There is no question that smart phones have transformed the social and economic structure of society, and the integration of increasingly effective cameras has helped spark the revolution. It is now the norm for people to document their lives through images of themselves and those around them, and to share those images through social media, where others then copy, edit, and reuse them within the blink of an eye. Just imagine all the ways that photos are now taken, posted and virally spread via social media. For instance, I have taken selfies, asked strangers to take pictures of me with my hiking buddies, and asked friends to send me images of people from their camera rolls. I have taken photographs of well-known personalities at private gatherings, and snapped pictures of individuals when they had no idea I was even there. Sometimes I decide to post these personal images on Instagram or Facebook, and then away they go.
The potential problem with all this is that photographs of individuals include creative and personal rights that may be protected as intellectual property. Federal copyright laws, for instance, protect the original expressions in photographs, and give copyright holders exclusive rights to reproduce, edit, distribute and display their works. State laws may also separately give rights to individuals over the use of their personal likenesses to prevent unwarranted intrusions on expectations of privacy. In addition, states, to varying degrees, protect the economic interests that individuals may have established in their personal images by preventing others from appropriating likenesses for personal advantage, such as through trade, advertising or perhaps otherwise. These economic concerns are the focus of what are called publicity rights.
One issue with photographic images is that it is not always obvious who owns the copyright interests in the works. The copyright belongs to those making the creative contributions to the photograph, such as choices about camera angles and composition. Thus, the person who actually snaps the photograph may be the copyright owner, even if this individual uses someone else’s phone to take the shot. Then again, the subject may creatively pose for the picture or instruct the photographer how to shoot the scene. So that person may be the copyright owner, or perhaps the two might own the rights jointly. Also, there may be implied agreements about ownership transfers depending on the circumstances, Thus, it may not always be clear, even to the individuals who post photos, whether they actually own the copyrights to the images that they share. Compounding the issue are the terms of service of social media sites; users of Instagram for instance, warrant that they own the copyrights to photographs that they post and give others permission to further share them. The end result is that an enormous number of personal images virally spread over the Internet without much recognition whether the reproductions, displays and distributions are truly authorized or not.
Of course, there are times when the individuals who appear in copyrighted photographs don’t appreciate that their likenesses are shared over social networks, despite the actions of the copyright holders, and believe that they should have rights to control when and how their personal images are displayed. However, even when state policies may be relevant, as with privacy and publicity rights, the individuals must contend with a provision in the federal copyright statute (section 301), which preempts state laws that address the same subject matter as copyright and provide rights equivalent to those extended under the federal law. Over the years, the courts have been chasing their tails trying to determine when a likeness that is the subject of a state law claim involves the same subject as the federal copyright claim over the creative content in the image. The problem has been particularly acute with publicity rights claims because both copyrights and publicity rights are intended to satisfy economic objectives.
Courts generally agree that publicity rights are not preempted by copyright if the photograph is used in a way that involves something more than merely displaying, distributing or reproducing the picture. For instance, copyright law does not preempt publicity rights when the personal image is associated with the sale of products or services because the relationship raises other distinct trademark-like concerns, such as false-endorsement. However, what happens if the profit is derived from the mere display of the image, and the copyright owner takes no action to prevent it? For example, we have already seen how the artist Richard Prince reproduced Instagram photographs of individuals and sold the canvasses for close to $100,000 each. Or what if a person re-posts Instagram pictures of bikini-clad women on a fee-based or ad-supported web site? Obviously, the Internet will provide many currently unforeseen opportunities for individuals to make money from photographs in ways that do not involve advertising or the application of likenesses on commercial products.
The Ninth Circuit recently had an opportunity to set the record straight about copyright preemption in Maloney v. T3Media, Inc., but unfortunately its decision will only serve to further cloud the issue. The facts in T3Media are simple and straightforward. The NCAA owns the copyrights in photographs of Catholic University’s basketball team playing in the Division II national championship game and posing with the trophy after its upset victory. The NCAA contracted with T3Media, allowing it to store, host and license the NCAA photo library, which included these images. T3Media made the images available to consumers for a fee through a license in which they agreed to use a single copy of an image for non-commercial art, and not in connection with any product or service. Two of the basketball players sued T3Media for violating their right of publicity under California law.
The plaintiffs claimed that the subject matter of a copyrighted photo never includes the likeness of a person in the picture because the individual, in a sense, is a preexisting element that the photographer doesn’t create, but merely captures within the photo. The Court rejected this argument, however, stating that it is not true that publicity rights claims relating to a likeness in a photo are categorically not subject to preemption. Rather, the court stated that the crux of the issue is deciding when the publicity rights claim seeks to vindicate misuse of an individual’s likeness as opposed to merely interfering with the distribution, display or performance of a copyrighted work. According to the Court, preemption thus turns on how a copyrighted photo is used, and with this understanding, it held that a publicity rights claim can only proceed when a likeness is used non-consensually on merchandise or in advertising. On the other hand, a likeness cannot form the basis of a publicity rights claim when the claim merely challenges control of the artistic work itself. Since the basketball players objected to the commercial licensing of the photographs without alleging use of their images in connection with products or advertising, their publicity rights claims were preempted.
