Ana Maria Alberghetti et al v. Corbis Corporation

MEMORANDUM in Support of MOTION to Dismiss Plaintiffs Complaint Pursuant to Fed.R.Civ.P.12

C.D. Cal.September 25, 2009

FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) LAURENCE F. PULGRAM (CSB No. 115163) lpulgram@fenwick.com KATHRYN J. FRITZ (CSB No. 148200) kfritz@fenwick.com HENRY Z. CARBAJAL III (CSB No. 237951) hcarbajal@fenwick.com LESLIE KRAMER (CSB No. 253313) lkramer@fenwick.com FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104 Telephone: (415) 875-2300 Facsimile: (415) 281-1350 Attorneys for Defendant CORBIS CORPORATION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ANNA MARIA ALBERGHETTI, BONNIE POINTER, and JUDY TENUTA, on Behalf of Themselves and All Others Similarly Situated, Plaintiffs, v. CORBIS CORPORATION, Defendant. Case No. 09-CV-05735-SVW (CWx) DEFENDANT CORBIS CORPORATION’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FED. R. CIV. P. 12(B)(6) Judge: Hon. Stephen V. Wilson Date: October 26, 2009 Time: 1:30 p.m. Place: Courtroom No. 6 Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 1 of 27 Page ID #:163 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS i CASE NO. 09-CV-05735-SVW (CWx) INTRODUCTION ..................................................................................................... 1 FACTUAL BACKGROUND.................................................................................... 2 A. CORBIS’ COPYRIGHT LICENSING ACTIVITY .................. 2 B. PLAINTIFFS’ ALLEGATIONS OF WRONGFUL CONDUCT ................................................................................. 4 APPLICABLE LEGAL PRINCIPLES ..................................................................... 5 ARGUMENT............................................................................................................. 6 I. FEDERAL PREEMPTION .................................................................. 6 II. PLAINTIFFS’ CLAIMS ARE EXPRESSLY PREEMPTED BY THE COPYRIGHT ACT...................................................................... 7 A. Equivalence of the Plaintiffs’ Claims to Exclusive Copyrights................................................................................... 8 B. The Works at Issue Fall Within the Subject Matter of Copyright ..................................................................................12 III. PLAINTIFFS’ CLAIMS ARE ALSO BARRED BY THE DOCTRINE OF CONFLICT PREEMPTION WITH THE COPYRIGHT ACT.............................................................................14 A. The Copyright Holders’ Rights to License Copyrights are Axiomatic and Critical to the Copyright Scheme ....................15 B. Plaintiffs’ State Law Theories Would Prevent the Exercise of Copyrights in Photographs of Individuals.............16 IV. PLAINTIFFS’ ALLEGATIONS OF NON-ACTIONABLE INCIDENTAL USES ALSO FAIL TO STATE A CLAIM ..............19 V. PLAINTIFFS’ RESTITUTION/UNJUST ENRICHMENT ALLEGATIONS ALSO FAIL TO STATE A CLAIM UPON WHICH RELIEF MAY BE GRANTED............................................21 CONCLUSION........................................................................................................22 Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 2 of 27 Page ID #:164 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page(s) CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS ii CASE NO. 09-CV-05735-SVW (CWx) CASES Alfano v. NGHT, Inc., 623 F. Supp. 2d 355 (E.D.N.Y. 2009)................................................................21 Allison v. Vintage Sports Plaques, 136 F.3d 1443 (11th Cir. 1998) ....................................................................18, 21 Ashcroft v. Iqbal, ___ U.S. ___, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) ................................... 5 Balistreri v. Pacifica Police Dep’t, 901 F.2d 696 (9th Cir. 1988) ................................................................................ 5 Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663 (7th Cir. 1986) ........................................................................10, 11 Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007) ...............................5, 9 Branch v. Tunnell, 14 F.3d 449 (9th Cir. 1994) .................................................................................. 2 Brown v. ACMI Pop Div., 375 Ill. App. 3d 276, 873 N.E.2d 954 (2007) ....................................................18 Brown v. Ames, 201 F.3d 654 (5th Cir. 2001) ..............................................................................13 Butler v. Target Corp., 323 F. Supp. 2d 1052 (C.D. Cal. 2004)..............................................................11 Cher v. Forum Int’l, Ltd., 692 F.2d 634 (9th Cir. 1982) ..............................................................................20 Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 106 Cal. Rptr. 2d 126 (2001)...................................................12 Daboub v. Gibbons, 42 F.3d 285 (5th Cir. 1995) ......................................................................6, 14, 15 Del Madera Props. v. Rhodes & Gardner, Inc, 820 F.2d 973 (9th Cir. 1987) ..........................................................................7, 22 Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001) ........................................................................12, 14 Effects Assocs., Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) ..............................................................................15 Entous v. Viacom Int’l, Inc., 151 F. Supp. 2d 1150 (C.D. Cal. 2001)................................................................ 6 Fleet v. CBS, Inc., 50 Cal. App. 4th 1911, 58 Cal. Rptr. 2d 645 (2000) ..................................8, 9, 10 G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Servs., Inc., 958 F.2d 896 (9th Cir. 1992) ..............................................................................15 Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 3 of 27 Page ID #:165 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES (continued) Page(s) CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS iii CASE NO. 09-CV-05735-SVW (CWx) Galbraith v. County of Santa Clara, 307 F.3d 1119 (9th Cir. 2002) .............................................................................. 2 Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 114 Cal. Rptr. 2d 307 (2001) ..........................................21 Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896 F.2d 1542 (9th Cir. 1990) .............................................................................. 5 Hines v. Davidowitz, 312 U.S. 52, 61 S. Ct. 399, 85 L. Ed. 581 (1941) ..............................................15 Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001) ............................................................................19 Intri-Plex Techs., Inc. v. Crest Group, Inc., 499 F.3d 1048 (9th Cir. 2007) .............................................................................. 6 KNB Enters. v. Matthews, 78 Cal. App. 4th 362, 92 Cal. Rptr. 2d 713 (2000) ............................................10 Knievel v. ESPN, 393 F.3d 1068 (9th Cir. 2005) .............................................................................. 