Opinion
CASE NO. 8:22-cv-00174-JLS-ADS
2023-08-18
ADRIANA'S INSURANCE SERVICES INC., et al., Plaintiffs v. AUTO INTERNATIONAL INSURANCE AGENCY, INC., et al., Defendants
Daniel A. Rozansky, Michael A. Bernet, Stubbs Alderton and Markiles LLP, Sherman Oaks, CA, for Plaintiffs. Jon Stanley Heim, Marilyn Harper, Harper and Heim, Lawyers, Novato, CA, Sarah A. Silbert, Tre Lovell, Lovell Firm APC, Los Angeles, CA, for Defendants Auto International Insurance Agency Inc., Erick Pena, Richard Wetzel.
Daniel A. Rozansky, Michael A. Bernet, Stubbs Alderton and Markiles LLP, Sherman Oaks, CA, for Plaintiffs. Jon Stanley Heim, Marilyn Harper, Harper and Heim, Lawyers, Novato, CA, Sarah A. Silbert, Tre Lovell, Lovell Firm APC, Los Angeles, CA, for Defendants Auto International Insurance Agency Inc., Erick Pena, Richard Wetzel.
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT
JOSEPHINE L. STATON, UNITED STATES DISTRICT JUDGE
Before the Court is a Motion for Partial Summary Judgment filed by Plaintiffs Adriana's Insurance Services Inc. and Adriana Gallardo. (Mot., Doc. 66.) Defendants Auto International Insurance Agency, Inc. ("AIIA"), Erick Pena, and Richard Wetzel opposed and Plaintiffs responded. (Opp., Doc. 73; Reply, Doc. 84.) Having considered the parties' briefs and held oral argument, the Court now GRANTS IN PART and DENIES IN PART Plaintiffs' Motion for the reasons stated below.
I. BACKGROUND
Adriana's Insurance sells automobile insurance in Southern California. (Plaintiffs' Response to Defendants' Statement of Genuine Disputes of Material Fact ("Pls.' Response") ¶¶ 2-3.) Gallardo is the Founder and Chief Executive Officer of Adriana's Insurance and in that role, has advertised her name and image in support of the business. (Id. ¶¶ 5, 8.) Consistent with these advertising efforts, Adriana's Insurance hired third-party photographer Omar Guerra around September 16, 2020 to create images of Gallardo. (Id. ¶ 14.) One of the images Guerra created is a professionally touched-up photo of Gallardo ("Subject Work"): she wears a red, long-sleeved dress; her left hand is on her hip; her right hand is pointing directly at the camera; she is wearing rings and a gold pendant; her hair is styled in waves and falls over her shoulders. (Abundis-Guillen Decl. Ex. 2 (Copy of Image).) Beginning on September 28, 2020, Adriana's Insurance used this image of Gallardo on billboards, bus advertisements, Adriana's Insurance's website, and Adriana's Insurance's social media. (Pls.' Response ¶¶ 16, 19; Abundis-Guillen Decl. Ex. 5 (Advertisements).)
AIIA is also a seller of automobile insurance and a competitor of Adriana's Insurance. (Pls.' Response ¶¶ 22, 25.) Pena is the Chief Executive Officer of AIIA and Wetzel is the Chief Operating Officer. (Id. ¶¶ 26-27.) On January 8, 2022, Pena and Wetzel decided to get a picture of Gallardo and "change the face" so that they could use the altered image in AIIA's own advertising. (Id. ¶¶ 50-51; Rozansky Decl. Ex. 11 (Text Communications).) They instructed a graphic designer, Jorge Regaldo, to obtain a copy of the Subject Work from the internet and make the necessary modifications. (Pls.' Response ¶¶ 43, 49.) On January 10, Regaldo provided Pena and Wetzel with the requested image ("Modified Work"): Gallardo's body, dress, jewelry, pose, and hair from the Subject Work all remained unchanged, but the face was replaced with the face of a stock-photography model. (Id. ¶¶ 28-29, 52; Rozansky Decl. Ex. 11.) AIIA displayed the Modified Work on two billboards without the consent or authorization of Adriana's Insurance or Gallardo. (Pls.' Response ¶ 32.) One billboard was displayed in Santa Ana for fifteen days, from January 21 to February 4, 2022. (Id. ¶ 33.) The other was displayed in San Jose for three days, from February 9 to February 11, 2022. (Id. ¶ 34.)
In response to this conduct, Plaintiffs filed the first complaint in this matter on February 1 alleging violations of both the statutory and common law right of publicity, in addition to other claims. (Complaint, Doc. 1). Gallardo asserts that many people thought the image on the AIIA billboard was a photo of her and that she received "a lot of messages and phone calls" from people about the use of the image. (Silbert Decl. Ex. D at 99:1-100:4 (Gallardo Dep.).) But this image of Gallardo does not represent a signature look; she and Adriana's Insurance have publicized and advertised other images of her, in other outfits and other poses, on several occasions. (Pls.' Response at 63-64.)
