IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF MISSOURI WESTERN DIVISION STEVE RAY, ) ) Plaintiff, ) ) v. ) Case No.: 13-1179-CV-W-SOW ) ESPN, INC., et al., ) ) Defendants. ) ORDER Before the Court is defendants Motion to Dismiss (Doc. #9). For the following reasons, the motion is granted. I. Background 1 Plaintiff Steve Wild Thing Ray, a Missouri resident and former professional wrestler with the Universal Wrestling Federation ( UWF ), filed a four count Petition in the Circuit Court of Jackson County, Missouri against defendants ESPN, Inc., ESPN Classic, Inc., ESPN Classic Europe, Inc. (collectively referred to as ESPN ). The Petition alleges Missouri common law causes of action as a result of ESPN telecasting previously recorded wrestling matches in which plaintiff participated. Plaintiff alleges the following state law claims: (1) Invasion of Privacy; (2) Misappropriation of Name; (3) Infringement of the Right of Publicity; and (4) Interference with Prospective Advantage. Plaintiff alleges that he wrestled in the UWF for pecuniary gain. In order to do so, he entered into a series of contracts with Herb Abrams. These contracts covered three to five matches per night, and each match was filmed for future use in order to generate revenue. 1 The facts are taken from plaintiff s Petition and assumed true for purposes of this Order. Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 1 of 9
Plaintiff alleges that ESPN acquired these films and has aired the performances on its television networks. Plaintiff alleges that ESPN never received consent to use his identity, likeness, name, nickname, or personality to depict him in any way. In Count I, plaintiff alleges that ESPN has appropriated plaintiff s identity by acquiring canisters of film to display for commercial gain. In Count II, plaintiff alleges he did not give ESPN consent to use his name, ESPN used his name to obtain an advantage, and ESPN gained an advantage by use of plaintiff s name. Plaintiff alleges, in Count III, that he did not give ESPN consent to telecast the recorded performances and that by airing them, ESPN has used plaintiff s name as a symbol of his identity and derived a commercial advantage. Finally, in Count IV, plaintiff asserts that by airing the performances, ESPN has knowingly interfered with his business expectancies in connection with sales of health and weight lifting supplements and related products. ESPN moves to dismiss plaintiff s claims on the basis that plaintiff s Missouri common law claims are preempted by the Copyright Act. 2 ESPN also argues that plaintiff has failed to state a claim on his claim for Interference with Prospective Advantage. 3 II. Standard The purpose of a motion to dismiss under Rule 12(b)(6) is to test the legal sufficiency of the Complaint. In considering a motion to dismiss under Rule 12, the Court assumes the factual allegations contained in the Complaint are true. Neitzke v. Williams, 490 U.S. 319, 326-27 2 ESPN is correct that Counts I and II allege the same tort. The tort of invasion of privacy includes four separate causes of action: intrusion on the plaintiff s seclusion or private affairs, public disclosure of embarrassing private facts, publicly placing plaintiff in a false light, and appropriation of plaintiff s name or likeness for defendant s advantage. Nemani v. St. Louis Univ., 33 S.W.3d 184, 185 (Mo. 2000) (en banc). The only one of these four causes of action that applies in this case is the appropriation of plaintiff s name or likeness. 3 Plaintiff has not challenged ESPN s arguments that his invasion of privacy and interference with a prospective advantage claims are preempted. The Court assumes plaintiff has waived these claims. See Crossett Paper Mills Employees Federal Credit Union v. Cumis Ins. Soc., Inc., 476 F.3d 578 n.2 (8 th Cir. 2007) ( Since the Credit Union did not respond to this argument in its response... we assume that Credit Union has waived its claim.... ). 2 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 2 of 9
(1989). The Court is also required to make all reasonable inferences in favor of the plaintiff. O Neal v. State Farm Fire & Cas. Co., 630 F.3d 1075, 1077 (8 th Cir. 2011). Fed. R. Civ. P. 8(a)(2), states that a Complaint must contain a short and plain statement of the claim showing that the pleader is entitled to relief. The Supreme Court has clarified that Rule 8(a)(2) requires Complaints to contain more than labels and conclusions, and a formulaic recitation of the elements of a cause of action. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009). In order to survive a motion to dismiss under Rule 12, the Complaint must contain enough factual allegations, accepted as true, to state a claim for relief that is plausible on its face. Twombly, 550 U.S. at 570. III. Discussion Section 301(a) of the Copyright Act preempts all legal and equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 and in works of authorship that... come within the subject matter of copyright as specified by sections 102 and 103. 17 U.S.C. 301(a). Section 301(b) clarifies that Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to... subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103. Id. at 301(b). Further, Congress has explained that [t]he intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent to copyright and that extend to works within the scope of the Federal copyright law. Laws v. Sony Music Ent., Inc., 448 F.3d 1134, 1137 (9 th Cir. 2006) (quoting H.R. Rep. No. 94-1476, at 130 (1976)). The Eighth Circuit has a two-part test to determine whether a state cause of action is preempted by Section 301 of the Copyright Act: 3 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 3 of 9
