Knb Enterprises v. Matthews

• Decision Date: 17 February 2000
• Docket Number: No. B127931.,B127931.
• Citation: 92 Cal.Rptr.2d 713,78 Cal.App.4th 362
• Court: California Court of Appeals Court of Appeals
• Parties: KNB ENTERPRISES, Plaintiff and Appellant, v. Greg W. MATTHEWS, Defendant and Respondent.

92 Cal.Rptr.2d 713

78 Cal.App.4th 362

KNB ENTERPRISES, Plaintiff and Appellant, v. Greg W. MATTHEWS, Defendant and Respondent.

No. B127931.

Court of Appeal, Second District, Division 1.

February 17, 2000.

Review Denied June 14, 2000.

Jonathan P. Milberg and David L. Amkraut, Los Angeles, for Plaintiff and Appellant.

Lauren Ross, Burbank, for Defendant and Respondent.

ORTEGA, Acting P.J.

In Fleet v. CBS, Inc. (1996) 50 Cal. App.4th 1911, 58 Cal.Rptr.2d 645, the appellate court held that unpaid film actors' claims for misappropriation of name, photograph, or likeness under section 3344 of the Civil Code¹ were preempted by federal copyright law, where the only misappropriation alleged was the film's authorized distribution by the exclusive distributor, CBS. Here, we must decide whether photography models' misappropriation claims under section 3344 are preempted by federal copyright law, where the alleged exploitation was the un authorized display, for profit, of the models' erotic photographs on defendant's internet website featuring sexually explicit photographs.

Plaintiff KNB Enterprises owns the copyright to the photographs at issue in this case. Plaintiff concedes that any copyright infringement claim rests within the exclusive jurisdiction of the federal courts. (17 U.S.C. § 301; Young v. J.M. Hickerson, Inc. (1957) 9 Misc.2d 932 [professional photographer's suit for common law appropriation based on the unauthorized use of her copyrighted work was held to be preempted by federal copyright law].) Rather than pursue a federal copyright infringement action, however, plaintiff seeks section 3344 damages for the commercial appropriation of the models' photographs caused by their unauthorized commercial display on defendant Greg W. Matthew's website, Justpics. The models' section 3344 rights that plaintiff asserts in this action were obtained by contractual assignment.²

We conclude that because a human likeness is not copyrightable, even if captured in a copyrighted photograph, the models' section 3344 claims against the unauthorized publisher of their photographs are not the equivalent of a copyright infringement claim and are not preempted by federal copyright law. Accordingly, we reverse the summary judgment for defendant and remand for further proceedings.

BACKGROUND

For purposes of their cross-motions for summary judgment only, the parties stipulated to the following facts.

There are 417 erotic photographs at issue. The photographs depict 452 models, all of whom have assigned their section 3344 rights to plaintiff.³ Plaintiff owns the copyright to all the photographs.

Plaintiff displays erotic photographs on its own website. To promote its website, plaintiff intermittently posts its copyrighted photographs to certain Usenet newsgroups.⁴ By posting its photographs on the Usenet, plaintiff is not placing them in the public domain or permitting their unauthorized commercial use, display, or publication.

Defendant uses a software program to identify and copy sexually explicit photographs posted on the Usenet. Using this software, defendant, over a period of time, copied and displayed the models' photographs, without plaintiffs permission, on defendant's commercial website, Justpics. Justpics is not a newsgroup or bulletin board system. Justpics charges its customers a monthly membership fee to view the erotic photographs retrieved by Justpics from the Usenet. The models' photographs were displayed on Justpics in their original state, but without plaintiffs accompanying text, captions, and headers.

Defendant concedes that Justpics' unauthorized display of the models' photographs is not protected by any privilege afforded to news reporting or commentary on matters of public interest. None of the models depicted in the photographs is a known celebrity. Similarly, none of the photographers is recognized "as a master of the genre."

