Apigram Publishing Co. v. Factors Etc., Inc. (1980)

Civ. No. C78-525, 1980 WL 2047 (N.D. Ohio, July 30, 1980)

In this case, both Plaintiffs and Defendants are filing motions for summary judgment. Apigram asserts the rights that Factors claims to have regarding photographs, images, etc. of Elvis, based on the Right of Publicity, are void and unenforceable and should fall under Federal Copyright law.

Factors, on the other hand, claims exclusive rights to commercially exploit photos of Elvis a common law “right of publicity.” Factors also asserts these rights are not preempted by general copyright law and that the right of publicity continued after Elvis’ death.

Basing their decision on the 6th Circuit Court of Appeals’ decision in Memphis Development Foundation v. Factors, Etc. Inc. (1980), the court here holds that Factors is correct that the right of publicity is distinguishable from, and not preempted copyright law but that the right of publicity ended when Elvis died.


OPINION


 

United States District Court, N.D. Ohio, Western Division.

APIGRAM PUBLISHING CO., Plaintiff,
v.
FACTORS ETC., INC., et al., Defendants

No. C 78-525.

July 30, 1980.

 

MEMORANDUM AND ORDER

DON J. YOUNG, Senior District Judge.

This cause came to be heard upon the filing by plaintiff of a motion for partial summary judgment. Defendant has opposed this motion and has filed a cross motion for summary judgment.

This is an action brought by plaintiff for a Declaratory Judgment against defendant Factors Etc., Inc. The complaint seeks a declaration that Factors’ claimed exclusive rights over the photographs, images, and pictures of Elvis Presley are void and unenforceable under the common law of the State of Ohio and that any protection of any form of tangible expression of Presley falls within the exclusive realm of Federal Copyright Law. Plaintiff requests that the defendants be enjoined from instituting any lawsuit arising out of plaintiff’s use of certain photographs or other tangible forms of expression of Elvis Presley.

In its motion for partial summary judgment, plaintiff asks this Court to rule that any state common law rights to the Presley photographs claimed by defendant are preempted by § 301 of the U.S. Copyright Act of 1976, 17 U.S.C. § 301. Plaintiff urges that the need for national uniformity of copyright laws requires that any exclusive rights claimed by defendant be governed solely by federal copyright law.

In its cross motion for summary judgment, defendant claims exclusive rights to commercially exploit the Presley photographs under its state common law “right of publicity.” Defendant further urges that its rights under state common law are not preempted by § 301 because defendants’ rights “are not equivalent to any of the exclusive rights within the general scope of (the copyright laws).” Finally, defendant contends that its exclusive common law right of publicity survived the death of Elvis Presley.

The question presented by these motions is whether defendants’ alleged common law “right of publicity” is preempted by § 301 of the U.S. Copyright Act of 1976 which provides:

“On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.”

17 U.S.C. § 301(a). There are three statutory exceptions to this otherwise broad preemption provision. One of these exceptions provides that:

“(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to–

* * *

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.”

This exception to the preemption statute, as originally drafted, contained specific examples of causes of action which were not “equivalent” to the law of copyright. The original version of § 301(b)(3) read as follows:

“(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to–

* * *

(3) Activities violating rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by Section 106, including breaches of contract, breaches of trust, invasion of privacy, defamation, and deceptive trade practices such as passing off and false representation.”

These examples would have implicitly included the right of “publicity,” which has been derived from the common law right of privacy.

For reasons unrelated to the present case, the specific examples were omitted from the final version of § 301(b)(3). The legislative history of § 301 indicates that this omission left the intended scope of § 301(b)(3) unaffected. Specifically, the legislative history reveals that § 301 was not intended to preempt the evolving common law rights of “publicity”:

“The evolving common law rights of ‘privacy,’ ‘publicity,’ and trade secrets and the general laws of defamation and fraud, would remain unaffected as long as the causes of action contain elements such as an invasion of personal rights or a breach of trust or confidentiality, that are different in kind from copyright infringement.”

H.R.Rep. No. 94-1476, 94th Cong., 2d Sess., reprinted in (1976) U.S.Code Cong. & Ad.News 5659, 5748.

This Court finds that the common law right of publicity is not equivalent to the rights protected by federal copyright law. A cause of action based on the right of publicity involves elements, such as the invasion of personal privacy rights, which are not present in the law of copyright. Recently, the Sixth Circuit Court of Appeals held that the common law right of publicity involves personal attributes which, like titles, offices, and reputation, are not inheritable by heirs. Memphis Development Foundation v. Factors Etc., Inc., No. 79-1270 (6th Cir. Mar. 6, 1980). The Court analogized the right of publicity to the law of defamation which was “designed to protect against the destruction of reputation including the loss of earning capacity associated with it.” Memphis Development Foundation, slip op. at 6.

Thus, the Court finds that the common law right of publicity is not preempted by § 301 of the U.S. Copyright Act of 1976. To hold otherwise would present the practical problems raised in defendants’ celebrity hypothetical, i.e., a famous individual may be forced to comply with copyright filing requirements in order to prevent appropriation and exploitation of his or her name image or likeness for another’s commercial gain.

However, this Court cannot ignore the effect on the present case of the recent pronouncement by the Sixth Circuit in Memphis Development Foundation v. Factors Etc., Inc., No. 79-1270 (6th Cir. Mar. 6, 1980). In that case, the Sixth Circuit held that, absent any contrary indication from the Tennessee courts, the common law right of “publicity” did not survive the death of Elvis Presley. Applying the Memphis Development decision to the present case, the issue of whether the common law right of “publicity” is preempted by federal copyright law would become moot (a point not decided herein). While the issue of survivability of the right of “publicity” is not specifically raised in the present motions for summary judgment, the Memphis Development decision may become important at a later stage of these proceedings.

THEREFORE, for the above stated reasons, good cause appearing, it is

ORDERED that plaintiff’s March 13, 1980 motion for leave to file a supplemental reply memorandum be, and the same hereby is, SUSTAINED; and it is

FURTHER ORDERED that plaintiff’s motion for partial summary judgment be, and it hereby is, OVERRULED; and it is

FURTHER ORDERED that defendants’ cross-motion for partial summary judgment be, and it hereby is, SUSTAINED only to the extent necessary for this Court to rule on the § 301 preemption issue.

IT IS SO ORDERED.

Be the first to comment

Leave a Reply

Your email address will not be published.


*