Fleet v. CBS, Inc.

• Decision Date: 26 November 1996
• Docket Number: No. B100377,B100377
• Citation: 58 Cal.Rptr.2d 645,50 Cal.App.4th 1911
• Parties: , 1997 Copr.L.Dec. P 27,592, 41 U.S.P.Q.2d 1749, 96 Cal. Daily Op. Serv. 8601, 96 Daily Journal D.A.R. 14,200 Stephan FLEET, a minor, etc., et al., Plaintiffs and Appellants, v. CBS, INC., et al., Defendants and Respondents.
• Court: California Court of Appeals Court of Appeals

Page 645

58 Cal.Rptr.2d 645

50 Cal.App.4th 1911, 1997 Copr.L.Dec. P 27,592,

41 U.S.P.Q.2d 1749, 96 Cal. Daily Op. Serv. 8601,

96 Daily Journal D.A.R. 14,200

Stephan FLEET, a minor, etc., et al., Plaintiffs and Appellants, v. CBS, INC., et al., Defendants and Respondents.

No. B100377.

Court of Appeal, Second District, Division 4, California.

Nov. 26, 1996.

Bigelow, Moore & Tyre, Franklin T. Bigelow, Jr., James S. Tyre and Anne Reid Oppermann, Pasadena, for Plaintiffs and Appellants.

Davis Wright Tremaine, Kelli L. Sager and Karen N. Frederiksen, Los Angeles, for Defendants and Respondents.

BARON, Associate Justice.

In this case we are asked to decide a very narrow issue: whether an actor may bring an action for misappropriation of his or her name, image, likeness, or identity under section 3344 of the Civil Code when the only alleged exploitation occurred through the distribution of the actor's performance in a motion picture. The trial court concluded that to the extent California law would permit such claim, it was preempted by federal copyright law. We agree with the trial court and affirm.

FACTUAL BACKGROUND

The crucial facts are not disputed. In 1985, Legend Productions ("Legend"), a partnership comprised of Robert Fleet and his wife, Alina Szpak-Fleet ("Szpak"), entered into a co-production agreement with certain Polish film entities to co-produce two motion pictures, one of which is the subject of this lawsuit. Legend, Robert Fleet, and Szpak subsequently transferred all of their right, title, and interest in the co-production agreement to White Dragon Productions, a California corporation formed to act as the production company for the movie. Robert Fleet and Szpak were the sole shareholders of White Dragon Productions. In July of 1985, Andrejez Krakowski and Lloyd E. Eisenhower II, acting as sales agents for White Dragon Productions, Robert Fleet, Szpak, and Legend entered into a distribution agreement with respondent CBS, Inc., which gave CBS the exclusive rights to distribute the motion picture then known as "White Dragon" in all media throughout the world, except in the former communist bloc countries. ¹ CBS paid $1.25 million for these rights.

The film commenced shooting on location in Poland in September 1985. Appellant Stephan Fleet is the son of Robert Fleet and Szpak. He and appellant Archie Lee Simpson appeared as actors in the film.

White Dragon Productions entered into separate agreements with one Tadeusz Bugaj to provide financing and with a company known as Performance Guarantees, Inc., to ensure that the film would be completed on time and on budget. In March of 1986, Performance Guarantees stepped in to complete the film and refused to pay the salaries owed to appellants. Litigation over the parties' rights and obligations under these agreements led to the issuance of a preliminary injunction in June of 1986 which, appellants contend, prevented them from communicating with CBS about the subject matter of the film until the injunction was dissolved in December of 1989. After the injunction was lifted, Robert Fleet wrote to CBS reasserting his and his wife's control of White Dragon Productions and asking for a copy of the film. Subsequently, in or about March of 1990, appellants informed CBS that since they had not been compensated for their appearances in the film, CBS did not have permission to utilize their names, pictures, or likenesses in conjunction with any exploitation of the film. CBS went ahead and released the film on videotape under the title "Legend of the White Horse" and, according to the complaint, included a picture of Stephan Fleet on the box.

