Intellectual Property Law

Copyright Act Preempts Overlapping Right of Publicity Claim

By Michael Atkins

Plaintiff Ashley Gasper is an adult video star who performs under the name Jules Jordan.

Mr. Gasper sued 1444942 Canada Inc., d/b/a Kaytel Video Distribution, and other defendants in the Central District of California for copyright infringement and for violating his right of publicity on the ground that defendants allegedly copied and sold 13 DVDs featuring his performances.

The jury found for Mr. Gasper on both issues, and the court rejected the defendants’ motion for judgment as a matter of law that the Copyright Act preempted Ms. Gasper’s right of publicity claim.

On appeal, the Ninth Circuit summarized Mr. Gasper’s right of publicity claim as the unauthorized reproduction of his performance on the DVDs.

“Gasper’s claim that the Kaytel defendants misappropriated his name and persona is based ntirely on the misappropriation of the DVDs and Gasper’s performance therein. Indeed, the complaint alleged that ‘Defendants have willfully and systematically infringed Plaintiffs’ copyrights and rights of publicity (directly and by assignment) by the repeated unauthorized reproduction, counterfeiting, and sale of such counterfeit copies of Plaintiffs’ copyrighted works to third parties.’ In the amended Pre-Trial Conference Order Gasper again listed the evidence in support of his right of publicity claim as ‘Mr. Gasper’s name, likeness, photograph and voice appear in the counterfeit Gasper Films without his authorization.’ Thus, throughout the litigation Gasper has claimed that the factual basis of his right of publicity claim was the unauthorized reproduction of his performance on the DVDs.”

When Mr. Gasper’s right of publicity claim is framed as overlapping with his copyright claim, the result seems obvious.

“In the instant case, we conclude that Gasper’s right of publicity claim falls within the subject matter of copyright, and that the rights he asserts are equivalent to the rights within the scope of §106 of the Copyright Act. The essence of Gasper’s claim is that the Kaytel defendants reproduced and distributed the DVDs without authorization. His claim is under the Copyright Act. Accordingly, we reverse the district court and vacate Gasper’s judgment against the Kaytel defendants for violation of his right of publicity under California law.”

The case cite is Jules Jordan Video, Inc. v. 144942 Canada Inc., __ F.3d __, 2010 WL 3211818, Nos. 08-55075 and 08-55126 (9th Cir. Aug. 16, 2010).

Full post as published by Seattle Trademark Lawyer on August 18, 2010 (boomark / email).