The U.S. Court of Appeals for the Ninth Circuit affirmed the dismissal of a publicity rights suit filed by a pair of former basketball players at Catholic University, finding that copyright law trumped their claims.

Patrick Maloney and Tim Judge 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. Maloney and Judge—who led Catholic University to its first Division III national championship game in 2001—asserted statutory and common law publicity rights claims as well as an unfair competition claim under California law.

T3, which provides storage, hosting, and licensing services for a variety of digital content, made photographs of the games available on its Web site and let consumers download a single copy for $20 to $30. The company moved to strike the complaint pursuant to California’s anti-SLAPP statute, arguing that the federal Copyright Act preempts plaintiffs’ claims.

The district court granted the motion and the Ninth Circuit affirmed.

The athletes maintained that photograph-based publicity right claims categorically fell outside the subject matter of copyright protection because such claims protect an individual’s persona—which itself cannot be fixed in a tangible medium of expression T3, however, told the court the publicity right protects against the non-consensual use of one’s name or likeness on merchandise or in advertising, not where a likeness has been captured in an artistic work and the work itself is being distributed for personal use.

As the plaintiffs’ publicity right and UCL claims challenged control of the artistic work itself and sought to hold T3 liable for exercising rights governed exclusively by copyright law, their claims were preempted by the Copyright Act, the panel said.

“[W]e conclude that a publicity right claim is not preempted when it targets non-consensual use of one’s name or likeness on merchandise or in advertising,” the court explained. “But when 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 interferes with the exclusive rights of the copyright holder, and is preempted by section 301 of the Copyright Act.”

While the plaintiffs tried to drill down on the content of a publicity right claim, the court said prior case law clarified that “the distinction pertinent to the preemption of a publicity right claim is not the type of copyrightable work at issue, but rather the way in which one’s name or likeness is affected by the use of the copyrighted work.”

Under Ninth Circuit case law, “a publicity right claim may proceed when a likeness is used non-consensually on merchandise or in advertising,” the court said. “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.”

Case law from the Third and Eighth Circuits supports this conclusion, the panel said, as does a leading copyright treatise.

“We believe that our holding strikes the right balance by permitting athletes to control the use of their names or likenesses on merchandise or in advertising, while permitting photographers, the visual content licensing industry, art print services, the media, and the public, to use these culturally important images for expressive purposes,” the court wrote. “Plaintiffs’ position, by contrast, would give the subject of every photograph a de facto veto over the artist’s right under the Copyright Act, and destroy the exclusivity of rights that Congress sought to protect by enacting the Copyright Act.”

To read the opinion in Maloney v. T3Media, Inc., click here.

Why it matters: The Ninth Circuit tried to draw a clear line between viable publicity right claims based on the nonconsensual use of the copyrighted work (in advertising or on merchandise, for example) and those that are preempted by the Copyright Act because a likeness has been captured in a copyrighted artistic visual work (in this case, the NCAA’s recorded games) and the work itself is being distributed for personal use.