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Plaintiff models sue defendants in California state court for statutory invasion of privacy and common law misappropriation, and, following removal, district court remands because subject matter of state law claims does not fall within subject matter of copyright law.

 Defendants Michael O’Rourke and his company, O’Rourke Holdings, paid plaintiffs Amber Coyle and Jasmin Dustin to participate in a photo and video shoot for Rock Your Hair, defendants’ trademarked line of hair care and related products and services. Pursuant to oral and written contracts, defendants agreed to use the photos and videos of plaintiffs for specific purposes and for a specific period of time. Claiming that defendants used their images and likenesses in manners not authorized under the agreements, plaintiffs filed suit in Los Angeles Superior Court, alleging two causes of action: (i) statutory invasion of privacy in violation of Civil Code § 3344; and (ii) California common law misappropriation of likeness. Defendants removed the action to federal court and filed for dismissal.

In support of its removal to federal jurisdiction, defendants contend that they own valid copyrights in the photographs taken during the photo shoot, that plaintiffs’ injuries consisted of unauthorized reproduction and dissemination of the copyrighted photographs, and, therefore, the complaint essentially alleges copyright claims. Arguing that federal courts have exclusive jurisdiction over any civil action arising under any act of Congress relating to copyrights, defendants conclude that the state action must be removed to federal court.

The district court disagreed. On the question of removal, the district court first emphasized that “[b]ecause federal preemption is an affirmative defense, it does not provide a basis for removal jurisdiction unless there is what is deemed ‘complete preemption.’” Defensive preemption, on the other hand, is a substantive issue that does not enable removal to federal court. Recognizing the Ninth Circuit has not addressed whether the federal Copyright Act effects complete preemption, the district court followed other courts distinguishing complete from defensive preemption by applying the Ninth Circuit’s two-part test for defensive preemption to the question of complete preemption: first, whether the subject matter of the state law claim falls within the subject matter of copyright law; and second, if so, whether the rights asserted under state law are equivalent to those protected by federal copyright law.

Applying the two-part test, the district court held that defendants failed to carry their burden to show that removal was proper because they could not show that the state claim fell within the subject matter of copyright law. Copyright law affords protection to “original works of authorship fixed in any tangible medium of expression,” and a person’s image or likeness is not within that protection. The district court distinguished the models’ work from “dramatic works” of actresses and other performers. The district court also reasoned that the images and likenesses from the Rock Your Hair shoot were used for commercial purposes, not for expressive “works of authorship.”

Because defendants could not satisfy the first prong of the two-part test, the district court did not address whether the rights asserted in the complaint were equivalent to those protected by federal copyright law. Instead, the court remanded the case to state court, concluding that it had no jurisdiction over the action because removal was improper. Without jurisdiction to hear the motion to dismiss, the court denied defendants’ motion. Though the court disagreed with defendants’ interpretation of preemption issues, it declined to award attorney fees to plaintiff, since defendants’ basis for removal was objectively reasonable, though invalid.