After AIIA's first billboard was posted, Adriana's Insurance applied for a copyright registration for the Subject Work. (Pls.' Response ¶ 18.) In support of the application, Adriana's Insurance provided a signed Work for Hire Agreement ("Agreement") between it and Guerra. (Id. ¶ 15; Abundis-Guillen Decl. Ex. 1 (Agreement).) The Agreement has an effective date of September 16, 2020 but is a nunc pro tunc (now for then) agreement that was executed sometime after the Subject Work was created and delivered to Adriana's Insurance. (Pls.' Response at 68; Abundis-Guillen Decl. Ex. 1.) The Agreement states that Adriana's Insurance owns "all right, title, and interest in and to" the art and graphic designs Guerra has created or will create for Adriana's Insurance. (Abundis-Guillen Decl. Ex. 1 at 1.) Despite referencing "Works," the Agreement identifies only one image, the Subject Work, in the relevant attachments. (Id. at 3.) The Agreement certifies that it is supported by "good and valuable consideration" and governed by the laws of California. (Id. at 1-2.)
Adriana's Insurance received its certificate of copyright registration for the Subject Work on February 8, effective as of February 4. (Abundis-Guillen Decl. Ex. 4 (Certificate of Registration).) The certificate designates the Subject Work as made for hire. (Id.) Plaintiffs then filed an amended complaint on February 10, adding claims for copyright infringement under the Copyright Act, 17 U.S.C. § 501. (FAC, Doc. 15.) Plaintiffs have now moved for partial summary judgment as to Defendants' liability for the alleged violations of the common law right of publicity and for copyright infringement. (Mot. at 12.)
II. LEGAL STANDARD
In deciding a motion for summary judgment, the Court must view the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in that party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is proper "if the [moving party] shows that there is no genuine dispute as to any material fact and the [moving party] is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A factual dispute is "genuine" when there is sufficient evidence such that a reasonable trier of fact could resolve the issue in the non-movant's favor, and a fact is "material" when it might affect the outcome of the suit under the governing law. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. But "credibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge." Acosta v. City of Costa Mesa, 718 F.3d 800, 828 (9th Cir. 2013) (quoting Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000) (internal quotation marks omitted)).
The role of the Court is not to resolve disputes of fact but to assess whether there are any factual disputes to be tried. The moving party bears the initial burden of demonstrating the absence of a genuine dispute of fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "Once the moving party carries its initial burden, the adverse party 'may not rest upon the mere allegations or denials of the adverse party's pleading,' but must provide affidavits or other sources of evidence that 'set forth specific facts showing that there is a genuine issue for trial.' " Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (quoting Fed. R. Civ. P. 56(e)).
III. DISCUSSION
A. Common Law Right of Publicity
California recognizes a common law right of privacy that protects names and likenesses against appropriation by others. See Stewart v. Rolling Stone LLC, 181 Cal. App. 4th 664, 679, 105 Cal.Rptr.3d 98 (2010). Known as a right-of-publicity claim, it requires a plaintiff to establish: "(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." Id. (quoting Eastwood v. Superior Court, 149 Cal. App. 3d 409, 417, 198 Cal.Rptr. 342 (1983)). Defendants do not dispute that they used elements of Gallardo's image without Plaintiffs' consent, rather, they dispute whether the appropriated components of the image, namely Gallardo's body, hair, posture, jewelry, and red dress, constitute her likeness and whether Plaintiffs were harmed by the appropriation.
The misappropriation of a plaintiff's identity is not limited to names and faces; it can extend to other aspects such as voice, catchphrases, and distinctive outfits where those aspects are associated with the plaintiff. See William L. Prosser, Privacy, 48 Cal. L. Rev. 383, 401 n.155, 404-05 (1960) (explaining that "there might be appropriation of the plaintiff's identity, as by impersonation" or the use of other elements of identity that are closely linked to plaintiff); see also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1112 (9th Cir. 1992) (right-of-publicity claim based on an imitation of Tom Waits's voice) abrogated on other grounds by Lexmark Intern, Inc. v. Static Control Components, Inc., 572 U.S. 118, 134 S.Ct. 1377, 188 L.Ed.2d 392 (2014); White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1399 (9th Cir. 1992) (right-of-publicity claim based on the use of a robot dressed like Vanna White displayed in front of a Wheel of Fortune game-board); Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 836-37 (6th Cir. 1983) (right-of-publicity claim based on the use of Johnny Carson's "Here's Johnny" catchphrase). But this broad view of identity is born from the tort's use to protect "marketable celebrity identity value." See White, 971 F.2d at 1398-99 (emphasis added) ("The theory of the right is that a celebrity's identity can be valuable in the promotion of products, and the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity." (quoting Carson, 698 F.2d at 835)). Courts therefore recognize that the appropriated aspect of identity must be identifiable, such that people recognize the plaintiff in the appropriated use. See Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821, 826-27 (9th Cir. 1974) ("Clearly, if . . . plaintiff is not identifiable in the commercial, then in no sense has plaintiff's identity been misappropriated nor his interest violated.")
