By D. John Hendrickson

“How can I ignite the fire in my heart when you’ve got your foot in my face?”  This quote from an episode of The Three Stooges probably explains best the angst of parties on all sides of the right of publicity debate when it comes to untangling court decisions and their interpretation of this state-based right.

Last month’s decision by the Ninth Circuit Court of Appeals in Maloney v. T3Media, Inc. helped clarify, to some extent, when and how the right of publicity may be applied to artistic visual works, and it hopefully creates a path forward for advertisers, ad agencies, artists, talent and athletes in developing appropriate strategies for acknowledging and addressing the rights of all parties in these situations – at least within the context of visual art.

In doing so, however, the Court gave only passing reference to several other decisions which continue to create uncertainty in right of publicity matters.  Here is a quick look at Maloney and those prior cases, too.

In Maloney, the plaintiffs were two former NCAA athletes whose images were captured in NCAA-owned photographs stored in the NCAA Photo Library, a collection of photographs of student-athletes engaged in competition and other team-related activities.  T3Media, Inc. operated a website,, under authorization of the NCAA through which consumers could pay a fee and obtain a non-exclusive license allowing them to download a copy of the image for “non-commercial art use.”

The athletes claimed that the sale of their photographs on constituted commercial exploitation of their names and likenesses in violation of California’s statutory right of publicity, common law right of publicity, and unfair competition law.  Seems pretty logical, at least from the athletes’ point of view, right?  The athletes are making zero dollars from the sale of their pictures while the NCAA and its vendor pocket the change.

But not so fast.  The Court affirmed the district court’s ruling, finding that the subject matter of the state law claims fell within the subject matter of copyright and were preempted by the federal Copyright Act:

“…[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. 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 310 of the Copyright Act…Under these circumstances, the publicity-right claims and the derivative UCL claims challenge ‘control of the artistic work itself.’”

The Court went on to distinguish its earlier holding in Downing v. Abercrombie & Fitch (9th Cir. 2001), in which it found that the right of publicity claims of the plaintiffs – legendary surfers whose photographs were included without their permission in an article in Abercrombie’s direct mail catalog (and whose T-shirts were replicated in merchandise sold in the catalog)– were not preempted by copyright.  The Court explained that a preemption analysis should not be based on the content of a work, but instead should address the way in which the likeness is being used. In Downing, the use of the plaintiffs’ images was clearly for the purpose of helping to sell Abercrombie merchandise advertised in the same company-published catalog.  In the case of T3Media, it was clear that the only use being made of the plaintiffs’ likenesses was in the distribution of protected copyrighted works (the photographs) in which their images were captured for the personal use of the purchasers.  Had their likenesses instead been used on merchandise or in advertising, a right of publicity claim would have survived a preemption challenge.

But what about another recent 9th Circuit decision in which NCAA athletes fared better in their right of publicity claims? And a California Supreme Court decision, too?

Footnote 13 to the Maloney decision lists without comment prior actions in which right of publicity claims were allowed to proceed.  Among these were Keller v. Electronic Arts (9th Cir. 2013) and Comedy III Productions, Inc. v. Gary Saderup, Inc. (Cal. 2001).

In Keller, a former NCAA football player sued Electronic Arts, alleging that the use in EA’s NCAA Football video game, without his consent, of an avitar featuring his actual jersey number, height, weight, build, skin tone, hair color and home state violated his right publicity.

Instead of a defense based on copyright preemption, EA asserted the First Amendment, the premise being that video games, like books, plays and movies, were entitled to the full protections of the First Amendment.  In response, Keller argued that the manner in which his likeness was used was not sufficiently transformative to be entitled to First Amendment protection.

The Court opted to apply a balancing test, the same analysis used by the California Supreme Court in Comedy III (discussed below), balancing the athlete’s right of publicity against the asserted First Amendment right of EA to use Keller’s likeness as presented in the video game.  In doing so, it found that Keller’s likeness did not contain significant “transformative” elements to justify application of the First Amendment defense. EA had merely replicated Keller’s physical characteristics, allowing users to manipulate the character in the same activity for which Keller was known in real life. Mere replication, under this set of facts, was actionable even though the video game itself was an expressive work otherwise entitled to First Amendment protection.

To better understand the “transformative use” element of the balancing test, we need to look briefly at Comedy III, a somewhat controversial case involving charcoal drawings of The Three Stooges by a Venice, California-based artist and the claim that the sale by the artist of reproductions of the artwork in the form of lithographic prints and silkscreen images on T-shirts violated the post-mortem rights of publicity of The Three Stooges.

In Comedy III, the Court described the issue as being “whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation…[W]hen a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity.” Note that it wasn’t the original charcoal drawings that were at issue in this case.  It was the reproduction of that protected artwork as lithographic prints and as images on T-Shirts.

Unfortunately for Mr. Saderup, the Court concluded that it could “discern no significant transformative or creative contribution” in the lithographs and T-shirts, explaining that the artist’s “undeniable skill is manifestly subordinated to the overall goal of creating literal, conventional depictions of The Three Stooges so as to exploit their fame.”

But how is this different from Maloney, where “literal, conventional depictions” of the athletes (you can’t get much more literal than a photograph) were collected, stored, and licensed to the public for a fee without the addition of any creative elements whatsoever?

We are left with at least these general guidelines for analyzing right of publicity matters.

Where the subject matter of the artwork has value independent of the fame of any individual depicted in it, a literal replication of the work is more likely to withstand a right of publicity challenge – especially where the manner of distribution is tantamount to distribution of the original art itself. This was the case in Maloney, where the subject matter was an archive of photographs capturing actual NCAA game play in which, by necessity, the images of the athletes were captured, and where the copying and distribution of the artwork was accomplished through downloadable digital copies of the original artwork.

But where the artwork is of such a nature that inclusion of an individual’s likeness is a choice (as in Keller), then the element of “transformative use” comes into play.  In such a case, if the art contains significant transformative elements, First Amendment protection is more likely to prevail in the balancing test.  If instead the likeness is a mere replication, then it may be presumed that the individual’s likeness is being exploited because of some special value attributed to it – the value being the result of the significant efforts of that individual — and thus the mere replication of that image without consent may constitute a misappropriation of the individual’s right of publicity.

Finally, as we move from distribution of copies of artwork for personal use to repurposing of the artwork for its use on merchandise or in advertising, the analysis becomes much easier.  The commercial exploitation of any individual’s likeness in these cases will likely give rise to significant right of publicity concerns.

With all of this in mind, we are still left with at least one question:  Why was the sale by Mr. Saderup of the lithograph prints of his original charcoal sketches actionable?  In another case out of Ohio, beyond the scope of this article, sports artist Rick Rush prevailed over a right of publicity challenge by Tiger Woods to the sale by Mr. Rush of prints of his original painting commemorating Woods’ first Masters win.  In that case, the court held that the original painting and limited edition prints (5,000 to be exact) were protected by the First Amendment.

Perhaps this simply confirms that right of publicity issues are heavily fact-dependent and require careful analysis.

Or perhaps Curly had it right all along: “This is gettin’ on my noives!”

Legal disclaimer:  This article is not intended to constitute legal advice or to create an attorney-client relationship.  We trust you knew this anyway.