By Emilio B. Nicolas

When it comes to the right of publicity, it helps to keep tabs on California law. The right to prevent the unauthorized commercial use of a person’s name, likeness or other indicia of identity may vary from state-to-state. But since a high volume of right of publicity cases are before California federal and state courts, the decisions of those courts are useful indicators of where the law is heading. This year, the Ninth Circuit Court of Appeals and a California intermediate appellate court issued decisions which may help other jurisdictions answer one of the subject’s more challenging questions: what is a “commercial use”?

In April, the Ninth Circuit decided Maloney v. T3Media, Inc.,¹ affirming a district court’s dismissal of common law and statutory right of publicity claims as preempted by Section 301 of the Copyright Act. The plaintiffs, two former collegiate basketball players and putative class action representatives, sued a website operator that, under contract with the NCAA, sold downloadable photographic images from the NCAA’s Photo Library for “non-commercial art use.” The photographs depicted NCAA games, while written descriptions – including the featured players’ names – accompanied the website’s digital thumbnail previews.

In holding that the Copyright Act preempted the plaintiff’s claims, the Maloney Court recognized how “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.” This crucial distinction allowed the Maloney Court to seemingly harmonize earlier right of publicity preemption cases from the Ninth Circuit and other jurisdictions, and to clarify that when a copyrighted work captures someone’s indicia of identity, preemption will preclude that person’s attempt to control the work itself by interfering with the exercise of rights governed exclusively by the Copyright Act.

Consistent with this rationale, the Maloney Court also espoused an apparent bright-line rule limiting “commercial use” to use “on merchandise or in advertising.” This rule is rather intriguing because it significantly narrows the right of publicity’s application. However, this rule raises another question: what qualifies as “merchandise” or “advertising”? Earlier this month, in Cross v. Facebook, Inc.,² the California First Appellate District helped answer that question.

In Cross, country rap artist Jason Cross (p/k/a Mikel Knight) sued Facebook because the social media site did not take down a page titled “Families Against Mikel Knight.” The page was created after members of Knight’s street marketing team were involved in automobile accidents that resulted in serious injuries and two deaths. Knight alleged that negative comments posted on the page incited verbal threats and physical assaults against Knight or his promotional team, and led to the loss of lucrative business deals. Among other things, the Court was asked to review the trial court’s refusal to dismiss Knight’s common law and statutory right of publicity claims under the California anti-SLAPP statute. Under Knight’s theory, Facebook violated his right of publicity when it displayed unrelated third-party advertisements adjacent to online pages containing user comments about Knight and his business practices.

On appeal, the Court compared Knight’s claim to earlier right of publicity cases involving the ad placement decisions of magazine publishers. Those situations typically do not trigger the right of publicity because “the benefit [magazines] receive – payment for the advertising space – [i]s unrelated to the contents of the advertisement,” and also because “there is no legal precedent for converting noncommercial speech into commercial speech merely based on its proximity to the latter.” The Court saw no reason to alter the rule for the online medium and, thus, reversed the trial court’s decision because Facebook did not benefit “in any actionable way” from the use of Knight’s name or likeness. “Simply, the appearance of advertisements next to a third party’s use of Knight’s identity is insufficient to demonstrate a commercial use by Facebook.” This unequivocal holding shows how even certain advertising activities may not qualify as “commercial uses” for purposes of the right of publicity.

Nearly sixty years after Dean Prosser first articulated the concept of a right of publicity, we are starting to see real movement towards bringing the scope of that right into focus. The potentially influential holdings of Maloney and Cross lend more consistency and rationality to the “commercial use” analysis and, in turn, offer greater predictability in the law for the creation, distribution and marketing of content. Will other courts follow in their footsteps? Stay tuned.

1 853 F.3d 1004 (9th Cir. 2017).

2 Nos. A148623, A149140, 2017 Cal. App. LEXIS 691 (Cal. Ct. App. Aug. 9, 2017).