Designer Skin LLC v. S & L Vitamins, Inc., et al.
KNB Enterprises v. Matthews
78 Cal. App. 4th 362 (Cal. App., 2d Dist., Feb. 17, 2000)
The California Court of Appeals holds that a right of publicity claim asserted under California Civil Code Section 3344 seeking to stop an unauthorized third party from using photographs containing an individual's likeness is not preempted by federal copyright law, provided the claim is asserted against a party other than the holder of the copyright in the photograph.
Plaintiff KNB Enterprises ("KNB") is the holder of the copyright in various erotic photographs. These photos are of individuals who are neither famous nor well-known. KNB also received assignments from the models in the photographs of their rights under Section 3344. Without authorization, defendant copied and displayed on its web site over 400 photographs in which plaintiff held a copyright. Defendant charges its customers a monthly fee to view the pictures on its site, including those at issue.
Plaintiff commenced suit in California state court, charging that defendant's conduct violated the models' rights under section 3344 of the California Civil Code. This statute, among other things, prohibits a party from "use[ing] another's name, voice, signature, photograph or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent ...". Defendant moved to dismiss this suit on the grounds that the claims asserted therein were preempted by federal copyright law. The trial court agreed, and dismissed plaintiff's suit. On appeal, the Court of Appeals reversed, and reinstated plaintiff's claims.
According to the court, "for preemption to occur under the [Copyright] Act, two conditions must be met: first, the subject of the claim must be a work fixed in a tangible medium of expression and come within the subject matter or scope of copyright protection as described in sections 102 and 103 of 17 United States Code, and second, the right asserted under state law must be equivalent to the exclusive rights contained in section 106 [of the Copyright Act]."
Defendant argued that the models' statutory 3344 claims are indistinguishable from the copyright infringement claims arising out of the unauthorized use of the photographs at issue. Each involves the same, and only the same wrongful conduct, the unauthorized use of plaintiff's photos. Defendant further argued, and the court conceded, that the photographs in question could be copyrighted, and that the unauthorized display of those photos would constitute an infringement of copyright.
Nonetheless, the Court of Appeals held that the models' section 3344 claims were not preempted by the Copyright Act. In reaching this conclusion, the court relied heavily on its determination that "a human likeness in not copyrightable...". As a result, the court determined that neither of the prerequisites for preemption had been met. Said the court:
We conclude that neither condition has been met in this case. First, the subjects of the claims are the models' likenesses, which are not copyrightable even though "embodied in a copyrightable work such as a photograph. Second, the right asserted under the state statute, the right of publicity, does not fall within the subject matter of copyright. Accordingly, we conclude the models' section 3344 claims are not preempted by federal copyright law.
The court did state, however, that the result would be different if defendant held the copyright in the photographs in question, and was being sued by those who appeared in the photographs under section 3344. Said the court:
In our view, a section 3344 claim is preempted under Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (Cal. App., 1996) where an actor or model with no copyright interest in the work seeks to prevent the exclusive copyright holder from displaying the copyrighted work.