A state cause of action is preempted if: (1) the work at issue is within the subject matter of copyright as defined in 102 and 103 of the Copyright Act, and (2) the state law created right is equivalent to any of the exclusive rights within the general scope of copyright as specified in 106. Nat l Car Rental Sys., Inc. v. Computer Assocs. Int l, Inc., 991 F.2d 426, 428 (8 th Cir. 1993) (citing Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir. 1983)). A. Does the Work at Issue Fall Within the Subject of Copyright Law? Under the first element, the Copyright Act defines the subject matter of copyright as original works of authorship fixed in any tangible medium of expression... from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. 102(a). Works of authorship include motion pictures and other audiovisual works. Id. A work is fixed in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. Id. 101. Once plaintiff s wrestling performances were captured on film, they became fixed in [a] tangible medium of expression that could be perceived, reproduced, or otherwise communicated through the aid of a machine or device. Id. at 102(a). Therefore, the video performances fell within the subject matter of copyright law. See Nat l Basketball Ass n v. Motorola, Inc., 105 F.3d 841, 847 (2d. Cir. 1997); Somerson v. McMahon, 956 F.Supp.2d 1345 (N.D. Ga. 2012). B. Is the State Law Claims Equivalent to Exclusive Rights Contained in the Copyright Act? Plaintiff does not quibble with ESPN s assertion that the video reproductions fall within the subject matter of copyright law. Instead, he argues the work at issue is not the actual video 4 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 4 of 9
reproductions but the usage of his image, likeness and persona in the video reproductions. Plaintiff argues the basis for his claims is the fact that ESPN used his likeness, name and persona for their commercial advantage without his consent. Several cases guide the Court s analysis. In Downing v. Abercrombie & Fitch, 265 F.3d 994 (9 th Cir. 2001), the Ninth Circuit concluded that a right of publicity claim was not preempted by the Copyright Act. Abercrombie & Fitch (A&F) had published a photograph of the plaintiffs, who were participants in a surf championship in Hawaii in 1965. A&F ran the photo, which it had purchased from the photographer and copyright holder. The photographs identified the plaintiffs by name. Without obtaining the plaintiffs consent to use their names and images, A&F also offered t-shirts like those worn by the plaintiffs in the photograph. The Ninth Circuit concluded that the photograph was within the subject matter protected by the Copyright Act. But A&F did not merely publish the photograph; instead, it published the photograph in connection with a broad surf-themed advertising campaign, identified the plaintiffs by name, and offered the same t-shirts worn by the plaintiffs in the photograph for sale. The Ninth Circuit concluded that it is not the publication of the photograph itself, as the creative work of authorship, that is the basis for [plaintiffs ] claims, but rather, it is the use of the [plaintiffs ] likenesses and their names pictured in the published photograph. Id. at 1003. Therefore, the Court concluded that the claim was not within the subject matter of copyright because [a] person s name or likeness is not a work of authorship within the meaning of 17 U.S.C. 102. Id. at 1004. Another case is Toney v. L Oreal USA, Inc., 406 F.3d 905 (7 th Cir. 2005), in which the Seventh Circuit held that a claim under the Illinois Right of Publicity Act was not preempted by the Copyright Act. The plaintiff was a model who had posed for photographs used to promote hair-care products on packaging and in other advertisements. Defendants owned the copyright 5 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 5 of 9
for the photograph that plaintiff was in, and had a right to use it from 1995 to 2000. Defendants continued using the photograph past 2000. The plaintiff brought suit contending that defendants had violated her right of publicity under Illinois law. The Seventh Circuit held [plaintiff s] identity is not fixed in a tangible medium of expression. There is no work of authorship at issue in [plaintiff s] right of publicity claim. A person s likeness her persona is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change this. The fact that the photograph itself could be copyrighted, and that defendants owned the copyright to the photograph that was used, is irrelevant to the [right of publicity] claim.... The defendants did not have her consent to continue to use the photograph.... Id. at 910. The Court therefore concluded that plaintiff s claim was not preempted. The Ninth Circuit again, in 2006, discussed copyright preemption and a state law claim for right of publicity. In Laws v. Sony Music Ent., Inc., 448 F.3d 1134 (9 th Cir. 2006), singer Debra Laws claimed that Sony violated her right of publicity by using a sample of one of her recordings in a song by Jennifer Lopez ( J Lo ) and LL Cool J. A third party, Elektra Asylum Records, owned the copyright in the original sound recording that featured Laws. Elektra granted Sony a license to use the sample in the J Lo LL Cool J song. The Court held that the right of publicity claim was preempted because it fell within the scope of federal copyright laws. Id. at 1139. The Court explained: The essence of [plaintiff s] claim is, simply, that she objects to having a sample of Very Special used in the Jennifer Lopez L.L. Cool J recording. But [plaintiff] gave up the right to reproduce her voice at least insofar as it is incorporated in a recording of Very Special when she contracted with Elektra in 1981 and acknowledged that Elektra held the sole and exclusive right to copyright such master recordings, including the right to lease, license, convey or otherwise use or dispose of such master recordings. At that point, [plaintiff] could have either retained the copyright, or reserved contractual rights in Elektra's use of the recording. Indeed, plaintiff claims that the latter is precisely what she did. But if Elektra licensed Very Special to Sony in violation of its contract with [plaintiff], her remedy sounds in contract against Elektra, not in tort against Sony. Id. at 1144 (emphasis added). 6 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 6 of 9
