27 February 2017
On February 17, 2017, two former Catholic University basketball players from the 2001 Division III national championship team pleaded for the Ninth Circuit to revive their class action against a website, T3Media, which sold official NCAA photographs from their championship season. The suit commenced in 2012, but was dismissed in 2015 as a District Court judge found that the website did not exceed its copyright and, therefore, was preempted by the Copyright Act. In response to the court’s dismissal, members of professional player unions in the U.S. (ex. NFL, NBA, MLB, MLS) all filed amicus briefs in support of the player’s position. The player unions were concerned that the district court’s ruling would limit the ability of professional athletes to control commercial exploitation of their likeness.
In support of their position to revive the class action against the website, the players argued that the Copyright Act did not bar them from pursuing their name and likeness rights in NCAA-copyrighted photos, contrary to the District Court’s ruling nearly two years prior. The player’s cited a 9th Circuit 2001 ruling in Downing v. Abercrombie & Fitch, where the court held that a copyright holder commercially exploiting a person’s publicity rights meant the copyright cannot be used as a shield against claims by the exploited individual.
The appellate court believed the Abercrombie case was distinct from the players’ case, as Abercrombie had taken the image and likeness of surfers and placed it on clothing, thus creating new products that clearly commercially exploited the surfer’s likeness. The players’ argued that because the website was selling digital copies of the photos, it is similar to selling posters with the players’ image, and thus a “commercial exploitation.” However, the District Court had already ruled in its 2015 dismissal case that T3Media had not gone beyond the copyright because it did not use the players’ likeness to advertise unrelated products, as the digital copies only displayed the photographs already for sale.
The defendants urged the appellate court to uphold the District Court’s ruling, and argued that the T3Media did not actually sell copies of the photographs, but rather granted customers limited copyright licenses to the photos, which would be protected by the Copyright Act. The defendants framed the plaintiff’s argument as asking the court to “carve out a lesser protection for photographs under the Copyright Act than they admit applies to any other copyrighted work.” Circuit Judges Milan Smith and John Owens sat on the three judge panel that heard arguments from both sides, as well as U.S. District Judge Edward Korman who sat by designation.