Courts around the country have long struggled to define and articulate, with any uniformity, whether and in what circumstances the Copyright Act preempts a state-created right of publicity claim. The case law varies significantly in both the reasoning courts adopt and the results they reach. But in a recent opinion, Dryer v. Nat’l Football League, No. 14-3428, 2016 WL 761178 (8th Cir. Feb. 26, 2016), the 8th Circuit, in affirming disposal of a right of publicity claim against the NFL brought by three former NFL players over use of their images in game footage, delivered a much-needed dose of clarity on the subject.

The Dryer v. Nat’l Football League Dispute

Dryer involved three former NFL players who appeared in game footage that the NFL included in a number of films created by one of its affiliates, NFL Films. All three of the former players also contributed interviews for the films after their retirement. Dryer, 2016 WL 761178, at *1. As the Court explained, “NFL Films has produced hundreds of these films, and many have won awards for the creative elements they employ.” Id. The three appellant players originally joined a putative class action against the NFL consisting of other former NFL players, but opted out of a settlement with the NFL to pursue their individual right of publicity claims for use of their images in the films. The appellant players also asserted a Lanham Act claim, not discussed here, also rejected by the district court and affirmed by the 8th Circuit.

The district court granted summary judgment in favor of the NFL on the players’ right of publicity claim on a number of alternative grounds, including preemption under the Copyright Act. On appeal, the 8th Circuit reached only the copyright preemption issue.

The 8th Circuit began by acknowledging that Section 301 of the Copyright Act provides the boundaries for claims governed exclusively by the Copyright Act, preempting “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright… .” 17 U.S.C. § 301; Dryer, 2016 WL 761178 (quoting § 301). The Court then set forth the two-part test for determining whether federal copyright law preempts a state law cause of action: the “court asks (1) whether ‘the work at issue is within the subject matter of copyright as defined in §§ 102 and 103 of the Copyright Act’ and (2) whether ‘the state law created right is equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106.’” Dryer, 2016 761178, at * 2 (quoting Nat’l Car Rental Sys., Inc. v. Comput. Assocs. Int’l, Inc., 991 F.2d 426, 428 (8th Cir.1993)). If both of those conditions are met, the claim is preempted.

Beginning with the first requirement, the 8th Circuit held that the work at issue, the NFL film footage, was a fixed recording of a live performance that falls within the scope of federal copyright protection. Id. at *2. The Court rejected the appellant players’ argument that their performances in the games were part of their “identities” rather than fixed works of authorship subject to protection of copyright. Id. The Court reasoned that, while the initial performance of a game is an “athletic event” falling outside the purview of copyright protection, “[t]he Copyright Act was amended in 1976 specifically to insure that simultaneously-recorded transmissions of live performances and sporting events would meet the Act’s requirement that the original work of authorship be ‘fixed in any tangible medium of expression.’” Id. (quoting Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 847 (2d. Cir. 1997), which in turn quoted 17 U.S.C. § 102(a)). Thus, the Circuit Court concluded that the film footage fell within the subject matter of copyright, satisfying the first requirement.

Moving to the second requirement, the Court next considered whether the players’ state right of publicity was equivalent to any of the exclusive rights contemplated in federal copyright protection. The Court first pointed out that, while copyright law’s purpose “is to suppl[y] the economic incentive to create and disseminate ideas… [b]y establishing a marketable right to the use of one’s expression,” the underlying rationale for the right of publicity is “the desire to provide incentives to encourage a person’s productive activities and to protect consumers from misleading advertising.” Id. at *3 (internal quotations and citations omitted). The Court went on to consider in what scenarios involving both right of publicity and copyright interests copyright would preempt a right of publicity claim and when it would not. It reasoned that, because the right of publicity in part embodies the state’s interest in consumer protection, “a right-of-publicity suit challenging the use of a copyrighted work in a commercial advertisement could have purposes unrelated to the aims of copyright law.” Id. (emphasis added). The Court identified Facenda v. NFL Films, Inc., as an example where a right of publicity claim was not preempted because a copyrighted voice recording originally used in an NFL film was subsequently used in an advertisement for “an unrelated product,” a video game. See id. (citing Facenda, 542 F.3d 1007, 1029 (3d Cir.2008)). The 8th Circuit then articulated a bright-line standard for determining whether the rights are equivalent: “When a right-of-publicity suit challenges the expressive, noncommercial use of a copyrighted work, however, that suit seeks to subordinate the copyright holder’s right to exploit the value of that work to the plaintiff’s interest in controlling the work’s dissemination.” Dryer, 2016 WL 761178, at *3. In those situations, the right of publicity interests must yield to copyright.

