The California Court of Appeal held earlier this month that certain right of publicity claims are freely assignable, and that the Copyright Act does not preempt a right of publicity claim where the defendant has no legal right to publish the copyrighted work. The decision, Timed Out v. Youabian, 2014 Cal. App. LEXIS 830 (Cal. App. Ct. Sept. 12, 2014), will encourage right of publicity lawsuits and increase the costs associated with rights clearances.

The defendants in Timed Out, cosmetic surgeon Kambiz Youabian and his company Youabian, Inc., provide cosmetic medical services in the greater Los Angeles area. To advertise, defendants displayed photographs of two models on their website. After learning about this, the models assigned their misappropriation claims to Timed Out, LLC, a company “specializ[ing] in protection of personal image rights.” Plaintiff sued defendants for statutory and common law misappropriation of likeness. Defendants moved for judgment on the pleadings, arguing (1) plaintiff lacked standing to assert the models’ rights of publicity because such rights are personal and not assignable, and (2) the Copyright Act preempted plaintiff’s claims. The trial court granted the motion. The California Court of Appeal for the Second Appellate District reversed.

Assignability of Right of Publicity Claims
The appellate court determined that the right of publicity is freely assignable during the owner’s lifetime, and that consistent with the “broad rule of assignability” in Civil Code §§ 953 and 954,¹ right of publicity claims involving purely pecuniary interests also are assignable. The appellate court observed that the trial court’s contrary finding apparently was based on its misapprehension of the California Supreme Court’s decision in Lugosi v. Universal Pictures, 25 Cal. 3d 813 (1979).

In Lugosi, the heirs of Bella Lugosi sued Universal Pictures for common law misappropriation, arising from the studio’s use of the actor’s name and likeness in merchandising. Lugosi never assigned his publicity rights to his heirs. He did, however, assign his right of publicity to Universal Pictures to promote the classic horror film Dracula. His heirs claimed the assignment was limited and did not include the right to use Lugosi’s persona in merchandising unrelated to that film. In concluding the heirs lacked standing, the California Supreme Court explained that, while the right of publicity is assignable, it is a “personal” right that only can be assigned during the owner’s lifetime.

In the view of the appellate court, the trial court in Timed Out apparently mistook the Lugosi Court’s characterization of the right of publicity as “personal” to mean the right constitutes a personal tort that is not assignable. However, as the appellate court clarified, in describing the right as “personal,” the Lugosi Court was not addressing whether the right can be assigned; it was addressing who can assign the right.

The appellate court thus found that the models’ claims for misappropriation of likeness were assignable. Emphasizing California’s basic policy favoring assignability, the court explained that the exception to that policy “is confined to wrongs done to the person, the reputation, of the feelings of the injured party, and to contracts of a purely personal nature, like promises of marriage.” In contrast, “choses in action arising out of an obligation or breach of contract [and] those arising out of the violation of a right of property or a wrong involving injury to personal or real property” are assignable. Since the plaintiff sought only to recover “pecuniary damages for defendants’ alleged commercial misappropriation of the models’ images[,]” and did not seek to recover for emotional distress, hurt feelings, or reputational injury, “the broad rule of assignability of things in action applie[d].”

Copyright Preemption
The appellate court also concluded that the Copyright Act did not preempt plaintiff’s misappropriation claims because the claims were not based on publication of the photographs. “Rather, it is defendants’ use of the models’ likenesses pictured in the photographs to promote defendants’ business that constitutes the alleged misappropriation.” Quoting Nimmer’s treatise on copyright law, the appellate court noted:

The work that is the subject of the right of publicity is the persona, i.e., the name and likeness of a celebrity or other individual. A persona can hardly be said to constitute a writing of an author within the meaning of the Copyright Clause of the Constitution. A fortiori, it is not a work of authorship under the Act. Such name and likeness do not become a work of authorship simply because they are embodied in a copyrightable work such as a photograph.

The appellate court concluded that its holding was consistent with Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (1996), because “the court in Fleet found the misappropriation claim was preempted where the only misappropriation alleged was the film’s authorized distribution by the exclusive distributor.” According to the court, “Fleet stands for the solid proposition that performers in a copyrighted film may not use their statutory right of publicity to prevent the exclusive copyright holder from distributing the film.” Since there was no allegation in the Complaint in Timed Out that the defendants had a legal right to publish the copyrighted works, the appellate court held that Fleet did not apply and plaintiff’s claims were not preempted.

The Timed Out decision will likely increase the volume of right of publicity claims, as models, actors and other entertainers, for whom litigation would otherwise be prohibitively expensive or inconvenient, assign their publicity rights to companies in the business of filing such claims. Moreover, the Court’s view on preemption may call into question protections on which content creators have relied to evaluate the costs associated with creating works.

FOOTNOTE
1 Civil Code § 954 provides that “[a] thing in action, arising out of the violation of a right of property or out of an obligation, may be transferred by the owner.” Civil Code § 953 defines a “thing in action” as “a right to recover money or other personal property by a judicial proceeding.”