6 Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619 (6th Cir. 2000) ..............................................................................11 Laws v. Sony Music Entmt., Inc., 448 F.3d 1134 (9th Cir. 2006) .....................................................................passim McBride v. Boughton, 123 Cal. App. 4th 379, 20 Cal. Rptr. 3d 115 (2004) ..........................................22 Melchior v. New Line Prods., Inc., 106 Cal. App. 4th 779, 131 Cal. Rptr. 2d 347 (2003) ........................................22 Michaels v. Internet Entmt. Group, Inc., 5 F. Supp. 2d 823 (C.D. Cal. 1998)....................................................................11 Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) ..............................................................................12 Montana v. San Jose Mercury News, Inc., 34 Cal. App. 4th 790, 40 Cal. Rptr. 2d 639 (1995) ............................................20 New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992) ..............................................................................21 Orson, Inc. v. Miramax Film Corp., 189 F.3d 377 (3d Cir. 1999) ...............................................................................15 Page v. Something Weird Video, 960 F. Supp. 1438 (C.D. Cal. 1996).............................................................20, 21 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984) .....................................16 Toney v. L'Oreal U.S.A., Inc., 406 F.3d 905 (7th Cir. 2005) ..................................................................11, 12, 18 Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 4 of 27 Page ID #:166 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES (continued) Page(s) CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS iv CASE NO. 09-CV-05735-SVW (CWx) Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) ............................................................................12 Wendt v. Host Int’l, Inc., 125 F.3d 806 (9th Cir. 1997) ..............................................................................11 William O’Neil & Co. v. Validea.com, Inc., 202 F. Supp. 2d 1113 (C.D. Cal. 2002)..............................................................20 Worth v. Universal Pictures, Inc., 5 F. Supp. 2d 816 (C.D. Cal. 1997)...................................................................... 7 STATUTES 17 U.S.C. § 101........................................................................................................12 17 U.S.C. § 102.......................................................................................................... 8 17 U.S.C. § 106.................................................................................................passim 17 U.S.C. § 201........................................................................................................15 17 U.S.C. § 301.................................................................................................passim California Civil Code § 3344.....................................................................4, 8, 14, 19 RULES Federal Rule of Civil Procedure 12(b)(6)........................................................1, 5, 20 Federal Rule of Evidence 201 ................................................................................... 6 Federal Rule of Civil Procedure 8 ............................................................................. 5 OTHER AUTHORITIES 1 NIMMER, NIMMER ON COPYRIGHT § 1.01 (2009)....................................6, 7, 15, 22 U.S. Const., Art. I, § 8 .............................................................................................16 Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 5 of 27 Page ID #:167 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 1 MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF CORBIS CORPORATION’S MOTION TO DISMISS Defendant Corbis Corporation (“Corbis”) respectfully submits the following Memorandum of Points and Authorities in support of its Motion to Dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). INTRODUCTION The federal copyright law grants copyright owners specific exclusive rights: the right to reproduce, display, distribute, and transfer their copyrighted works. 17 U.S.C. § 106. Corbis is the licensor of millions of copyrighted photographic images and is engaged in the business of distributing them. It exercises its rights to license those copyrighted works through its website and displays those works in an online digital catalog to its prospective licensees. Corbis thus does what photographers have done since the invention of photography - show prospective licensees its photographic images and distribute copies to them pursuant to license - all in the direct exercise and exploitation of the rights granted to it under the Copyright Act. Plaintiffs, whose images appear in some of these photographs, contend in this suit that their rights of publicity under California common law and statute trump Corbis’ federal copyrights, vesting Plaintiffs (and any other human depicted in a photograph) with the power to stop Corbis from exercising its copyrights without their permission. Plaintiffs advance an unprecedented theory: that Corbis’ mere offering or sale of licenses constitutes a per se violation of Plaintiffs’ rights of publicity. As more fully set out below, however, federal law precludes Plaintiffs’ attempts to usurp the copyright holder’s rights in its copyrighted works. Plaintiffs’ theory is barred by the Copyright Act and the principles of the Supremacy Clause to the U.S. Constitution. Specifically, the Plaintiffs’ claims are both expressly preempted pursuant to Section 301 of the Copyright Act, and preempted by principles of conflict preemption due to their interference with accomplishment of Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 6 of 27 Page ID #:168 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 2 Congress’ copyright regime. FACTUAL BACKGROUND A. CORBIS’ COPYRIGHT LICENSING ACTIVITY Corbis Corporation is a leading visual media provider, offering a comprehensive selection of photography, illustration, footage, typefaces and rights clearance services to creative, media and marketing professionals through offices worldwide. See Complaint ¶¶ 8, 15 & 16; Corbis’ Request for Judicial Notice (RFJN), Ex. 3 (Overview), at 14 (filed simultaneously herewith). Corbis owns and licenses copyrights to various visual works to a wide variety of end users, including periodicals for editorial uses, book publishers, and other news media outlets including television or other video outlets. Complaint ¶ 20. In connection with its licensing activity, Corbis displays its copyrighted photographs on its website in the form of an online digital catalog, which permits potential licensees to search the millions of available images using search terms. Id. ¶¶ 17 & 19. A user of the website can view the catalog, select the copyrighted pictures or other works they would like to license and, after registering on the Corbis website, acquire a license to use the copyrights. Id. Corbis grants licensees a limited license to use the copyrights in its works. It makes clear on its website catalog and in its end-user license agreement that Corbis grants no other rights, including trademark or publicity rights, that may be implicated by the content of the photograph and the particular use contemplated by the licensee. Corbis makes explicit that clearance of rights other than those rights to the photographic image itself must be sought separately by the licensee. See RFJN, Ex. 2 (Site Usage Agreement).1 In pertinent part, the Site Usage Agreement 1 As discussed in detail in Corbis’ RFJN, the Court may take judicial notice of the content of Corbis’ website, which is alleged in the Complaint, and attached in part as Exhibits to the Complaint. Branch v. Tunnell, 14 F.3d 449, 453-54 (9th Cir. 1994), overruled in part on other grounds, Galbraith v. County of Santa Clara, 307 F.3d 1119 (9th Cir. 2002) (Court may take judicial notice of documents referred to in Complaint, the contents of which are readily ascertainable and not disputed). Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 7 of 27 Page ID #:169 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 3 states: You are solely responsible for determining whether your use of any Content requires the consent of any third party or the license of any additional rights, and you should not rely solely on the information provided by Corbis. If you are unsure whether additional third-party rights are needed for your use, you are responsible for consulting with competent rights management professionals or legal counsel. Id. at 8 (emphasis in original). Corbis’ online licensing terms and conditions for obtaining licenses to its copyrighted material similarly makes clear that the license granted is limited in scope and does not include rights of publicity: All Content may be subject to copyrights, trademarks, rights of publicity, moral rights, property rights or other rights belonging to another party. You are solely responsible for determining whether Your use of any Content requires the consent of any other party or the license of any additional rights, and You should not rely solely on the information provided by Corbis. You are solely responsible for obtaining any and all releases and clearances as may be required, including without limitation (a) rights from any representative guild, union, professional organization, or other authorized representative; and (b) if any music is included in the Content, master use, synchronization and performance licenses from the copyright proprietors of the applicable master recording(s) and composition(s) and such other persons, firms or associations, societies or corporations as may own or control the performing rights thereto. If You are unsure whether additional rights are needed for Your use, You are responsible for consulting with competent legal counsel. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 8 of 27 Page ID #:170 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 4 RFJN, Ex. 1 at 7 § 10 (Corbis Content License Agreement: Releases and Clearances) (emphasis added). While browsing photographs, users can enlarge thumbnail versions of the photograph to display additional information about the particular photograph, including date (if available), description and rights restrictions. For example, an enlarged picture notifies potential licensors whether certain releases have been obtained and whether additional clearances for use may be required. Id., Exs. 4-6 (enlarged photographs from Complaint Exhibits A-C displaying possible needs of licensee to obtain additional rights). B. PLAINTIFFS’ ALLEGATIONS OF WRONGFUL CONDUCT Plaintiffs contend that four alleged wrongful activities of Corbis give rise to three legal claims against Corbis. First, Plaintiffs allege that Corbis acquired photographs in which Plaintiffs appeared and placed the pictures on its website, for the purpose of selling licenses for use of the photographs. Complaint ¶¶ 21, 37-38 & 44-45. Second, Plaintiffs allege that Corbis sold licenses of the pictures, without Plaintiffs’ consent. Id. ¶¶ 21-22, 38 & 45-46. Plaintiffs assert that simply “[b]y selling the said licenses, Corbis has been using Plaintiffs’ and the other Class members’ names, images, and likenesses.” Id. ¶ 21 (emphasis added). Third, Plaintiffs contend that Corbis associated the names of the Plaintiffs with the pictures in which they appear on the website, which allowed their names to be used in the search function to locate the photographs. Id. ¶¶ 22, 38 & 45. Finally, Plaintiffs allege that the pictures are used by Corbis to “promote sales” of the licenses to those photographs. Id. ¶ 23. These acts, the Plaintiffs claim, (1) violate their California common law rights of publicity, (2) violate California Civil Code Section 3344, and (3) constitute unjust enrichment for which they are entitled to restitution. Complaint ¶¶ 36-42, 43-50 & 51-55. Notably, Plaintiffs make no claim to ownership of the copyright in any of the photographs at issue, nor do they dispute Corbis’ ownership rights. Rather, they claim that their rights of publicity take primacy over any other Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 9 of 27 Page ID #:171 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 5 rights in these photographs, and prohibit Corbis from exercising any of its rights without Plaintiffs’ consent. Thus, the Complaint seeks in absolute terms an injunction “declaring and decreeing that defendant Corbis: (1) has no right to use, exploit, publish, distribute, copy, advertise, license or transmit in any form Plaintiffs’ . . . names, images and likenesses . . . .” Complaint, Prayer for Relief, Section C. APPLICABLE LEGAL PRINCIPLES A Rule 12(b)(6) motion to dismiss tests the legal sufficiency of the claims asserted in the complaint. Dismissal is proper where there is either a “lack of a cognizable legal theory” or “the absence of sufficient facts alleged under a cognizable legal theory.” Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir. 1988). “A pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action will not do.’” Ashcroft v. Iqbal, ___ U.S. ___, 129 S. Ct. 1937, 1949, 173 L. Ed. 2d 868, 883 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 1965, 167 L. Ed. 2d 929, 940 (2007)). “Nor does a complaint suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 129 S. Ct. at 1949, 173 L. Ed. 2d at 883-84. Unreasonable inferences or legal conclusions cast in the form of factual allegations need not be accepted as true. See Twombly, 550 U.S. at 555-56, 127 S. Ct. at 1965, 167 L. Ed. 2d at 940. Under the Supreme Court’s decision in Iqbal, a complaint also cannot survive a motion to dismiss based on conclusory allegations of ultimate fact if it is does not make a factual allegation of actionable conduct on the part of a defendant. Iqbal, 129 S. Ct. at 1957, 173 L. Ed. 2d at 887 (“respondent’s complaint does not contain any factual allegation sufficient to plausibly suggest petitioners’ discriminatory state of mind. His pleadings thus do not meet the standard necessary to comply with Rule 8”). Although a court considers the face of the complaint and documents attached thereto to decide a motion to dismiss, Hal Roach Studios, Inc. v. Richard Feiner & Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 10 of 27 Page ID #:172 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 6 Co., Inc., 896 F.2d 1542, 1555 n.19 (9th Cir. 1990), it may also consider documents not physically attached to the complaint where the complaint alleges the contents of the documents and their authenticity is not questioned. Branch, 14 F.3d at 453-54. A court may also consider any items that can be judicially noticed pursuant to Federal Rule of Evidence 201. See Intri-Plex Techs., Inc. v. Crest Group, Inc., 499 F.3d 1048, 1052 (9th Cir. 2007) (citation omitted). A party’s website and the contents thereof can properly be the subject of judicial notice. See Knievel v. ESPN, 393 F.3d 1068, 1076-77 (9th Cir. 2005) (noting that “the rationale of the ‘incorporation by reference’ doctrine applies with equal force to internet pages as it does to printed material”). See generally RFJN. ARGUMENT The heart of the instant matter is that the Plaintiffs have sued a copyright holder for simply exercising its copyrights. Plaintiffs do this in the guise of labeling Corbis’ legitimate activities in connection with licensing its copyrighted photographs as, instead, trafficking in Plaintiffs’ “names, images or likenesses.” The attempt to blanket the legitimate exploitation of copyrighted works with the cloak of commercial use of rights of publicity under state law is not permitted, and is preempted by the federal law. I. FEDERAL PREEMPTION The Copyright Act expressly preempts certain state laws that interfere with a copyright owners’ exploitation of its exclusive rights. 