PROCEEDINGS IN THE TRIAL COURT

Appellants brought a complaint against CBS, two of its divisions, and CBS/Fox Video, Inc. (collectively referred to hereafter as "CBS") in November of 1993. Insofar as appellants' claims are concerned, ² the complaint alleges that CBS was notified in March of 1990 that it was not authorized to use the performances of actors Stephan Fleet or Archie Simpson; that Performance Guarantees had breached the terms of the completion bond; that CBS had breached the terms of the distribution agreement; and that "CBS was not authorized to exploit or utilize the Motion Picture in any fashion until the problems and breaches were corrected." The complaint specifically stated that the reason CBS was not authorized to utilize the name, voice, photograph, likeness or performance of appellants in the motion picture was because they were not fully paid. Stephan Fleet further alleged that CBS failed to accord him the credit to which he was contractually entitled on videotape releases of the motion picture; that CBS made unauthorized use of his photograph and likeness on the packaging and advertising materials for the motion picture; and that CBS acquiesced in the re-dubbing of all his speaking parts without his permission.

Based on these allegations, the complaint contended that CBS violated section 3344 of the California Civil Code. Section 3344 makes it unlawful to "knowingly use[ ] 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, or, in the case of a minor, the prior consent of his parent or legal guardian...." The complaint also contained a claim for unfair business practices (Bus. & Prof.Code, § 17200 et seq.) based on the asserted violation of section 3344. Appellants, along with the other plaintiffs, sought an accounting and a constructive trust.

CBS filed a cross-complaint against Robert Fleet, Szpak, Legend, White Dragon Productions, Krakowski, Eisenhower, Performance Guarantees, and Lawrence Vanger alleging that to the extent CBS did not have the right CBS moved for summary judgment. In its separate statement of undisputed facts, CBS set forth the following fact which went undisputed by appellants: "CBS owns the copyright in the Motion Picture pursuant to federal copyright law." ³ The court granted the motion for summary adjudication as to the causes of action for violation of section 3344 on the ground that appellants' performances were within the scope of copyright protection in that they were "fixed in a tangible medium of expression" and further found that the rights asserted were equivalent to the exclusive rights of copyright. Thus, the court believed, appellants' claims met the two-pronged test for preemption by the federal copyright law. Because the grant of summary adjudication resolved all of the claims between appellants and CBS, they brought an appeal from the order entered.

to distribute the film, it was owed indemnification under its distribution agreement or was entitled to rescind the distribution agreement and obtain refund of the moneys paid thereunder, including interest.

DISCUSSION

I

Before we begin our analysis, we must emphasize that we are resolving at appellants' insistence only the very narrow issue outlined above. Appellants have repeatedly stressed that "[t]his is not a copyright infringement case" and that their claims are solely a matter of violation of section 3344, California's "right to publicity" statute. They assert no interest in the copyright for the motion picture or in any copyright which may cover the individual performances therein.

In addition, CBS contended, and persuaded the trial court, that appellants were employees of the production company and "voluntarily relinquished any copyright in the performances and screenplay since those works constituted 'works for hire' under Section 101 and 201 [of the 1976 Copyright Act]." ⁴ It is true that "[i]n the case of a work made for hire, the employer ... for whom the work was prepared is considered the author ..., and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright." (17 U.S.C. § 201(b).) However, the United States Supreme Court held in Community for Creative Non-Violence v. Reid (1989) 490 U.S. 730, 751, 109 S.Ct. 2166, 2178, 104 L.Ed.2d 811, that the question of whether a hired party is an employee for purposes of the 1976 Copyright Act is a question of fact resolved by consideration of the usual factors distinguishing employees from independent contractors, such as skill required, source of tools, location of work, method of payment, etc. If the hired party is an independent contractor, the work made for hire doctrine does not apply unless the work is "specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas" and "the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." (17 U.S.C. § 101.) CBS presented no evidence to suggest that appellants were employees of White Dragon Productions or to suggest that they signed an instrument as independent contractors stating that their performances should be considered work for hire. At the same time, appellants never contested CBS's allegation that they were employees of White Dragon Productions--no doubt because they asserted no claims under copyright law. Consequently, we do not decide whether an actor who performs in a motion picture is an employee of the producer or an independent contractor and, if the latter, whether the performance otherwise falls under the definition of "work made for hire" contained in section 101 of the federal law. Instead, we turn our attention to the question of whether the rights appellants claim under California's statute can co-exist with the federal copyright statute.

II

Under California law, an individual's right to publicity is...