Plaintiff concedes that defendant did not use the models' photographs in a manner that implied the existence of a commercial endorsement of defendant's actions: "Neither the models, photographers, nor (Plaintiff) KNB Enterprises has been used by defendants as a `spokesman' or presented as endorsing the actions of defendants in any way."

DISCUSSION

The right to prevent others from appropriating one's photograph for commercial gain has evolved from the common law right of privacy. The "four distinct torts identified by Dean Prosser and grouped under the privacy rubric are: (1) intrusion upon the plaintiffs seclusion or solitude, or into his private affairs; (2) public disclosure of embarrassing private facts about the plaintiff; (3) publicity which places the plaintiff in a false light in the public eye; and (4) appropriation, for the defendant's advantage, of the plaintiffs name or likeness. [Citations.]" (Eastwood v. Superior Court (1983) 149 Cal. App.3d 409, 416, 198 Cal.Rptr. 342, fn. omitted.) This action concerns the fourth category, appropriation for the defendant's advantage of the models' photographs, which is also referred to as the right of publicity. (Wendt v. Host Intern., Inc. (9th Cir.1997) 125 F.3d 806, 811.)

The right of publicity has come to be recognized as distinct from the right of privacy. In the commercial arena, celebrity endorsements are often considered a valuable marketing tool. What may have originated as a concern for the right to be left alone has become a tool to control the commercial use and, thus, protect the economic value of one's name, voice, signature, photograph, or likeness. In 1971, California enacted section 3344, a commercial appropriation statute which complements the common law tort of appropriation. Section 3344, subdivision (a) provides in relevant part: "Any person who knowingly uses 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 ... shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages...."⁵

Although the unauthorized appropriation of an obscure plaintiffs name, voice, signature, photograph, or likeness would not inflict as great an economic injury as would be suffered by a celebrity plaintiff, California's appropriation statute is not limited to celebrity plaintiffs. Section 3344 provides for minimum damages of $750, even if no actual damages are proven. In discussing a similar Nevada statute, the Nevada Supreme Court noted that the legislative purpose for providing a minimum recovery for non-celebrities is "to discourage such appropriation." (Hetter v. District Court (1994) 110 Nev. 513, 519, 874 P.2d 762, 765.)⁶

In this case, none of the models is a celebrity. Their anonymity, however, is allegedly a valuable asset in the marketing of erotic photographs. Plaintiff alleged in the complaint: "Although it is hard to measure how much the defendants profited by their acts, they profited in three ways. First, they got sales. The additional photos encouraged consumers to buy access to their sites — i.e., memberships — and also helped the defendants retain existing members. The photos were especially valuable because many of the models were new to modeling, and `new faces' are prized in the adult field and difficult to find. [¶] ... Second, the defendants saved money. Their copying — rather than creation or purchase — of photos, saved the costs of scouting for and casting models, photographer fees, model fees, film and processing, studios, photo scanning and digitizing, and other direct and incidental expenses. [¶] ... Third, the defendants saved time — by substituting a few moments of copying for what could have been days or weeks of work in hiring photographers, casting models, processing and scanning photos, and other activities."

The issue we face is whether the non-celebrity models' section 3344 claims, which plaintiff asserts by right of assignment, are preempted by federal copyright law. "California law concerning right to publicity, as any state statute or law, is subject to preemption under the supremacy clause of the United States Constitution if it `actually conflicts with a valid federal statute' or `"`stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.'"' (Edgar v. MITE Corp. (1982) 457 U.S. 624, 631 [102 S.Ct. 2629, 73 L.Ed.2d 269]) In addition, `when acting within constitutional limits, Congress is empowered to pre-empt state law by so stating in express terms. [Citation.]' (California Federal S. & L. Assn. v. Guerra (1987) 479 U.S. 272, 280 [107 S.Ct. 683, 93 L.Ed.2d 613]) 17 United States Code section 301, part of the 1976 Copyright Act ... expressly prohibits states from legislating in the area of copyright law. It provides: `On and after January 1, 1978, all legal or equitable rights that are the 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.' [¶] Thus, for preemption to occur under the Act, two conditions...