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November 2012

Gordon & Rees Multi-Office Team Quickly Prevails in Intellectual Property Lawsuit

A team of lawyers including Jordan Altura (SF), Susan Meyer (SD), and Benni Amato (SD), successfully defended a lawsuit filed by two actresses in Contra Costa Superior Court against our client, a large consignment company which hired those actresses for a television commercial. 

The actresses alleged that our client failed to pay them for the rights to air the commercial after a certain date, thereby misappropriating their likeness in violation of California Civil Code § 3344. The actresses sought actual damages, statutory damages of $750 for each alleged unauthorized airing of the commercial, and attorneys fees. Our client maintained that the actresses were properly paid and not entitled to “holding fees” because the actresses were not required to turn down work from competitors. Further, the actresses’ claims were preempted by copyright law.

The Court agreed that the actresses’ misappropriation of likeness claim was preempted by copyright law, and sustained our demurrer, without leave to amend as to that claim. Copyright preemption occurs when (1) the subject of the claim is a work fixed in a tangible medium of expression and comes within the subject matter or scope of copyright protection, and (2) the right asserted under state law is the equivalent to the exclusive rights of a copyright holder, for example, the right to display the work publicly. The Court agreed that the actresses’ claim related to their performances, which were copyrightable, rather than their “likenesses,” which were not. The actresses also sought to prevent further public airing of the commercials, which constituted asserting an exclusive right of a copyright holder (though copyright registration or ownership is not necessary for preemption to occur). Therefore, the actresses’ misappropriation of likeness and related unfair competition claims were preempted by copyright law.

The Court precluded the actresses from amending the complaint as to the misappropriation of likeness claim, though it allowed the actresses a chance to amend the complaint—if appropriate—to add breach of contract and interference with contractual relationships claims. The actresses dropped the case.

This case is particularly noteworthy because our successful defense of the California Civil Code § 3344 claim, based on federal copyright preemption, entitled our client to attorneys' fees as the prevailing party on that claim. This leverage enabled our attorneys to force a dismissal of the action in its entirety, while also obtaining an agreement from the actresses allowing our client to continue using the commercial.

Jordan S. Altura
Susan B. Meyer