The Court applied the factors set forth in Porous Media Corp. v. Pall Corp. to hold that the NFL films at issue in this case were expressive, rather than commercial speech. See Porous Media, 173 F.3d 1109, 1120 (8th Cir.1999) (“(i) whether the communication is an advertisement, (ii) whether it refers to a specific product or service, and (iii) whether the speaker has an economic motivation for the speech.”). First, the NFL films did not “propose[] a commercial transaction” and were therefore not advertisements. Dryer, 2016 WL 761178, at *3 (internal quotations omitted). Second, the films did not refer to the NFL as a “present day product,” but instead included references to and discussion of the NFL as “part of the historical events” that were the subject of the videos. Id. Finally, the Court concluded that “[b]ecause the films represent speech of independent value and public interest rather than advertisements for a specific product, the NFL’s economic motivations alone cannot convert these productions into commercial speech.” Id.

In concluding that the NFL films including footage of the former players were expressive, not commercial, speech, the Court held that the NFL’s rights in the copyrighted film footage preempted the players’ “attempt to control dissemination of the films,” which would impede the NFL’s ability to exercise one of its exclusive rights granted by the Copyright Act.

Where Other Courts Have Gone Astray: Focusing on “Likeness” and “Identity” as the Work and Right at Issue.

In reaching this conclusion, the 8th Circuit avoided the pitfall of concluding that the mere involvement of an individual’s name, likeness, or image somehow automatically removes a right of publicity claim from the scope of copyright protection. Courts considering this issue in the past have muddied the focus of preemption analysis by reasoning improperly that the “subject matter” of a right of publicity claim are individuals’ “names and likenesses,” which are “not a work of authorship within the meaning of 17 U.S.C. § 102.” See, e.g., Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir. 2001).

For example, in Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir. 2001), which involved the use of photographs of surfers in an advertising campaign for the retail chain Abercrombie & Fitch, the 9th Circuit held the surfers’ right of publicity claim was not preempted by copyright. However, it rested that conclusion on its finding that the plaintiffs’ names and likenesses, the subject of their right of publicity claim, were not works of authorship and were not copyrightable, and thus failed to meet both requirements for preemption. But this reasoning misses the core focus of copyright preemption—does the state law interest assert a right equivalent to copyright? Where the right of publicity claim seeks to supplant a copyright holder’s ability to exercise the very rights afforded under copyright, a right of publicity claim should be preempted.Notably, the Downing court nevertheless reached the correct result because there, the plaintiff’s likeness as fixed in a copyrighted photograph was subsequently used in an unrelated advertisement for Abercrombie & Fitch. Thus, the photograph as used in the advertisement was not being used only to exercise the rights afforded the holder of the copyright in the photograph; instead, the photo was being used for an additional and unrelated commercial purpose. See id.

In a similar vein, the 7th Circuit in Toney v. Loreal applied flawed reasoning to reach the right result, holding that there was no preemption of a right of publicity claim where a model’s likeness fixed in an advertisement was used in a subsequent, separate endorsement. 406 F.3d 905, 910 (7th Cir. 2005) (finding the plaintiff’s “identity” “not fixed,” “not a work of authorship”). Again, there, the original copyrighted photograph was not being used as afforded by the original copyright, but instead for an additional, unrelated commercial purpose. What was important was not whether a person’s likeness was embodied in a copyrighted work, but rather that the use of the work in an advertisement was not the equivalent of a right granted under copyright.

The 8th Circuit’s opinion in Dryer signals a shift to a better articulated standard for analyzing these issues, one that other district and circuit courts should follow going forward.

Parting Thoughts on the 8th Circuit’s Opinion, a Clear Path Forward

More than 20 years ago, in a famous dissent, Judge Alex Kozinski of the 9th Circuit cautioned against construing right of publicity claims to erode federal copyright protections. He warned, “Our court is in a unique position here. State courts are unlikely to be particularly sensitive to federal preemption… [and] [t]he Supreme Court is unlikely to consider the issue because the right of publicity seems so much a matter of state law. That leaves us. It’s our responsibility to keep the right of publicity from taking away federally granted rights, either from the public at large or from a copyright owner.” See White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1518 (9th Cir. 1993) (Kozinski, J., dissenting).

The 8th Circuit’s decision in Dryer took up that responsibility and makes clear that individuals cannot successfully wield the right of publicity to nullify the rights of copyright holders. In this case, the NFL did nothing more than legitimately exploit the exclusive rights granted to it under copyright, and the rights asserted by the individuals fall completely within the exclusive rights owned by the NFL. The 8th Circuit properly rejected the right of publicity claims as preempted by copyright law. To come to any other conclusion would permit individuals, who hold no copyright interests, to completely undercut and usurp a copyright holder’s interests.