One District Court decision opines that [t]he precise holding of Laws is better understood in light of Fleet v. CBS, Inc., 50 Cal.App.4th 1911(1996), which the Laws court found quite persuasive. In Fleet, the plaintiffs were actors; the defendant, CBS, owned the copyright to a film in which they performed. Notably, the actors performances in the film were recorded with their active participation and consent. But after a pay dispute, the actors filed a claim for misappropriation of likeness and violation of their rights of publicity. The court held that the actors claim fell within copyright subject matter. The court reasoned that once the performances were put on film with the actors consent, they were fixed in a tangible medium of expression that fulfilled the requirements of section 102 of the Copyright Act. The actors performances were part of the copyrighted material, and the actors likenesses could not be detached from the copyrighted performances that were contained in the film. The court concluded that the actors case crumbles in the face of one obvious fact: their individual performances in the film... were copyrightable. As a result, the court held that their claims were preempted: A claim asserted to prevent nothing more than the reproduction, performance, distribution, or display of a dramatic performance captured on film is subsumed by copyright law and preempted. No Doubt v. Activision Publishing, Inc., 702 F.Supp.2d 1139, 1144 (C.D. Cal. 2010) (internal citations omitted). A leading copyright treatise provides further guidance. It states: [W]hen another reproduces a recorded performance in an expressive, nonadvertising medium, this should not be the concern of publicity law. A performance that is fixed (recorded under the permission of the performer) is copyrightable.... If that performer later objects to the reproduction or performance of that recording in an expressive, non-advertising use, then the claim is one of copyright infringement, not of infringement of the right of publicity. J.T. McCarthy, The Right of Publicity and Privacy 11.55 at 880-81 (2013 ed.). Another leading copyright treatise reaches a similar conclusion: When a performer gives permission or collaborates in creating a copyrightable work, the performer is barred from using the right of publicity to squelch exploitation of that copyrighted work for its intended purpose.... 1 Nimmer on Copyright 1.01[B][3][b][iv][II] at 1-88.4(12) (2013). 7 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 7 of 9
Professor Nimmer surveyed the relevant case law and found that when defendants use a work for the purposes of trade, such as in an advertisement, plaintiffs right-of-publicity claims have not been held to be preempted. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1029 (3 rd Cir. 2008) (citing Nimmer on Copyright 1.01[B][3][b][iv][l] at 1-88.2(9)-(11)). Conversely, when defendants uses constitute expressive works, right-of publicity claims have been preempted. Facenda, 542 F.3d at 1029 (citing Nimmer on Copyright 1.01[B][3][b][iv][II] at 1-88.2(11)). The rationale is that state law has a role in regulating practices of trade, including advertising. But limiting the way that material can be used in expressive works extends beyond the purview of state law and into the domain of copyright law. Facenda, 542 F.3d at 1029. Following these authorities, the Court finds that plaintiff s state law claims are preempted by the Copyright Act. Plaintiff s wrestling performances were part of the copyrighted material, and his likenesses could not be detached from the copyrighted performances that were contained in the films. In contrast to Facenda and Downing, plaintiff has not alleged that his name and likeness were used to promote or endorse any type of commercial product. Rather, plaintiff complains about ESPN airing wrestling performances that have been captured on video. Thus, plaintiff s complaints are based solely on ESPN airing video recordings depicting him in a work of authorship, which is plainly encompassed by copyright law. See Fleet v. CBS, Inc., 50 Cal. App. 4 th 1911, 1920 (1996) ( [I]t was not merely [plaintiffs ] likenesses which were captured on film it was their drastic performances which are, as we have seen, copyrightable. An actor who wishes to protect the use of the image contained in a single, fixed dramatic performance need simply retain the copyright. ). Further, like the consenting actors in Fleet, plaintiff s wrestling performances were recorded with his active participation and consent. A claim asserted to 8 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 8 of 9
prevent nothing more than the reproduction, performance, distribution, or display of a dramatic performance captured on film is subsumed by copyright law and preempted. Fleet, 50 Cal. App. 4 th at 1924. Plaintiff s claims are preempted by the Copyright Act. See Somerson, 956 F.Supp.2d 1345 (holding wrestlers right of publicity claim was preempted by the Copyright Act; Blood v. Titan Sports, No. 94-CV-307-P, 1997 U.S. Dist. LEXIS 24485 (W.D.N.C. 1997) (right of publicity and misappropriation claims relating to sale and reproduction of past wrestling performances preempted by Copyright act). IV. Conclusion Accordingly, it is hereby ORDERED that defendants Motion to Dismiss (Doc. #9) is granted. The abovecaptioned case is dismissed. DATED: April 8, 2014 /s/ Scott O. Wright SCOTT O. WRIGHT Senior United States District Judge 9 Case 4:13-cv-01179-SOW Document 17 Filed 04/08/14 Page 9 of 9