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Preemption of State-Law Tort Claims by the Copyright Act

Addressing the issue of the preemption of state-law claims by the Copyright Act, the U.S. Court of Appeals for the Eighth Circuit upheld the district court’s dismissal of several state-law tort claims because the claims are based solely on video recordings depicting the plaintiff in a “work of authorship,” which is plainly encompassed by copyright law. Ray v. ESPN, Case No. 14-2117 (8th Cir., Apr. 22, 2015) (per curiam).

Steve “Wild Thing” Ray brought suit against ESPN, asserting state-law tort claims for ESPN’s re-telecast of his wrestling performances. Ray alleged that although he had an agreement with the Universal Wrestling Federation that films of his matches would be “sold and used,” ESPN did not have his “consent to use [his] identity, likeness, name, nick name or personality to depict him in any way.” Although not alleging that ESPN obtained the films unlawfully, Ray asserted four claims under Missouri state law: (1) invasion of privacy, (2) misappropriation of name, (3) infringement of the right of publicity and (4) interference with prospective economic advantage. ESPN moved under F.R. Civ. Pro. 12(b)(6) to dismiss the case on the grounds that the Copyright Act preempts Ray’s claims. After the district court found preemption, Ray appealed.

The Eighth Circuit, citing National Car Rental System v. Computer Associates, adopted the following test: the Copyright Act preempts state law claims 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 of the Copyright Act. With respect to the first prong of this test, the Court found that the subject films are clearly within the subject matter of copyright law because the filming of Ray’s wrestling performances generated an original work of authorship under § 102(a) that was “fixed in a tangible medium of expression” and could be “perceived, reproduced or otherwise communicated” under § 101. The Court found that ESPN did not use Ray’s likeness or name in an advertisement without his permission to promote its commercial products, and agreed with the district court that Ray’s “likeness could not be detached from the copyrighted performances that were contained in the films.” 

Analyzing the second prong of the test, the court found that because, consistent with Ray’s allegations, state-law rights have been “infringed by the mere act of reproduction, performance, distribution or display” of his performances, his state-law rights are equivalent to the exclusive rights within the general scope of the copyright right. 

Thus, finding both elements of the adopted test met, the Eighth Circuit affirmed the district court’s dismissal of Ray’s state-law claims as preempted under the Copyright Act.

© 2020 McDermott Will & EmeryNational Law Review, Volume V, Number 148


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