(Thomas Yarnell contributed research and writing to this blog post.)

Copyright law preempts certain state law personal rights, including misappropriation of someone’s likeness or identity.  For example, the right of an individual to prevent a third party from exploiting that person’s image or voice is trumped when that third party purchased the rights to the sound recordings (i.e. the copyright) of that person’s voice.

Similarly, someone like celebrity blogger Perez Hilton might argue (and did argue in a recent lawsuit, somewhat successfully) that he had protection under copyright law (as “fair use”) to copy someone else’s copyrighted photographs.  And Hilton might further argue (and did argue in that same lawsuit, although not as successfully as his fair use argument) that his copyright claim preempts any attempt by that aggrieved copyright holder to pursue other legal arguments against Hilton.

And THAT, in beautiful incoherent summary, is how Perez Hilton might make some very good law and teaching on federal copyright law!  Like OMG!

Perez Hilton v. X17

In 2007, celebrity gossip blogger Mario Lavandeira, better known as Perez Hilton, was sued by the paparazzi photo agency X17 for copyright infringement in using its photos without permission, nor offering any form of compensation, nor acknowledging where the pictures came from.  X17 sued for copyright infringement and for “hot news” misappropriation.

The term and theory of “hot news” comes from the 1918 Supreme Court case of International News Service v. Associated Press in which the AP accused International News Service of purloining stories that required time, money, and journalistic effort to produce. The news is “hot” due to the fact that the news is of interest largely due to its freshness – or hot-ness.

It’s easy to see why X17 would claim Perez Hilton’s actions constituted hot news misappropriation. Paparazzi are known to camp outside celebrities’ houses and hotspots for hours just to snap one decent picture. For X17, this is the nut of their business.  Inarguably, much value in that business is dissipated if its exclusivity or first-in-time status is lost.

Undoubtedly, too, many of the visitors to Hilton’s site may believe he is the first to feature these photos.

An argument could be made, though, that the celebrity photographs of paparazzi should not legally constitute “hot news”.  It might be noted, for example, the lack of “news” value in the photos, certainly in the sense of comparison with the “hot news” subject matter traditionally protected by the International News Service doctrine.  That question may be litigated in the X17 case, including Hilton’s argument that “hot news” applies only to text (and not to photographs). The immediate interest here, though, is Hilton’s defense argument that X17’s claim of “hot news” misappropriation should be dismissed as preempted by the federal Copyright Act preempted it.

Hilton argued that his use of the photographs was permitted as “fair use”, a claim that would kick in the federal Copyright Act and therefore any claim that the Copyright Act preempts a state law claim of “hot news” misappropriation.  If the Copyright Act did indeed preempt the state law claim, then X17’s claim of “hot news” misappropriation would be automatically rejected.  X17 would then have only a possible claim of copyright infringement, and would have to persuade against an argument of fair use.

California’s Central District Court denied Hilton’s preemption motion, however, ruling that the federal Copyright Act does not preempt California’s state-law “hot news” misappropriation claim.

Copyright Preemption

The court noted that Congress’ 1976 amendments to the Copyright Act did establish the doctrine that federal copyright generally preempts state law claims, but highlighted two important conditions:

1. The work must fall within the scope of the Copyright Act.
2. The rights of the owner claimed under the state law must be equivalent to those rights protected by the Copyright Act.  If any rights other than reproduction, performance, distribution or display of the work are involved under the state law, then the state law is not considered equivalent and thus not preempted.

Put another way: Person A owns copyright to a work.  Person B claims rights to make some use of the copyright work under a fair use or other copyright argument. Person A claims that Person B has infringed Person A’s copyright, and further claims that Person B has violated a non-copyright state law right of Person A – even conceding the validity of Person B’s fair use claim.  Person B responds that Person A’s non-copyright state law claim against Person B is “preempted” by the Copyright Act, and therefore the non-copyright state law claim should be dismissed.  Person A responds that Copyright Act preemption is not applicable in this case because Person A’s state law claim seeks to protect rights that are different – i.e. not “equivalent to” – Person A’s rights under the Copyright Act.

