With federal copyright laws holding sway, online sales are acceptable of prized photos of basketball players, their games, appellate judges find

Patrick Maloney, a hot-shooting guard who helped catapult his 2001 team to Catholic University’s first-ever Division III national championship, has become a school legend for his elite decision-making on a basketball court.

But he, teammate Tim Judge, and other Cardinal players made bad calls in courts of law when they and their attorneys sought to contest a decision by their alma mater, the NCAA, and an online vendor, T3Media and its Paya.com website, to allow the public to download pictures of them and their games, especially their now 16-year-old upset victory over William Paterson at the Salem (Va.) Civic Center, a federal appeals court has decided.

On behalf of themselves and other college jocks, Maloney, Judge, and other CU Cardinals had asserted that state right-of-publicity laws gave them a say about the uses of the disputed shots, and, more importantly their likenesses and identities.

But the U.S. Court of Appeals for the Ninth Circuit, in Maloney v. T3 Media, Inc., cried foul, blowing the whistle under First Amendment-protecting anti-SLAPP statutes, and finding that the Federal Copyright Act pre-empted their state publicity rights claim. Here’s an instant replay of how these ballers lost this key round of their legal game.

A fight over winners’ pictures

The photos of Maloney, Judge, and the other Cardinal champs in their senior year at CU, including shots of them in games (the title contest especially) and the celebrations afterward, became part of the NCAA Photo Library.

That archive belongs to the National Collegiate Athletic Association, which owns or controls copyrights of the materials. T3Media provides digital hosting and licensing services for news coverage, motion pictures, and photo and footage of sports events. Through agreements with rights owners like the NCAA, the company displays and licenses protected works to third parties via an online distribution network. In 2013 and 2014, this network included Paya.com, a website through which fans could access digital samples (thumbnails) of NCAA Photo Library shots. Users could obtain nonexclusive licenses and download copies of pictures for noncommercial use, akin to obtaining memento shots from a school yearbook.

But the basketball players in 2014 sued T3Media, claiming its display, reproduction, and license of shots of them violated their common law and statutory rights of publicity. They claimed their names and likenesses improperly were exploited by commercial sales on Paya.com. They sought to make their  suit expand to a class consisting of “all current and former NCAA student-athletes whose names, images, and likenesses have been used without their consent by T3Media for the purpose of advertising, selling, or soliciting purchases of the photographs themselves.” T3Media moved to strike the complaint, invoking California’s anti-SLAPP statute. [Cal. Civ. Proc. Code § 425.16], arguing the jocks’ suit threatened First Amendment protections for  news, public affairs, or sports broadcasts. The company also defended itself, arguing that the athletes legal arguments went to matters covered by higher, federal copyright law, not the lower, state publicity rights.

District, appellate judges cry foul

U.S. District Judge Andre Birotte Jr.  agreed with T3Media, dismissing the athletes’ suit with prejudice. The appellate judges upheld him.

Both courts found big differences between the permissible “selling a copyrighted photograph containing an athlete’s likeness,” and the possibility of suing when a party was “using the athlete’s likeness contained in the photograph for some other purpose,” such as an advertisement, endorsement, or derivative merchandise, and especially without getting the individuals’ permission. T3Media did the former and not the latter. It kept intact and did not exploit the athletes’ likeness and identity in whole pictures that it held proper rights to and simply allowed the public to download for a fee.

The basketball players wrongly were trying to use publicity rights laws to make  “little more than a thinly-disguised copyright claim,” the appellate judges said. T3Media had acted within its rights, as specified by Section 106 of the Copyright Act,  giving owners “exclusive rights” to display, perform, reproduce, or distribute copies of a copyrighted work, to authorize others to do those things, and to prepare derivative works based upon the copyrighted work.

“To survive preemption, the state cause of action must protect rights which are qualitatively different from copyright rights,” the appellate judges said. “The state claim must have an extra element which changes the nature of the action,” and, in this case, the players had failed to establish this.