work. endorsement, there should be no liability 910 (7th Cir. 2005). even if an individual’s persona is used 14. D. Ni m m e r , Ni m m e r o n Co p y r i g h t A Pragmatic Test for Preemption for a commercial purpose. § 1.01[B][1][c] (1999); McCa r t h y , Ri g h t s The right of publicity often conflicts not Whether or not the courts expressly o f Pu b l i c i t y a n d Pr i v a c y § 11.13[C] (1997). only with the Copyright Act’s grant of embrace such a test, practitioners 15. See, e.g., Laws, 448 F.3d at 1142 affirmative rights to copyright holders should recognize that it is being applied. (“[Plaintiff’s] state tort action challenges and the public but also with the purposes Preemption should be considered in all control of the artistic work itself and could of copyright protection.37 The failure of cases in which right of publicity claims hardly be more closely related to the subject courts to preempt the right of publicity do not meet these criteria. matter of the Copyright Act.”); Fleet v. in appropriate circumstances is harmful CBS, Inc., 50 Cal. App. 4th 1911, 1920–21, to copyright holders, licensees, and the Conclusion (1996) (“Here, in contrast, it was not merely public. It may deprive copyright holders The Copyright Act preempts inconsis- appellants’ likenesses which were captured of rights expressly granted by the Copy- tent state law claims. However, right of on film—it was their dramatic performances right Act and thereby limit the value of publicity claims are neither uniformly which are, as we have seen, copyrightable.”). their works. It also disrupts the legitimate preempted nor uniformly exempt from 16. Rothman, supra note 12, at 227–28. expectations of licensees, who have used preemption. The nominal test for pre- 17. Id. at 229, 231. works in reliance on licenses granted by emption of right of publicity claims has 18. See, e.g., Downing, 265 F.3d at copyright holders. Moreover, inconsistent produced a confusing and inconsistent 1004–05; KNB Enters. v. Matthews, 78 Cal. and unpredictable application of fed- body of law. At present, it is difficult App. 4th 362 (2000). eral preemption creates uncertainty for to predict whether a right of publicity 19. Laws, 448 F.3d at 1134. everyone involved: celebrities, copyright claim will be preempted by the Copy- 20. Downing, 265 F.3d at 994. holders, and licensees. This results, per- right Act. Whether representing claim- 21. Laws, 448 F.3d at 1141. versely, in increased litigation because ants or defendants, practitioners need to 22. Downing, 265 F.3d at 1004. those who use copyrighted works cannot consider the possibility of preemption 23. Laws, 448 F.3d at 1141. predict the consequences of a particular in any case asserting a right of publicity 24. 42 F.3d 285 (5th Cir. 1995). course of conduct and adjust their con- claim. In doing so, they should focus 25. 201 F.3d 654 (5th Cir. 2000). duct accordingly and because the parties on the pragmatic factors that the courts 26. Daboub, 42 F.3d at 289. involved in a dispute cannot confidently have employed in determining whether 27. Brown, 201 F.3d at 658 (citations predict the outcome and reach a resolu- right of publicity claims are preempted omitted). tion based on realistic expectations. rather than the abstract principles 28. Id. (citation omitted). It is obviously impossible to es- nominally employed in conducting the 29. 805 F.2d 663 (7th Cir. 1986). tablish any test that will produce a preemption analysis. 30. 406 F.3d 905 (7th Cir. 2005). predictable result in all cases. This is 31. Toney, 406 F.3d at 910. particularly true because the right of Endnotes 32. 873 N.E.2d 954 (2007). publicity embraces several aspects of 1. U.S. Co n s t . art. VI, § 1, cl. 2. 33. Id. at 963. an individual’s persona, i.e., name, im- 2. See¸ e.g., Capital Cities Inc. v. Crisp, 34. 532 F. Supp. 2d 884 (E.D. Mich. 2008). age, voice, and “style,” each of which 467 U.S. 691, 698–99 (1984). 35. Id. at 888–89. may be treated quite differently under 3. See, e.g., Rogers v. Grimaldi, 875 F.2d 36. The Brown decision appears to depart copyright law. 994, 1003–04 (2d Cir. 1989); Fleet v. CBS, from this pattern, allowing a right of public- However, a clear safe harbor from Inc., 50 Cal. App. 4th 1911, 1918 (1996). ity claim to proceed even though Corbis’s certain right of publicity claims should 4. Ca l . Ci v . Co d e § 3344 (West 2007). conduct amounted to no more than convey- be established so that those who comply 5. 17 U.S.C. § 102(a) (2007). ing the copyright work itself and there was with the requirements of the Copyright 6. 17 U.S.C. § 101 (2007). no evidence of any implication of endorse- Act can be assured that they will not be 7. 17 U.S.C. § 106 (2007). ment. However, the superficial and confused subjected to liability under unpredictable 8. 17 U.S.C. § 102 (2007). reasoning of that decision suggests that it interpretations of state law. At a mini- 9. 17 U.S.C. § 301(a). is, and will remain, an outlier that does not mum, right of publicity claims should 10. P. Stephen Fardy, Feet of Clay: How reflect or establish a trend in the law. be preempted unless the use at issue (1) the Right of Publicity Exception Undermines 37. Rothman, supra note 12, at 204.