Wrestling with Preemption: The Eighth Circuit Declares Copyright the Winner

April 29, 2015

Sometimes persons depicted in a copyrighted work, such as a movie, television show, or sporting event, seek to claim that they should be compensated when those who have lawfully acquired rights in that work display that work. Typically, they base their claims on common law theories that the display of the work misappropriates their name or likeness or infringes their right of publicity without their consent.

Copyright owners, of course, question why they should have to pay persons who collaborated in the creation of the work, knowing it was being recorded, and who were often already paid for that collaboration. As owners of the material, shouldn't they be protected by their copyright ownership? What good is copyright ownership if they cannot use the material without fear of being sued in state court by persons wanting money for a recording they previously agreed to?

This issue was squarely presented in a recent decision out of the Eighth Circuit Court of Appeals in St. Louis. In Ray v. ESPN, 2015 WL 1810486 (8th Cir. Apr. 22, 2015), the Court held that a state law misappropriation/right of publicity claim based on the mere act of re-telecasting previously recorded wrestling performances fell squarely within the scope of copyright. Rejecting plaintiff Steve "Wild Thing" Ray's efforts to distinguish a copyright holder's rights with those of an individual in his name and likeness, the Court held that Ray's "attempts . . . to recast his claims to evade copyright preemption [were] unavailing" and affirmed the dismissal of his lawsuit.

Round 1 (The Match Begins)

Steve "Wild Thing" Ray began his professional wrestling career in the early 1990s with the Universal Wrestling Foundation (UWF). His long blond hair and muscular build made him an attractive performer for such events. With his agreement, Ray's wrestling performances were telecast live and recorded for future use and display. Yet, when ESPN obtained the recordings of Ray's wrestling matches and re-telecast them throughout North America and Europe, Ray sued ESPN in Missouri state court, asserting Missouri common law claims of (1) invasion of privacy, (2) misappropriation of name, (3) infringement of the right of publicity, and (4) interference with prospective economic advantage.

Ray did not claim he had any copyright interest or other ownership rights in the recordings, but argued that he should prevail because he had never consented to ESPN's use of the recordings containing his likeness and performances, and he claimed ESPN's re-telecast of the recordings interfered with his post-wrestling livelihood of promoting healthcare products and weightlifting supplements.

Round 2 (ESPN's Takedown)

ESPN removed the case to federal court and then moved to dismiss on the basis of preemption under the Federal Copyright Act and failure to state a claim. It argued that Ray's state law claims (two of which, invasion of privacy and misappropriation of name, are actually the same tort under Missouri law) were all based on ESPN's single act of re-telecasting a recorded performance of Ray's previous wrestling matches—which, it argued, falls squarely within the scope of the Copyright Act. Under well-established Eighth Circuit Court of Appeals precedent, and the law everywhere else, such claims are preempted by the Federal Copyright Act 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 (8th Cir. 1993).

Ray responded by arguing that it was not the video recording, but his "likeness" that was the "focal point of this case." Because Ray's likeness was not an "original work[] of authorship fixed in any tangible medium of expression," he argued, it did not fall within the subject matter of the Copyright Act. Nor, he continued, were the rights protected by misappropriation of name or the right of publicity equivalent to any of the exclusive rights within the scope of the Copyright Act. Ray claimed that his state law causes of action sought to protect an individual's identity and his right to control the commercial use of his identity, respectively, and therefore were different from copyright.

Round 3 (ESPN Is Declared the Winner)

The District Court for the Western District of Missouri and the Eighth Circuit Court of Appeals each rejected Ray's claims. District Court Judge, Hon. Scott O. Judge Wright, granted ESPN's motion to dismiss, holding that:

[Ray'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 . . . [Ray] has not alleged that his name and likeness were used to promote or endorse any type of commercial product. Rather, [Ray] complains about ESPN airing wrestling performances that have been captured on video. Thus, [Ray's] complaints are based solely on ESPN airing video recordings depicting him in a "work of authorship," which is plainly encompassed by copyright law.

Ray v. ESPN, 2014 WL 2766187 *5 (W.D. Mo. 2014).

On Ray's appeal, Judges Smith, Benton and Shepherd, writing per curiam for the Eighth Circuit, agreed with Judge Wright. In analyzing the first element of copyright preemption—whether the work at issue is within the subject matter of copyright—the Panel found that "[t]he filming of Ray's wrestling performances clearly generated an original work of authorship, that was "'fixed' in a tangible medium of expression" and could be "perceived, reproduced, or otherwise communicated," thus bringing the films within the subject matter of copyright law. Because Ray's likeness simply could not be detached from his copyrighted, filmed wrestling performances, he could not escape the "subject matter" prong of copyright preemption.

In regards to the second "equivalency" prong of copyright preemption, the Court again noted that "the crux of Ray's case is that ESPN re-telecast Ray's filmed performances." Ray's state law rights, therefore, were allegedly infringed by the mere act of reproduction, performance, distribution, or display—the equivalent of a copyright owner's right to distribute copies of copyrighted work to the public.

The Court rejected the "factually distinguishable or inapposite authority" cited by Ray in an attempt to "recast his claims to evade copyright preemption." For instance, Ray relied on the holding in Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), a case that involved, among other things, a retail clothier's use of a photograph of the plaintiff surfer taken during a 1965 surfing event in Hawaii. The photographer, who owned the copyright in the photograph, sold the rights to the clothier, which used it in advertisements to promote its products. The court upheld the surfer's right of publicity claim and rejected a copyright preemption claim because the photograph was used in a manner to which the surfer never consented—for advertisements implying his endorsement of the clothier's products. Ray's reliance on cases such as Abercrombie was unavailing because Ray's state-law claims were based solely on ESPN's rebroadcast of a copyrighted film exactly as intended and not for some collateral purpose.

Because Ray did not and could not allege that ESPN had unlawfully acquired the recorded performances and could not assert any copyright claim himself in those recorded performances, and because he could not show that the recordings were used in a manner contrary to their originally intended use, ESPN had every lawful right to re-telecast them, and the dismissal of Ray's case was affirmed.

ESPN was represented by Joseph E. Martineau, a member of the Firm, and Sarah A. Milunski, an associate of the Firm, in both the trial and appellate courts.

Throughout our Firm's history, Lewis Rice attorneys have made excellence the foundation of our practice. Founded in 1909, more than a century of service has given us the experience, resources and tools to serve our clients' dynamic needs. Our diverse team of more than 150 attorneys provides counsel and solutions for the challenges facing local, regional and national businesses, as well as individuals and families. Lewis Rice maintains offices in downtown St. Louis, suburban Town & Country and Washington, Missouri and Edwardsville, Illinois. We also have offices in downtown Kansas City, Missouri and suburban Overland Park, Kansas.