Reversing a district court’s ruling on a motion for judgment as a matter of law on preemption and standing, the U.S. Court of Appeals for the Ninth Circuit found that an adult film star had standing to assert copyright claims but his right of publicity claim was preempted by federal copyright law. Jules Jordan Video, Inc. v. 144942 Canada, Inc., Case No. 08-55075 (9th Cir., March 2, 2010) (Gettleman, J.)

Adult movie actor Ashley Gasper and Jules Jordan Video (JJV) brought suit against several defendants for copyright infringement, unfair business practices, false and misleading advertising, as well as for violation of Gasper’s right of publicity. The suit was based on defendants’ copying and selling of thirteen copyrighted adult DVDs owned by either JJV or Gasper and featuring Gasper’s performances.

Gasper is the president and sole shareholder of JJV and the creator of the videos in which Gasper appears. The plaintiffs alleged that the defendants violated Gasper’s right of publicity and infringed its copyrights by the repeated unauthorized reproduction, counterfeiting and sale of the DVDs. After a lengthy trial, the jury found that defendants did indeed violate Gasper’s right of publicity and infringed its copyrights, awarding plaintiffs more than $5.4 million in damages. The district court thereafter granted the defendants’ motion for judgment as a matter of law in part, concluding that neither Gasper nor JJV had standing to assert the copyright infringement claims and denied defendants’ claim that Gasper’s right of publicity claim was preempted by federal copyright law. Both parties appealed.

In addressing the preemption issue, the Ninth Circuit applied its two-part test to determine whether California’s right of publicity action was preempted by federal copyright law. The test requires a court to first determine whether the subject matter of the state law claim falls within the subject matter of the Copyright Act and, if so, to determine whether the rights asserted under the state law are equivalent to the rights of copyright holders. The Court focused on the plaintiffs’ claims that the defendants misappropriated Gasper’s name, persona and dramatic performance by the repeated unauthorized reproduction of his performance on the DVDs. The Court reasoned that since the conduct alleged in violating Gasper’s right of publicity was the same conduct alleged for copyright infringement, the right of publicity claim was preempted. Specifically, the Court found that because the right of publicity claim relied on works of authorship fixed in a tangible medium of expression (the counterfeit DVDs), the subject matter prong of the test was satisfied. The Court glanced over the equivalent rights determination and declared the publicity right preempted.

Turning to the issue of standing, the Ninth Circuit noted that the copyright in the films was registered to Gasper, not JJV. The lower court had reasoned that because Gasper was employed by JJV, the films were “works for hire” under the Copyright Act, and thus JJV, not Gasper, was the author of the films. The lower court then concluded that JJV lacked standing because the registration was invalid (listing Gasper as the author). In appealing this ruling, plaintiff argued that only Gasper or JJV could possibly own the copyrights and both were plaintiffs in the action. The Ninth Circuit, noting that JJV was a “one man shop,” with Gasper as its sole officer, director and shareholder, explained that since “JJV was Gasper, JJV intended whatever Gasper intended, and if Gasper intended that his creative work be outside the scope of his employment with JJV, there was no one to disagree.” Since Gasper consistently testified that he and JJV intended that he be the owner of the copyrights, the Court found that the films were not “works for hire” but rather Gasper’s own work. Therefore, the Court held that Gasper had standing to assert his claims for copyright infringement and reversed the district court.

Practice Note: When the conduct alleged for claiming a violation of California’s right of publicity is of the same conduct alleged for copyright infringement, a court may likely find preemption.