Ninth Circuit finds publicity claim preempted by Copyright Act and grants infringement standing to performer as company’s sole employee: Jules Jordan v. 144942 Canada Inc. (Aug. 16, 2010)

Gasper, an adult movie actor, was the president and sole shareholder of Jules Jordan Video (JJV), the creator of the videos in which Gasper appeared. Gasper and JJV filed a copyright action against defendants, alleging that they had copied and sold copyrighted adult DVDs owned by JJV or Gasper and featuring Gasper's performances. The jury returned a verdict for plaintiffs on both issues. However, the district court granted defendants' motion for judgment as a matter of law in part, rejecting defendants' claim that Gasper's right of publicity claim was preempted by copyright law but concluding that neither Gasper nor JJV had standing to assert the copyright claims. All parties appealed.

Issue #1 - Was Gasper's right of publicity claim under Cal Civ Code § 3344 preempted by the Copyright Act?

In Laws v. Sony Music Entm't, Inc., 448 F.3d 1134 (9th Cir. Cal. 2006), plaintiff argued that the subject matter of a copyright claim and a right of publicity claim were substantively different because the copyright claim protects ownership rights to a work of art, while a right of publicity claim concerns the right to protect one's persona and likeness. Thus, plaintiff contended (unsuccessfully) that her right of publicity claim was based on an "unauthorized duplication of her vocal performance," not the duplication of the master recording itself.

Gasper made the same contention, arguing that the defendants had misappropriated his name and "persona," in addition to his "dramatic performance."

The Ninth Circuit rejected this contention, citing Laws for the following:

Although California law recognizes an ascertainable interest in the publicity associated with one's voice, we think it is clear that federal copyright law preempts a claim alleging misappropriation of one's voice when the entirety of the allegedly misappropriated vocal performance is contained within a copyrighted medium.

The district court held that because defendants had no legal right to distribute the DVDs, defendants did not have federal rights which could preempt plaintiffs' state law rights. Thus, the state law claims were not preempted by federal copyright law. The district court narrowly read Fleet v. CBS, 50 Cal. App. 4th 1911 (Cal. App. 2d Dist. 1996) and relied on Knb Enters. v. Matthews, 78 Cal. App. 4th 362 (Cal. App. 2d Dist. 2000), the latter case construing Fleet narrowly and holding that the right of publicity is preempted by the Copyright Act only when the distribution is made by the exclusive copyright holder. The Ninth Circuit rejected the district court's narrow reading of Fleet.

Issue #2 - Did Gasper/JJV lack standing?

The district court held that because Gasper was employed by JJV, the motion picture works were "works for hire" under the Copyright Act, 17 USCS § 101. Therefore, JJV, not Gasper, was the author of the works and Gasper lacked standing. The district court rejected as "concocted at trial" Gasper's testimony that he always intended that his "creative work" be kept separate from his work for JJV and that he would have ownership of the copyrights. The district court also held that JJV lacked standing because the registration was invalid.

In examining JJV's authorship, the Ninth Circuit noted that the films could not be considered works for hire under § 101(2) because there was no written instrument. However, Gasper was an employee of JJV, at least for some purposes, leaving the question of whether his "creative work" was within the scope of his employment under § 101(1). In reversing, the Ninth Circuit held that:

The problem with the district court's analysis is that JJV was a one-man shop. Gasper was the sole officer, director, and shareholder of JJV, exercised complete control over it, and made all decisions concerning JJV and production of the films. It was all Gasper all the time. JJV as employer and Gasper as employee could certainly agree as to the scope of the employee's employment, and could agree that Gasper should retain all copyrights.  Since JJV was Gasper, JJV intended whatever Gasper intended, and if Gasper intended that his creative work be outside the scope of his employment with JJV, there was no one to disagree.

Perhaps more importantly, even if the films were works for hire, the district court was correct that Gasper simply made a "mistake in listing himself as the author" on the copyright registration forms. That mistake does not constitute a basis to invalidate the copyright. " '[I]nadvertent mistakes on registration certificates do not invalidate a copyright and thus do not bar infringement actions, unless . . . the alleged infringer has relied to its detriment on the mistake, or the claimant intended to defraud the Copyright Office by making the misstatement.' "

(citations omitted)

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