On March 6, 2015, the United States District Court for the Central District of California handed down a ruling that used a controversial tool to allow the striking of a state law case due to federal copyright law preemption.
Plaintiffs in the case were ex-college basketball players from Catholic University, the 2001 Men’s Division III National Champions. Defendants T3Media acquired the “NCAA Photo Store” from Paya.com. The Photo Store housed thousands of pictures from hundreds of NCAA events (including Plaintiffs’ national championship game), the copyrights of which were controlled by the NCAA. The store allowed users to preview the pictures, download them for personal use for free (after agreeing to a licensing agreement), and purchase hard copies of the photographs they liked. Plaintiffs proposed to represent a large class action lawsuit claiming violations of their right to publicity (or “right to likeness”) and unfair competition. Plaintiffs claimed that any consent given by players during their time in school was void because NCAA rules prohibit the commercial exploitation of its student-athletes.
In response to Plaintiffs’ complaint, Defendants filed a special motion to strike under California’s anti-SLAPP statute.
Section 425.16: SLAPP Motions
SLAPP stands for Strategic Lawsuits against Public Participation. The controlling statute was designed to discourage actions that “masquerade as ordinary lawsuits but are brought to deter common citizens from exercising their political or legal rights or to punish them for doing so.” The statute was passed in order to protect public involvement in certain matters from overzealous and potentially crippling litigation. It allows defendants to strike causes of actions that implicate the free speech rights of defendants with matters of public significance. Whether or not something is of “public significance” is broadly construed by courts.
When faced with a SLAPP motion to strike, courts use a two-step approach in deciding to grant the motion or not. First, the defendant must show that the cause of action advanced by the plaintiff falls within protected activity under the statute. If it does, then the burden shifts to the plaintiff to show that he is likely to prevail on his claim. That burden is equivalent to avoiding summary judgment—the plaintiff must show a valid legal claim and enough operative facts to make the claim plausible.
In the case at hand, Defendants argued that (1) the claim arose out of protected action because the public had an interest in NCAA events and (2) Plaintiffs could not succeed on their claim because it was preempted by federal copyright law, constitutionally barred by the First Amendment, and invalid under CA law for public figures. Plaintiffs stipulated to the claim falling under protected actions, but argued that they would likely succeed on their claim.
Protected Activity Under § 425.16
To succeed on its motion to strike, Defendants first had to show that housing and selling the photographs was protected activity under the statute. Although Plaintiffs did not dispute this part of the SLAPP test, the court did comment on it. The court concluded that, based on precedent, NCAA events were “public issues” and Defendant’s website was a “public forum.” Therefore, Defendant’s activity was protected and § 425.16 applied.
Plaintiffs’ Probability of Success on Claims
Because Defendants met their burden under the first part of the SLAPP test, the burden then shifted to the Plaintiffs to show that they were likely to succeed on their claim. This second part of the test allows defendants to assert affirmative defenses, and in this case, Defendants argued that Plaintiffs’ claim was preempted by federal copyright law, constitutionally barred by the First Amendment, and invalid under CA law. The court found that Plaintiffs’ claim was preempted by The Copyright Act and did not address the additional two claims advanced by Defendants.
The Copyright Act provides the sole remedy for all rights “that are equivalent to any of the exclusive rights within the general scope of copyright.” To determine if the Act preempts a claim, courts follow 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.” In effect, the court must look to the subject matter at issue and the rights at issue.
- Subject Matter
Under The Copyright Act, pictures are considered works of authorship and are thus protectable subject matter. In this case, Plaintiffs claimed that the right they sought to protect was the right to their own likenesses—a right not subject to The Copyright Act because an individual’s likeness is not a work of authorship. Plaintiffs relied on the Downing case, which held that:
[A] right-of-publicity claim based on the use of a plaintiff’s name or likeness in a copyrighted photograph does not fall within the ‘subject matter of copyright’ because ‘it is not the publication of the photograph itself . . . rather, it is the use of the [plaintiffs’] likenesses and their names pictured in the published photograph.
However, the court did not agree, but adopted Defendant’s argument that the Downing case was distinguishable because the defendants in Downing used the plaintiffs’ likenesses beyond just the photograph in question. In this case, Plaintiffs only claimed that Defendants were using and selling photographs of them, and did not claim that their likenesses were being used without their permission anywhere else. The court warned that accepting Plaintiffs’ argument would “impermissibly negate Copyright’s intended preemptive effect” by allowing individuals in pictures to sue the photographers of those pictures even when the photographers (the “authors”) held a valid copyright. It would erase many of the ownership rights copyright law seeks to protect.
Under the second part of the copyright preemption test, Plaintiffs again leaned on Downing to argue that their rights to their likeness were different from the rights afforded copyright owners under The Copyright Act. Downing reads: “[b]ecause the subject matter of [plaintiffs’] right of publicity claims is their names and likenesses, which are not copyrightable, the claims are not equivalent to the exclusive rights contained in [The Act].”
However, the court disagreed, and held that Plaintiffs did not identify a use of their likeness different from the photographs. According to the court, the likeness claim must have had a separate element that distinguished it from copyright law. The court saw no independent element—it only saw a claim for likenesses within the photographs themselves. Because Plaintiffs’ likenesses were not being used outside of the photographs, the only rights Plaintiffs could have claimed were violated pursuant to the photographs were the rights to display, reproduce, and distribute the pictures—all rights encompassed by The Copyright Act. The court thus found that no rights independent of the Act were claimed.
While the court’s decision seemingly struck a blow to state right-to-publicity claims, the result was legally sound. The court’s warning that overprotecting likenesses at the expense of photograph copyright holders was especially persuasive, and its decision to preempt state claims using The Copyright Act illustrates the vast protection the Act provides to copyright holders.
 See Cal. Code Civ. Proc. § 425.16.
 Batzel v. Smith, 333 F.3d 1018, 1024 (9th Cir. 2003) (internal quotation marks omitted).
 See Cal. Code Civ. Proc. § 425.16.
 See Browne v. McCain, 611 F. Supp. 2d 1062, 1068 (C.D. Cal. 2009); Navellier v. Sletten, 29 Cal. 4th 82, 88, 52 P.3d 703, 708 (Cal. 2002).
 See Moore v. University of Notre Dame, 968 F. Supp. 1330, 1337 (N.D. Ind. 1997) (noting “football, and specifically Notre Dame football is a matter of public interest”).
 See Barrett v. Rosenthal, 40 Cal.4th 33, 41, fn. 4, 51 Cal.Rptr.3d 55, 146 P.3d 510 (Cal. 2006) (“Web sites accessible to the public . . . are public forums for purposes of the anti-SLAPP statute.”).
 17 U.S.C. § 301(a).
 Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003 (9th Cir. 2001).
 See 17 U.S.C §§ 101; 102(a).
 Downing, 265 F.3d at 1003.
 “[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).
 Id. at 1005.