1 NIMMER, NIMMER ON COPYRIGHT § 1.01[B] (2009). In particular, it “expressly preempts ‘all legal and equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by [17 U.S.C. § 106].’” Entous v. Viacom Int’l, Inc., 151 F. Supp. 2d 1150, 1158 (C.D. Cal. 2001) (quoting 17 U.S.C. § 301(a)). Title 17 U.S.C. § 301(a) “accomplishes the general federal policy of creating a uniform method for protecting and enforcing certain rights in intellectual property” by preempting other state law claims within its purview. Daboub v. Gibbons, Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 11 of 27 Page ID #:173 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 7 42 F.3d 285, 288 (5th Cir. 1995). The statute sets forth a two-part test for determining whether a state law claim is expressly preempted by the Copyright Act. First, a work “must come within the ‘subject matter of copyright.’” Del Madera Props. v. Rhodes & Gardner, Inc,, 820 F.2d 973, 976 (9th Cir. 1987); see also 17 U.S.C § 301(a). Second, “the rights granted under state law must be ‘equivalent to any of the exclusive rights within the general scope of copyright as specified by Section 106 [of the Copyright Act].’” Del Madera Props., 820 F.2d at 976; 17 U.S.C § 301(a). Even if a state law claim can avoid express preemption, a claim will still be preempted by the Copyright Act if the state law claim’s operation conflicts with the Act’s conferral of exclusive rights on the copyright holder. 1 NIMMER ON COPYRIGHT § 1.01[B][3][a]. As a leading treatise explains, [E]ven apart from Section 301, the general proposition pertains in copyright law, as elsewhere, that a state law is invalid that “stands as an obstacle to the accomplishment of the full purposes and objectives of Congress.” Such “conflict pre-emption” equally pertains when compliance with both federal and state mandates is a physical impossibility. Id. (footnotes and citations omitted). See also Worth v. Universal Pictures, Inc., 5 F. Supp. 2d 816, 820 (C.D. Cal. 1997). Here, Plaintiffs’ right of publicity claims-which seek to do nothing short of supplanting Corbis’ copyrights with Plaintiffs’ purported state law publicity rights- can survive neither the test of express nor conflict preemption. II. PLAINTIFFS’ CLAIMS ARE EXPRESSLY PREEMPTED BY THE COPYRIGHT ACT. Plaintiffs assert that Corbis’ license of copyrighted photographs violates their rights of publicity under California common law and statute. A claim for a common law violation of rights of publicity requires proof of: Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 12 of 27 Page ID #:174 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 8 (1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. Fleet v. CBS, Inc., 50 Cal. App. 4th 1911, 1918, 58 Cal. Rptr. 2d 645, 649 (2000). A statutory right of publicity claim adds further requirements of knowing use and a direct connection between the use and allegedly commercial purpose, and also adds additional remedies in such events. Id.; see also Cal. Civ. Code § 3344. A. Equivalence of the Plaintiffs’ Claims to Exclusive Copyrights Plaintiffs’ claims satisfy the first prong of the test of express preemption because their asserted rights to block display, reproduction and distribution of Corbis’ photographs assert the equivalent of federal copyright interests. Title 17 U.S.C. § 106, affords copyright holders, such as Corbis, certain exclusive rights in their copyrighted works, including photographs such as those on Corbis’ websites. See 17 U.S.C. § 102(a) & (a)(1) (copyrightable works of authorship include “pictorial [and] graphic . . . works”). These exclusive rights include the rights to (1) display the work to the public; (2) reproduce the work; and (3) distribute copies of the work to the public by sale or other transfer. 17 U.S.C. § 106. These are the very acts that Corbis undertakes in its license of its copyrighted works that the Plaintiffs claim violate their rights of publicity. Plaintiffs claim Corbis violated their common law and statutory rights by (1) merely “obtaining” the photographs in which they appear (Complaint ¶¶ 21, 37 & 44); (2) displaying them in its online catalog, including to “promote” the distribution of licenses to the works (id. ¶¶ 21-23, 38 & 45); and (3) offering for sale and selling licenses to the copyrighted pictures-that is distributing the copyrighted works. Id. ¶¶ 21-22, 38 & 45. The alleged “commercial advantage” Corbis receives is financial remuneration for the sale of licenses in the copyrighted pictures. Id. ¶¶ 24, 39, 46 & 52-53. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 13 of 27 Page ID #:175 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 9 In sum, Plaintiffs contend that, merely because they appear in these photographs, Corbis’ obtaining the copyrights in these works and then displaying, reproducing and distributing the works, is per se a violation of Plaintiffs’ rights of publicity. What is clear is that whatever rights the Complaint asserts, the very acts of Corbis that Plaintiffs claim are wrongful are the same as-equivalent to-those Corbis is exercising as a copyright holder. See Laws v. Sony Music Entmt., Inc., 448 F.3d 1134, 1144 (9th Cir. 2006) (vocalist’s right of publicity claim based only on sampling of copyrighted sound recording in another sound recording was preempted; “[a]lthough the elements of [plaintiff’s] state law claims may not be identical to the elements in a copyright action, the underlying nature of [plaintiff’s] state law claims is part and parcel of a copyright claim.”). Plaintiffs attempt to get around this clear problem by employing the linguistic trick of substituting the phrase “names, images, and likenesses” for “copyrighted photographs” throughout the Complaint. See, e.g., Complaint ¶¶ 37- 40, 44-45 & 52-54. But the use of code words such as “name” or “likeness” holds no talismanic quality and cannot disguise the absence of any act by Corbis that is not entirely subsumed by the rights expressly given to Corbis under the Copyright Act. See Twombly, 550 U.S. at 555, 127 S. Ct. at 1965, 167 L. Ed. 2d at 940 (mere legal conclusions or recitation of elements of a claim, even if dressed up as factual allegations, cannot state a claim). Fleet v. CBS, Inc. is illustrative. In Fleet, actors sought to interfere with the distribution of a copyrighted motion picture in which they had appeared by filing suit alleging a violation of their rights of publicity. 