Although the court’s conclusion was probably correct, its analysis was incomplete, which could lead to confusion later as businesses find new ways to monetize photographic images on the Web and other digital contexts. Consider, for example, if I surreptitiously take a photograph of an identifiable person or celebrity who is looking serenely at the ocean from a public beach. Let’s say I then find ways to sell copies of the photo to individuals who admire the subject in it. Although I am the copyright owner in the photo, and I am not using the likeness in the photo on products or for advertising, I am convinced that under these circumstances where the photo was taken without permission, a state’s right of publicity law would not be preempted by copyright. After all, the likeness is not something I creatively designed, and the individual did not in any way agree that I could merge his or her image into the copyrighted work. Thus, I am effectively misappropriating the likeness for my own personal commercial uses, which is distinct from copyright’s purpose of stimulating creativity. For this reason, I am confident that one’s consent to be a subject in a photograph should be relevant to the application of preemption whenever the image is of a person who is not also the copyright holder.
So, if the initial authorization to even appear in a photograph is pertinent to preemption, then the degree of authority must also be relevant when one agrees to allow a photographer to take the picture. Thus, in the end, one’s personal image belongs to the individual and may be subject to personal rights under state (or federal) law until and to the extent that the individual willingly agrees to waive those rights as part of the “transaction” that result in the creation of the copyrighted photo. This agreement may be express or, as is more likely, implied by the circumstances.
Courts worry that if publicity rights are not preempted, then the actors who agree to appear in a copyrighted film, for example, might successfully sue the copyright owner based on publicity rights for charging patrons to view performances of the film. But actors who willingly participate in the making of a movie typically understand that the copyright owner of that work intends to profit from it in the usual ways, and so implicitly agree that the owner and authorized licensees may exploit the film, which includes their likenesses, in the usual expected fashion. However, the implied consent does not extend to other uses of the images, such as for commercial trade or advertising, and does not sanction any use of the likenesses by those who do not have the copyright owner’s permission. For this reason, I believe that the most consistent approach to address copyright preemption is to base it on a rebuttable presumption that those who willingly appear in photographs agree by implication to grant the copyright owner (and authorized licensees) the typical exclusive rights enjoyed by copyright owners to reproduce, display, distribute or edit their likenesses in ways that do not raise other distinct concerns, such as false endorsement in commercial trade or advertising.
This standard helps one understand why the court in T3Media believed that the players’ publicity rights claims should fall to preemption. The Catholic University basketball players voluntarily appeared in the post-game team photos, and although not stated in the case, probably expressly or impliedly agreed to have the games photographed by NCAA personnel. Therefore, they faced a rebuttable presumption that their claims against the NCAA and its licensees, including T3Media, were preempted by copyright. Although they likely would have been unable to overcome this presumption, they should have had the opportunity to demonstrate that they had a mutual understanding with the NCAA regarding limitations on the organization’s use of the photos. If the NCAA’s licenses were indeed unauthorized, then the right of publicity claim should not have been preempted. This does not mean that the players would have successfully won the action – that depends on the terms of the state’s particular laws – but they should have been able to at least proceed.
One can now apply this standard to the flood of pictures that appear on the Internet. For those photos posted on social media by the actual copyright owners, the subjects will usually face preemption when the pictures are permissibly shared, even for remuneration, due to the rebuttable presumption. The presumption may, of course, be overcome in unusual circumstances. For instance, a celebrity at a family event may be able to prove that he or she posed for the picture, but with the understanding that it would only be shared in a limited way, and certainly not posted on a public forum, such as with social media. On the other hand, all bets are off if someone other than the copyright owner posted the photo, or if the subject did not consent to the picture in the first place. And of course, preemption is most concrete when dealing with a selfie, given that the subject is also the photographer and copyright owner. But then, barring very unusual circumstances, the subjects in selfies can handle their concerns with copyright infringement suits, so preemption is most palatable in these circumstances.
Unfortunately, the Ninth Circuit failed in T3Media to fully and accurately address the limits of copyright preemption on state law claims involving the personal rights of individuals appearing in photographs. Hopefully, courts will soon establish a coherent approach, such as the one outlined here, to copyright preemption and its application to publicity rights, so that there will be more predictability as individuals find new ways to make money on digital platforms.