In the Perez Hilton case, the court cited cases where “hot news” misappropriation was found to involve protection of rights other than reproduction, performance, distribution or display.  The time-sensitive, first-to-break-the-story element of hot news, for example, is not a right “equivalent to” the essential rights protected by the Copyright Act.  Nor is the protection of investment from gathering time-sensitive information.

In rejecting Hilton’s claim, the court distinguished misappropriation from copyright infringement.  Misappropriation – or, in plain English, theft – seems pretty much another way of saying copyright infringement.  And there is clearly and obviously overlap, but the essentials of the two claims are different.  As the court noted, the essence of misappropriation is a claim of improper use for a trade purpose, while copyright infringement generally involves improper or unauthorized use for an expressive purpose.

Kind of subtle to the point of seeming meaninglessness, but the distinction does have legal significance as shown in these cases.  The main significance is that the requirements for establishing the two claims are different.  Thus, a defendant in a copyright infringement case could argue – as Perez Hilton argued here – that his use of the copyrighted material was fair use under copyright law.  But if a plaintiff can show misappropriation – that is, access to the “stolen” property, actual taking of the property, and no valid claim of “right” to taking the property under property law – then the defendant’s copyright defense would not matter.

NFL Films

In another recent copyright preemption case, the US Third Circuit Court of Appeals held that federal copyright law does not preempt a state law right of publicity claim in Pennsylvania.  A state law right of publicity claim involves a person’s exclusive right to promote everything about themselves – including appearance and voice.  Like many right of publicity cases, the Pennsylvania case involved a claim of unauthorized or false endorsement of a product or service.

The case was brought by the estate of John Facenda, a man with a particularly distinct voice, one that many football fans referred to as “The Voice of God” for his voiceover work with NFL Films from 1965 until his death in 1984.  Under his contract with NFL Films, Facenda granted NFL Films exclusive rights to use his voice and image for any purpose except an endorsement of a product or service.

In 2005, NFL Films used Facenda’s voice in a TV special on the making of the Madden NFL ‘06 video game.  Facenda’s son Jack sued NFL Films, claiming it had violated his father’s right of publicity by using Facenda’s voice to endorse the video game.  The Third Circuit decision was an appeal of a summary judgment ruling in favor of the Facenda family in the District Court.

NFL Films argued that its rights to exploit the copyright to Facenda’s voice – by way of the rights it obtained under its contract with Facenda – preempted Facenda’s state law right of publicity claim.  The appeals court rejected the NFL Films’ preemption claim, finding that the privacy rights sought to be protected under state law – right of publicity, right to exploit your name and image, right to endorse products – were not “equivalent” to rights protected by the Copyright Act and held by NFL Films under its contract.

As with Perez Hilton, here we turn again to the issue of whether a work is used for creative or commercial purposes.  NFL Films argued that its program was a documentary, and since noncommercial therefore purely expressive – a core copyright subject.  Facenda’s family, however, persuaded the court that the program was essentially promotional material for a commercial product, a video game.  Of some significance to the ruling was determining whether Facenda’s voice had commercial value, something NFL Films was unable to refute.

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It might be of interest that Perez Hilton now acknowledges the source of most photos on his site.  That might buttress his fair use arguments, though not likely relieve his exposure to misappropriation claims.  The NFL Films case is conceptually baffling because the commercial nature of the NFL’s self-promotion always seemed so obvious.  Not least including the “Voice of God” wrap-up summaries every Sunday.  Like so many areas of intellectual property law (READ: Tassini), the case might simply argue for better contract drafting rather than any serious reconsideration of policy.  That makes the NFL Films case materially different from Perez Hilton’s since it turns on questions of contract interpretation as much as arcane concepts of copyright.

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