50 Cal. App. 4th at 1920, 58 Cal. Rptr. 2d at 651. The court found the claims preempted, explaining: Appellants may choose to call their claims misappropriation of right to publicity, but if all they are seeking is to prevent a party from exhibiting a copyrighted work they are making a claim “equivalent to an exclusive right within the general scope of copyright.” Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 14 of 27 Page ID #:176 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 10 Id. (citation omitted); see also KNB Enters. v. Matthews, 78 Cal. App. 4th 362, 372, 92 Cal. Rptr. 2d 713, 721 (2000) (“As between the exclusive copyright holder and any actor, performer, model, or person who appears in the copyrighted work, the latter may not preclude the former from exercising the rights afforded under the exclusive copyright by claiming a violation of the right of publicity.”). The Complaint’s attack on the licensing of photographs only describes the exercise of Corbis’ copyrights with respect to photographs. No “use” of the Plaintiffs’ names, images or likeness, apart from their mere appearance in the photographs, is alleged, nor can it be. This is all that Corbis does - display, reproduce, and distribute its copyrighted works. Ninth Circuit law likewise supports the proposition described in Fleet. In Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134, 1141 (9th Cir. 2006), the plaintiff objected to defendant’s sampling and incorporation of portions of her hit song into another artist’s song and sued for violation of her right of publicity. The court found her right of publicity claims preempted, stating “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.” Id. Again, a bare allegation of a misappropriated name, image or likeness was not enough to avoid preemption, where the alleged wrongful conduct implicated only the exercise of exclusive copyrights. Similarly, in Baltimore Orioles, Inc. v. Major League Baseball Players Association, the Seventh Circuit held that baseball players’ assertions of their rights of publicity in the broadcast of their “performances” in baseball games was preempted as a claim to control the copyrighted broadcast of baseball games. Baltimore Orioles, 805 F.2d 663, 677 (7th Cir. 1986). Moreover, the court distinguished the players’ inclusion in the mere “performance” of the game, which was held preempted, from additional uses that would not be: The Players’ rights of publicity in their performances are preempted Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 15 of 27 Page ID #:177 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 11 only if they would be violated by the exercise of the Clubs’ copyright in the telecasts. A player’s right of publicity in his name or likeness would not be preempted if a company, without the consent of the player, used the player’s name to advertise its product . . . placed the player’s photograph on a baseball trading card . . . or marketed a game based upon the player’s career statistics. Id. at 676 n.24. Indeed, analysis of the cases in which courts have declined to find preemption bears out the distinction between mere inclusion in a copyrighted work, and a further use in connection with a separate commercial product. See, e.g., Wendt v. Host Int’l, Inc., 125 F.3d 806, 809-810 (9th Cir. 1997) (animatronic figures with actors’ likenesses used to market airport bars); Toney v. L'Oreal U.S.A., Inc., 406 F.3d 905, 907, 910 (7th Cir. 2005) (use of plaintiff’s likeness in photograph depicted on hair-relaxer packaging not preempted due to commercial purpose of the use); Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 621-24 (6th Cir. 2000) (duplication of actor’s likeness in action figure based on character in movie not preempted by Copyright Act; “[plaintiff] is not claiming the right of publicity in order to gain rights in the telecast of his performance, or to contest [defendant’s] right to create derivative works from its copyrighted work in general. Rather, he claims that the toy evokes his personal identity. . . .”); Butler v. Target Corp., 323 F. Supp. 2d 1052, 1056-57 (C.D. Cal. 2004) (claim based on use of distorted title and lyrics from plaintiffs’ song for advertising and signage in retail store provided extra element to avoid preemption); Michaels v. Internet Entmt. Group, Inc., 5 F. Supp. 2d 823, 828, 836-37 (C.D. Cal. 1998) (using plaintiffs’ names and likenesses in radio, television and Internet advertising to promote distribution of erotic videotape not preempted; noting “[defendant] correctly states that the state law right to publicity action is preempted where the conduct alleged to violate the right consists only of copying the work in which the plaintiff claims a Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 16 of 27 Page ID #:178 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 12 copyright”) (emphasis added and citation omitted); Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 393, 106 Cal. Rptr. 2d 126, 131 (2001) (sale of t- shirts containing life-like illustration of performers). Something more than exploitation of the exclusive rights in a valid copyright is needed for a purported publicity claim to avoid copyright preemption. The absence of this “something more” dooms Plaintiffs’ claims. B. The Works at Issue Fall Within the Subject Matter of Copyright. Plaintiffs’ claims also satisfy the second prong for express copyright preemption because it is without question that photographs fall within the subject matter of copyright. 17 U.S.C. § 101 (providing that “pictorial, graphic, and sculptural works include . . . photographs”). Again, the Plaintiffs try to skirt this clear application of the preemption law by invoking the word “likeness,” claiming Corbis is licensing their “likenesses” rather than licensing photographs; again, Plaintiffs’ effort is fruitless. Courts have held that uses of individuals’ likenesses are outside the subject matter of copyright and their use not preempted only when a use of something more than the photograph is involved. So, for example, in Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), a photographer sold an historical photo of surfers in t-shirts to Abercrombie, who then published the photo in a catalog to promote sale of a traditional surfer t-shirt line. Id. at 999-1000. The court found that Abercrombie’s use of the photograph containing plaintiff’s image to sell its clothing products was a use of a likeness outside the subject matter of copyright embodied in the photograph. Id. at 1004-1005. See also, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1096 (9th Cir. 1992) (finding use of imitation of plaintiff’s voice to market tortilla chips not preempted, as voice attribute (as opposed to voice recording) was outside of subject matter of copyright); Midler v. Ford Motor Co., 849 F.2d 460, 463-64 (9th Cir. 1988) (similarly finding use of voice imitation of plaintiff to promote automobiles not preempted); Toney, 406 F.3d at 910 (use of Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 17 of 27 Page ID #:179 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 13 plaintiff’s likeness in photograph placed on hair-relaxer package not preempted; use of likeness to promote another product held outside subject matter of copyright). Thus, exploitation of another’s “persona,” name, image or likeness in a copyrighted work will avoid preemption only if it involves either a use in addition to the exercise of copyrights, and/or unauthorized and illegitimate use of a work by one other