Copyright Preemption Nixed in Models’ Privacy and Misappropriation Case

Professional models Amber Coyle and Jasmin Dustin were paid to participate in a photo and video shoot by Michael O’Rourke and O’Rourke Holdings, LLC.  Coyle and Dustin later sued O’Rourke and O’Rourke Holdings (O’Rourke) for violating the oral and written agreements the parties entered into at the time of the photo and video shoot.  Coyle and Dustin brought their suit in Los Angeles Superior Court.  They alleged the California state law claims of invasion of privacy and misappropriation of likeness against O’Rourke.

O’Rourke removed the case from state court to federal court, then immediately moved to dismiss the case.  O’Rourke claimed that Coyle’s and Dustin’s state law claims were preempted by the Copyright Act, which is federal law.  Preemption means that the federal law displaces the state law.  Coyle’s and Dustin’s complaint did not mention anything about copyright.

Copyright Act provides that

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. 301(a).

O’Rourke argued that Coyle’s and Dustin’s state law claims arose from the unauthorized reproduction and dissemination of copyrighted photos and that he owned the copyrights in the photos.  O’Rourke argued that the case was a copyright dispute, not a state law dispute and that the state law claims were preempted by copyright law and must be dismissed. 

The district court distinguished between complete preemption and defensive preemption.  Complete preemption is a jurisdictional issue and requires that the case be heard in federal court.  Defensive preemption is a substantive issue and does not enable removal.  Defendants can present a federal preemption defense to a state law claim in a state court.

The Ninth Circuit has not addressed whether the Copyright Act effects complete preemption. Other Circuit Courts have held that it may.  Several district courts have held that the Copyright Act may completely preempt certain claims under California law.  Other district courts have recognized that claims arising under California law could be completely preempted by the Copyright Act under certain circumstances, but declined to find that it applied under the circumstances presented.

While recognizing that complete and defensive preemption are distinct doctrines, these courts have looked to the two-part test applied by the Ninth Circuit for defensive preemption of copyright claims for guidance as to whether a particular claim is completely preempted for jurisdictional purposes. Those steps are: first, the court must examine whether the subject matter of the state law claim falls within the subject matter of copyright; second, if it does, the court must examine whether the rights asserted under state law are equivalent those protected by federal copyright law.

(Opinion pdf pages 6-7).

The district court ruled that O’Rourke did not carry his burden to show that the case should be removed to federal court. 

The Complaint alleges an injury to Plaintiffs’ rights in their images and likenesses; it does not use the word ‘copyright.’ A person’s likeness is not a work of authorship within the meaning of 17 U.S.C. § 102 (the Copyright Act), even if it is embodied in a copyrightable photograph. The cases cited by the Defendants are distinguishable because they concerned, respectively, a dramatic performance, a sound recording, and a dramatic performance, all of which are ‘works of authorship’ under 17 U.S.C. § 102.  Defendants argue that Plaintiffs are analogous to actors and that their work at the photo shoot should be treated like dramatic performances.  Although the Complaint does mention that a video shoot took place, the allegations do not require the conclusion that Plaintiffs, who claim that they are models and not actresses or other performers, have engaged in artful pleading to conceal that the photographs and video related to a dramatic performance. That is something that has been described as a story—a thread of consecutively related events—either narrated or presented by dialogue or action or both.  Thus, the facial subject matter of the Complaint is personae, which are not copyrightable, rather than dramatic performances, which are.

(Opinion pdf page 11).

This case is Coyle v. ORourke, No. LA CV14-07121 JAK (FFMx), U.S. District Court, Central District of California.

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