Downing v. Abercrombie: Right of Publicity

The Ninth Circuit revived surfers' misappropriation claims over a catalog photo, holding a likeness is not preempted by copyright in the image.

In Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), the United States Court of Appeals for the Ninth Circuit drew a line that trips up businesses to this day: owning the right to a photograph is not the same as owning the right to the people depicted in it. Abercrombie & Fitch built the surf-themed section of its Spring 1999 catalog around a photograph of a group of champion surfers taken at the 1965 Makaha International Surf Championship in Hawaii. The retailer had bought the photograph from the surf photographer who took it. It printed the surfers’ names with the picture and sold T-shirts identical to those the men wore in it. What it did not have was the surfers’ consent to use their identities to sell clothes. They sued for commercial misappropriation and related claims. The district court granted summary judgment for Abercrombie on copyright preemption and First Amendment grounds. The Ninth Circuit reversed, holding that a likeness is not a work of authorship, that the publicity claims were not preempted, and that no First Amendment bar defeated them at summary judgment.

At a glance

Case: Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001).
Decided: September 13, 2001, reversing summary judgment for Abercrombie and remanding for trial.
Holding: The surfers’ California commercial-misappropriation claims were not preempted by the Copyright Act, because a person’s identity is not a copyrightable work of authorship, and neither those claims nor the Lanham Act false-endorsement claim was barred by the First Amendment on this record, so the claims could proceed. The court agreed with the district court on only one point, that the evidence did not support the defamation claim, and it vacated the attorneys’ fee award to Abercrombie.
Significance: A leading authority separating copyright in a photograph from the distinct consent needed to use the identifiable people in it for commercial promotion.

The preemption question and why it failed

Section 301 of the Copyright Act preempts state-law claims that are equivalent to copyright and that concern subject matter within the scope of copyright, namely original works of authorship fixed in a tangible medium. Abercrombie’s core defense invoked this provision. It reasoned that the surfers were complaining about the use of a photograph, that the photograph was a copyrighted work, and that a state right-of-publicity claim over the use of that work was therefore preempted.

The Ninth Circuit rejected the syllogism at its second step. The subject matter of a right-of-publicity claim is not the photograph but the plaintiff’s persona: his name, likeness, and identity. A human being’s identity is not an original work of authorship fixed in a tangible medium of expression. As the court put it, the surfers were not suing over the reproduction of a copyrighted image as such; they were suing over the commercial exploitation of their identities, which the photograph merely happened to capture. Because the state claim protected a right qualitatively different from the reproduction and display rights that copyright confers, it fell outside the subject matter of copyright and was not preempted. The permission Abercrombie held from the photographer or copyright owner went to the image, not to the men.

Two rights, two owners

The heart of Downing is the recognition that a single photograph can implicate two separate legal interests held by different people. The photographer, or whoever owns the copyright, controls reproduction, distribution, and display of the image as a creative work. The identifiable individuals in the image control the commercial use of their identities. These rights coexist and do not collapse into one another. A licensee who acquires the copyright acquires the freedom to print the picture, but not the freedom to press the people in it into the service of selling goods.

That distinction has enormous practical force. Advertising, catalogs, packaging, and merchandise routinely draw on stock and archival photographs. Downing teaches that clearing the copyright is only half the diligence. If recognizable people appear in the image and the use is commercial, the user needs releases from those people too. Abercrombie’s mistake was to treat permission to reproduce the photograph as permission to build a promotional campaign around the surfers themselves, complete with their names and replicas of their clothing.

The First Amendment and the commercial character of the use

Abercrombie also argued that its catalog was protected expression. The court was unpersuaded on this record. The catalog was a vehicle for selling clothing, and the surfers’ images and names were deployed to lend the merchandise an aura of authentic surf culture. Where identity is used to promote and sell products, the commercial purpose weighs heavily against a First Amendment defense. The court declined to treat the catalog as the kind of expressive or newsworthy work that would immunize the use, at least at the summary-judgment stage, and it left the merits for trial.

The Lanham Act false-endorsement theory reinforced the point. Using the surfers’ names and images alongside branded merchandise could suggest that these well-known figures endorsed or were associated with Abercrombie’s line, a classic false-association concern under section 43(a). The court found genuine issues on that theory as well, so it too survived.

What the decision changed

Downing became a cornerstone citation for the proposition that copyright ownership of an image does not carry with it the right to exploit the identities within it. It clarified the preemption boundary in a way that protects the right of publicity as a distinct state interest, resistant to the argument that any claim touching a photograph is really a copyright claim in disguise. For plaintiffs, it kept the courthouse open to people whose images were commercialized without consent even when someone else held the copyright. For businesses, it hardened a rights-clearance rule that many still overlook.

The decision fits a broader pattern in which courts refuse to let one intellectual-property regime swallow another. Just as Downing keeps publicity separate from copyright, other cases keep trademark, publicity, and copyright in their respective lanes, insisting that acquiring rights in one does not dispense with the need to clear rights in another that the same use implicates.

Open questions

How recognizable must a person be? Downing involved named, well-known surfers. The opinion did not resolve how identifiable an incidental person in a photograph must be before a commercial use requires that individual’s consent.
Where is the newsworthiness line? The court found the catalog commercial, but the boundary between a protected editorial or historical use of an archival photo and an unprotected promotional use remains fact-dependent.
What of purely incidental or background appearances? The decision leaves open how the analysis applies to people who appear fleetingly or in the background of a licensed image used commercially.

Implications for creators and businesses

Clear both rights, not one. Licensing a photograph clears the copyright, but recognizable people in the image hold separate publicity rights. Commercial users need releases from those individuals as well.
Archival and stock images carry hidden exposure. Old photographs of identifiable people can support misappropriation claims decades later when reused in advertising, so a copyright license is not a safe harbor.
Naming subjects raises the stakes. Identifying the people in a promotional image, or replicating what they wore, strengthens both the misappropriation and false-endorsement theories against the advertiser.
Commercial purpose weakens the First Amendment defense. When identities are used to promote and sell products, courts are reluctant to treat the use as protected expression, so licensing is the reliable path.

Frequently asked questions

What did Abercrombie & Fitch do that led to the lawsuit? The Spring 1999 issue of the Abercrombie & Fitch Quarterly, titled “Spring Fever,” ran a surf-themed section that reprinted a 1965 photograph of championship surfers with their names written across the bottom, and advertised T-shirts called “Final Heat Tees” that were exactly like those the surfers wore in the picture. The surfers had not consented to the commercial use of their names and likenesses to promote Abercrombie’s clothing.

Why weren’t the surfers’ claims preempted by copyright? Abercrombie had permission to use the photograph itself, and argued the surfers’ claims were preempted because the image was a copyrighted work. The Ninth Circuit held that a person’s name and likeness are not a “work of authorship” fixed in a tangible medium, so a right-of-publicity claim protects an interest different in kind from copyright and is not preempted.

Does owning a photograph let you use the people in it commercially? No. Downing draws a sharp line between the copyright in a photograph, which controls reproduction of the image, and the separate right of the identifiable people in it to control commercial use of their identities. A company that licenses a photo still needs consent from recognizable individuals before using them to promote products.