than the copyright holder. Brown v. Ames, 201 F.3d 654, 656, 658-59 (5th Cir. 2001) is instructive in this regard. There, the defendants were held liable for both copyright infringement in plaintiffs’ sound recordings and misappropriation of plaintiffs’ names, images and likenesses on product packaging and catalogs. Id. The court in Brown stated that unauthorized use of one’s persona is not typically preempted. Brown, 201 F.3d at 658. In Brown, however, this result pertained because defendants had placed the plaintiffs’ names, images and likenesses in its music catalogs and on CD and cassette packaging without permission and did not possess a valid copyright license for the plaintiffs’ sound recordings. Id. at 656-57. The court found that plaintiffs’ claim of misappropriation in that case was not preempted, but specifically relied, for this conclusion, on the principle that a claim would be preempted if brought against the holder of the copyrights: Only if states allowed similar claims against authorized publishers or distributors of a work . . . would the purposes and objectives of the Copyright Act be adversely affected. Such suits would interfere to some extent with the uniformity of the copyright system. . . . Thus, because the tort would currently not be sustainable against valid copyright holders, allowing the claim in this context does not impede the transfer of copyrights or the uniformity of the copyright system. Id. at 660-61 (footnote and citation omitted) (emphasis added). In the present case, however, there is no allegation of such further promotional use of the copyrighted work by Corbis to sell another product. Nor is there any allegation of illicit use of Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 18 of 27 Page ID #:180 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 14 the copyrighted work by anyone other than the copyright holder, Corbis. There are only the photographs that are displayed, offered for license, and licensed by the owner of the rights to do so. Not surprisingly, no court has ever held that the mere appearance of a person in a copyrightable work jettisons the work beyond the scope of copyrightable subject matter. Indeed, such a rule would prohibit any photographer from ever displaying, reproducing or transferring (by sale and/or license) her photographs if they happened to include a human being. For example, under Plaintiffs’ theory, it is not the retailer in Downing that would be precluded from using the surfers’ photograph, it is the photographer who would be precluded from selling the photo to anyone-simply because it had a person’s image in it. The ramification of Plaintiffs’ claims is that any display and license of a photograph in which they - or any human being - appears violates the right of publicity.2 This is not the law. If a mere license of a copyrighted work depicting an individual is being challenged, and “the language of the [Copyright] act could be so easily circumvented, the preemption provision would be useless, and the policies behind a uniform Copyright statute would be silenced.” Daboub, 42 F.3d at 290; see also id. at 290, n.8. Here, only photographs, unquestionably the subject matter of copyright, are involved. Plaintiffs’ claims thus meet both prongs of Section 301’s preemption test. Their publicity claims are therefore preempted by the Copyright Act, and should be dismissed for failure to state a claim. III. PLAINTIFFS’ CLAIMS ARE ALSO BARRED BY THE DOCTRINE OF CONFLICT PREEMPTION WITH THE COPYRIGHT ACT. Even if the Plaintiffs’ claims were not expressly preempted under 2 While the named Plaintiffs are alleged to be “celebrities,” it is important to remember that the right of publicity laws are not limited to celebrities and apply also to the non-famous when they are identifiable in a photograph used for commercial purposes. Cal. Civ. Code § 3344. Moreover, while not at issue here, Plaintiffs purport to assert right of publicity claims on behalf of a large class of individuals who appear in Corbis’ photographs, regardless of celebrity status. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 19 of 27 Page ID #:181 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 15 Section 301 of the Copyright Act, the claims are nevertheless preempted under the principles of conflict preemption. Conflict preemption arises, and a state law claim is invalid, if the claim “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” See Hines v. Davidowitz, 312 U.S. 52, 67-68, 61 S. Ct. 399, 404, 85 L. Ed. 581, 587 (1941); see generally 1 NIMMER ON COPYRIGHT § 1.01[B][3][a] (discussing application of conflict preemption as reaching beyond Section 301(a) preemption in copyright). The objectives of Congress with respect to the Copyright Act “are to implement a nationally uniform system for the creation and protection of rights in a copyrighted work.” See Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 382 (3d Cir. 1999) (citation omitted). As this Circuit has recognized, copyright preemption is both explicit and broad. G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Servs., Inc., 958 F.2d 896, 904 (9th Cir. 1992). A broad scheme of copyright preemption was adopted in part to “avoid the development of any vague borderline areas between State and Federal protection.” Daboub, 42 F.3d at 290 n.8 (emphasis and citation omitted). A. The Copyright Holders’ Rights to License Copyrights are Axiomatic and Critical to the Copyright Scheme. The Copyright Act establishes the legitimacy of the business that Corbis is engaged in, guaranteeing the unfettered right to transfer copyright interests. See 17 U.S.C. § 201(d)(1) (“The ownership of a copyright may be transferred in whole or in part by any means of conveyance.”); 17 U.S.C. § 201(d)(2) (any of the exclusive rights provided for in Section 106 of the Copyright Act may be transferred separately). This includes both exclusive and non-exclusive licenses for any and all copyrights. See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990). Further, as discussed above, Section 106 of the Copyright Act grants the copyright holder the exclusive right to distribute, reproduce, and display (among other rights) the copyrighted work. 17 U.S.C. § 106. Plaintiffs’ demand that this Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 20 of 27 Page ID #:182 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 16 Court assess damages for and enjoin all such displays, sales, and distribution of those works places the right of publicity directly at odds with the rights accorded by copyright. Moreover, the fundamental purpose of the copyright clause of the U.S. Constitution, as well as the copyright statute itself, is to encourage the broad dissemination of copyrighted works. See U.S. Const., art. I, § 8, cl. 8 (Congress is empowered “[t]o promote the Progress of Sciences and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). The remuneration of authors through copyright is but a means to the ends of “giv[ing] the public appropriate access to their work product.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429, 104 S. Ct. 774, 782, 78 L. Ed. 2d 574, 584 (1984). As the Supreme Court has explained: The sole interest of the United States and the primary object in conferring the [copyright] monopoly lie in the general benefits derived by the public from the labors of authors.’ It is said that reward to the author or artist serves to induce release to the public of the products of his creative genius. Sony Corp. of Am., 464 U.S. at 429, 104 S. Ct. at 782, 78 L. Ed. 2d at 584 (citation omitted) (emphasis added). Yet Plaintiffs’ claims would deny the public such access by prohibiting any such display or license of photographs of recognizable individuals. B. Plaintiffs’ State Law Theories Would Prevent the Exercise of Copyrights in Photographs of Individuals. Independent of express preemption (which should apply here as discussed above), permitting state common law or statutes to render tortious all copyright licensing of photographs of individuals would substantially and adversely affect the rights explicitly afforded by federal statute. The Ninth Circuit highlighted this potential difficulty in the Laws case: Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 21 of 27 Page ID #:183 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 17 We sense that, left to creative legal arguments, the developing right of publicity could easily supplant the copyright scheme. This, Congress has expressly precluded in § 301. Were we to conclude that [plaintiffs’] voice misappropriation claim was not preempted by the Copyright Act, then virtually every use of a copyrighted sound recording would infringe upon the original performer’s right of publicity. Laws, 448 F.3d at 1145. Affirmation of the Plaintiffs’ theory would subject to liability not only the use of photography in the sale or endorsement of products (which is not alleged here), but any display and license of copyrighted photographs in which an identifiable person appears. See n.2, supra. Under this regime, no photographer or owner of a copyrighted photograph would be able to exploit their copyrights. 3 Indeed, under Plaintiffs’ theory, Corbis, or any other purveyor of copyrighted photographs, would be exposed to damages-and subject to injunction-even if the licensee had the absolute right to use the work as it did without recompense to Plaintiffs. The same would be true even if the end user had paid the Plaintiffs whatever fee Plaintiffs demanded for the ultimate use made of their image. Under Plaintiffs’ theory, it is the very display of the work and sale of the license-the core rights provided by the Copyright Act-that constitute the wrongdoing. Complaint ¶ 21 and Prayer for Relief, Section C. There are few more appropriate examples for conflict preemption. And it is thus not surprising that no Court has ever, in the 3To be sure, there would be various defenses available based on the individual circumstances of each photograph, including, among others, that the person was not identifiable; that the use fell within various exemptions under the statute; that the subject had consented; or that California law did not apply. In addition, there are issues around construction of the California statute and common law not addressed by this motion, and which Corbis expressly reserves. Nonetheless, Plaintiffs’ theory would establish as a baseline that licensing of any photograph of a recognizable individual could constitute a tortious act in California notwithstanding federal copyright law. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 22 of 27 Page ID #:184 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 18 90-plus year history of the stock-photography industry, adopted such a theory.4 Even in less overtly conflicting scenarios the courts have recognized the potential interference of rights of publicity with the ability to exploit rights conferred by the Copyright Act. In Allison v. Vintage Sports Plaques, 136 F.3d 1443 (11th Cir. 1998), the court considered application of the first sale doctrine to the sale of trading cards incorporated into custom plaques and other displays. Id. at 1451. There, plaintiffs alleged that the resale of trading cards bearing their names and likenesses violated their state law publicity rights, notwithstanding the grant of rights to defendant under the first sale doctrine in copyright law. Id. at 1444-45. The court disagreed, holding that the first sale doctrine precluded the right of publicity claim. Id. at 1449. It observed that “accepting [plaintiffs’] argument would have profoundly negative effects on numerous industries and would grant a monopoly to celebrities over their identities that would upset the delicate ‘balance between the interests of the celebrity and those of the public.’” Id. at 1448-49 (citations omitted). Similarly, in this case, construing Plaintiffs’ rights of publicity to reach Corbis’ activities in licensing the copyrights in its photographs would cripple its ability-indeed, the entire photography industry’s ability- to license its photographs. While news agencies and other media would still be free to use 4 The Illinois Court of Appeals that decided a prior case brought against Corbis did not address the conflict preemption issue. Brown v. ACMI Pop Div., 375 Ill. App. 3d 276, 287-88, 873 N.E.2d 954, 962-63 (2007). Nor did it adopt the view that express preemption could not apply here-rather, it found a factual dispute in that case over whether Corbis’ activities constituted sale of “tangible goods” and therefore potentially was not within the “equivalence” prong required for express preemption. Brown, 375 Ill. App. 3d at 288, 873 N.E.2d at 963. The Illinois state court chose not to apply the Ninth Circuit’s decision in Laws in favor of its local Seventh Circuit decision in Toney-a choice not presented to this Court. Brown, 375 Ill. App. 3d at 287-88, 873 N.E.2d at 962-63. Moreover, the Illinois state court failed to appreciate the inapplicability of Toney here, where the claim alleged is not the taking of the plaintiff’s persona for any promotional or other use independent of licensure of the copyrighted work. See Section II.B. supra at 12-14. In all events, however, even if the express preemption criteria were construed narrowly and held not met here, that is exactly when the conflict preemption test must be applied and plainly does require preemption. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 23 of 27 Page ID #:185 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 19 pictures of individuals in editorial works, given First Amendment protections5 and a specific exemption under California Civil Code Section 3344(d), it is not clear from where they could obtain those photographs. Under the parameters of Plaintiffs’ claims, prospective licensees could not view potential photographs on a website or a catalog. No repository could maintain such a display without exposure to liability to all depicted. Indeed, the logical end of the Plaintiffs’ claims would mean that no copyright holder could display any work to inform others of its willingness to license copyrights in the photographs of any individuals in California, as Plaintiffs allege this is prohibited commercial use. Complaint ¶¶ 24 & 47. Accordingly, even if not expressly preempted under 17 U.S.C. § 301, the Plaintiffs’ suit over Corbis’ exercise of copyrights in photographs is preempted under the doctrine of conflict preemption. IV. PLAINTIFFS’ ALLEGATIONS OF NON-ACTIONABLE INCIDENTAL USES ALSO FAIL TO STATE A CLAIM. To the extent that Plaintiffs assert that any ancillary activities of Corbis beyond sale and distribution of licenses offends their rights of publicity, those claims, too, are preempted. In addition to being preempted as part of the right of publicity claims, these activities are themselves non-actionable as incidental to the valid exercise of Corbis’ copyrights. While it is not clear whether Plaintiffs contend that any of these ancillary activities can actually support a right of publicity claim independent of a sale of a license,6 the Complaint lists the following uses incidental to the licensing of copyrights: (1) display of copyrighted photographs on Corbis’ website (Complaint 5 See Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1183, 1189 (9th Cir. 2001) (reversing judgment against magazine for right of publicity violations; magazine’s publication of altered photograph of celebrity’s character from a motion picture was entitled to full First Amendment protection). 6 From Plaintiffs’ definition of the purported class they seek to represent, their claims depend on injury “through Corbis’ sale of purported licenses” in the images at issue. Complaint ¶ 28. As so stated, no claim could rest on mere ancillary display or linking of names to photos independent of the distribution of the photo which is itself subject to preemption. Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 24 of 27 Page ID #:186 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 20 ¶¶ 21, 37-38 & 44-45), (2) display of the copyrighted photographs to promote the sale of licenses for the photographs (id. ¶ 23), and (3) alleged association of Plaintiffs’ names to photographs to allow for name searches on the Corbis website. Id. ¶¶ 22 & 45. None of these alleged uses is “actionable” for purposes of the right of publicity. First, with respect to the “display” of the photographs on the website, this is simply an exercise of Corbis’ display right as enumerated under Section 106, as stated above. Moreover, even if the display right itself were ignored, and the posting on the website were framed as some form of promotion in furtherance of the sale of the copyrighted work, the display would still be a permitted “incidental” use. Incidental use of a person’s name, image or likeness is protected by the First Amendment to the U.S. Constitution. This Circuit has held that First Amendment protection “extends to the truthful use of a public figure’s name and likeness in advertising which is merely an adjunct of the protected publication and promotes only the protected publication.” See Cher v. Forum Int’l, Ltd., 692 F.2d 634, 639 (9th Cir. 1982) (citation omitted). Moreover, disposition of incidental uses is proper on a Rule 12(b)(6) motion to dismiss. See William O’Neil & Co. v. Validea.com, Inc., 202 F. Supp. 2d 1113, 1119 (C.D. Cal. 2002) (on a motion to dismiss, ruling that a book cover, flyleaf and other material advertising a book was adjunct to the protected publication of the book); see also Montana v. San Jose Mercury News, Inc., 34 Cal. App. 4th 790, 797, 40 Cal. Rptr. 2d 639, 642-43 (1995) (use of photograph in advertisement for newspaper, and even in sale of posters for promotional purposes, not violation of right of publicity but incidental to legitimate news function of newspaper). Thus, even if display of the pictures on Corbis’ website were viewed as advertising or promotion of its efforts to license the pictures, it would be incidental to copyright licensing activity that is itself protected. See Page v. Something Weird Video, 960 F. Supp. 1438, 1443-45 (C.D. Cal. 1996) (defendant was entitled to Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 25 of 27 Page ID #:187 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 21 include the plaintiff’s image in a catalog for the purpose of enticing customers to purchase the videos for which defendant owned a copyright); Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 414, 114 Cal. Rptr. 2d 307, 317 (2001) (noting advertisements for a baseball game that used names and depictions of players would not be actionable; “[t]he owner of a product is entitled to show that product to entice customers to buy it,” without running afoul of publicity rights); cf. Alfano v. NGHT, Inc., 623 F. Supp. 2d 355, 361-62 (E.D.N.Y. 2009) (Corbis’ display on its website of photographs in which plaintiff appeared was necessary incidental use in order to license photographs). As to a search function that allows searches by Plaintiffs’ names in conjunction with the copyrighted pictures, this use is also incidental to Corbis’ licensing of copyrights. “[I]t does not violate the right of publicity to use [a] celebrity’s name to identify the likeness if the image is lawfully used.” Allison, 136 F.3d at 1451 n.16 (emphasis in original); see also Page, 960 F. Supp. at 1444- 45 (use of plaintiff’s name in advertisement for sale of defendant’s copyrighted videos was not actionable as an incidental use); cf. New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308-310 (9th Cir. 1992) (use of musical group’s name in connection with telephone service was fair use, did not violate rights of publicity and was not a trademark violation). Thus, Plaintiffs’ allegation that their names are associated with pictures to allow for searching across the photographs and identifying Plaintiffs is not actionable. V. PLAINTIFFS’ RESTITUTION/UNJUST ENRICHMENT ALLEGATIONS ALSO FAIL TO STATE A CLAIM UPON WHICH RELIEF MAY BE GRANTED. The Plaintiffs’ unjust enrichment claim is based on their allegations of appropriation of their names, images and likenesses through Corbis’ licensing of its copyrights; in this regard, this claim mirrors the right of publicity claims. Complaint ¶¶ 52-54. As a threshold matter, “there is no cause of action in California for unjust Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 26 of 27 Page ID #:188 FE N W IC K & W E ST L L P A T T O R N E Y S A T L A W SA N F R A N C IS C O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CORBIS’ MEMO. OF P’S & A’S ISO MOTION TO DISMISS CASE NO. 09-CV-05735-SVW (CWx) 22 enrichment.” Melchior v. New Line Prods., Inc., 106 Cal. App. 4th 779, 794, 131 Cal. Rptr. 2d 347, 357 (2003). “Unjust enrichment,” which is synonymous with restitution, is not a theory of recovery, it is a general theory underlying remedies. Id. (finding claim of unjust enrichment preempted by the Copyright Act). Unjust enrichment merely describes the basis for obtaining the equitable remedy of restitution based on a defendant’s unjust retention of a benefit. See McBride v. Boughton, 123 Cal. App. 4th 379, 387-88, 20 Cal. Rptr. 3d 115, 121 (2004) (“we construe [plaintiff’s] purported cause of action for unjust enrichment as an attempt to plead a cause of action giving rise to a right to restitution”). In any event, as both Nimmer and the caselaw recognize, “a state law cause of action for unjust enrichment . . . should be regarded as an ‘equivalent right’ and hence, pre-empted insofar as it applies to copyright subject matter.” 1 NIMMER ON COPYRIGHT § 1.01[B][1][g]; see also Del Madera Props., 820 F.2d at 977 (unjust enrichment claim based on conduct underlying preempted claim was likewise preempted). Thus, the Plaintiffs’ restitution/unjust enrichment claim, mirroring their flawed right of publicity claims, is also preempted and should be dismissed. CONCLUSION For the foregoing reasons, Corbis respectfully requests that the Court grant its Motion to Dismiss in its entirety, find that Plaintiffs’ claims are preempted by the Copyright Act and dismiss Plaintiffs’ claims with prejudice. Dated: September 25, 2009 FENWICK & WEST LLP By: Laurence F. Pulgram Attorneys for Defendant CORBIS CORPORATION Case 2:09-cv-05735-SVW-CW Document 18 Filed 09/25/09 Page 27 of 27 Page ID #:189