This case raises the question how to treat the marketable identity value of a noncelebrity who has achieved some level of local recognition. Gallardo has marketed her name and image on behalf of Adriana's Insurance; images of Gallardo have been printed on billboards, buses, trucks, the Adriana's Insurance website, and Adriana's Insurance social media. (Pls.' Response ¶¶ 8 & 19; Gallardo Decl. ¶¶ 11 & 15.) But what aspects of her image are closely associated with her, such that use of those aspects constitutes appropriation of her identity? And how identifiable must that identity be? Defendants insist that this issue cannot be resolved as a matter of law without some evidence that "Gallardo is readily identifiable in the Modified Work." (Opp. at 14.)
Defendants' formulation of this evidentiary burden appears to have been borrowed from California's statutory claim for commercial use appropriation. See Cal. Civ. Code § 3344(b) ("A person shall be deemed to be readily identifiable from a photograph when one who views the photograph with the naked eye can reasonably determine that the person depicted in the photograph is the same person who is complaining of its unauthorized use."). Though the statutory claim overlaps with the common law claim in many ways, the two have important distinctions; notably, courts have not imposed the high identifiability standard of section 3344 onto the common law claim. For the common law claim, likenesses can be recognized from contextual clues and other distinctive details. See Davis v. Elec. Arts Inc., 2017 WL 3335758, at *3 (N.D. Cal. Aug. 4, 2017) (explaining that " 'likeness' as used in section 3344 is narrower than under the common law" and using the example of White v. Samsung Electrics America, Inc. to illustrate how conduct that might not amount to a statutory violation can still be a violation at common law because the likeness need not be as immediately recognizable).
The Court therefore rejects the idea that Plaintiffs must prove ready identifiability as it is understood in section 3344. But the common law right of publicity still requires that the appropriated identity be known and attributable to the plaintiff so that the plaintiff is identifiable. See, e.g., Midler v. Ford Motor Co., 849 F.2d 460, 463 (9th Cir. 1988) (explaining that the human voice is a key method by which we recognize one another, meaning that the use of "a distinctive voice" that is "widely known" amounts to an appropriation of identity). Plaintiffs therefore bear the burden of proving that the appropriated aspects of Gallardo's image meet this standard.
On this record, genuine disputes of material fact remain as to whether Gallardo's pose, outfit, and jewelry are identifiable as her. Gallardo has advertised Adriana's Insurance and other business ventures in several other outfits, using several other poses. (Pls.' Response at 63-64.) Gallardo's own testimony that a handful of people identified her in AIIA's billboard is not sufficient to establish Defendants' liability as a matter of law without more specifics as to who identified her and how. (Silbert Decl. Ex. D at 99:1-100:4 (Gallardo Dep.).) True, Plaintiffs need not prove that Gallardo is as easily identified as Tom Waits or Bette Midler. See Waits, 978 F.2d at 1102 (explaining that a plaintiff need not show that they are "popular" superstars to receive legal protection and that "differences in the extent of celebrity are adequately reflected in the amount of damages recoverable"). But the record does not compel the conclusion that Gallardo has a locally recognizable identity consisting of the pose, outfit, and jewelry that were used in AIIA's image. Because Plaintiffs have not established that Gallardo's identity was appropriated as a matter of law, summary judgment as to liability on this claim is improper and the Court need not reach the issue of harm. Accordingly, the Court DENIES Plaintiffs' Motion as to the common law right of publicity.
B. Copyright Infringement
To prevail on the claim for copyright infringement, Plaintiffs must prove "two elements": "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Here, Defendants argue that there remains a genuine dispute of material fact as to the first element. (Opp. at 17-19.) Defendants dispute both whether the copyright was registered prior to the filing of the infringement action, as required by the Copyright Act, and whether the registration is invalid based on material inaccuracies in the application. See 17 U.S.C. §§ 411(a)-(b).
As to Defendants' first argument, the Copyright Act states that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made." Id. § 411(a). Plaintiffs initiated this lawsuit on February 1, 2022, yet have produced a certificate of copyright registration dated February 4, 2022. (Complaint, Doc. 1; Pls.' Response ¶ 18; Abundis-Guillen Decl. Ex. 4 (Certificate of Registration).) It does not matter, however, that the registration postdates the original complaint because Plaintiffs amended their complaint on February 10, 2022 to add their claims for copyright infringement. (FAC at 1.) Therefore, the civil action for copyright infringement was instituted via the amended complaint after registration. Plaintiffs complied with the Copyright Act's requirements.
As to Defendants' second argument, the Copyright Act provides that inaccurate information in a certificate of registration will not doom the registration's validity unless: "(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration." 17 U.S.C. § 411(b). In this statute, "the word 'knowledge' means actual, subjective awareness of both the facts and the law." Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178, 142 S. Ct. 941, 947, 211 L.Ed.2d 586 (2022). As the Supreme Court explained, "Congress enacted § 411(b) to make it easier, not more difficult, for non-lawyers to obtain valid copyright registrations" and to " 'eliminat[e] loopholes that might prevent enforcement of otherwise validly registered copyrights.' " Id. at 948 (quoting H. R. Rep. No. 110-617, at 20 (2008)). The existence of a certificate of registration serves as prima facie evidence of validity. 17 U.S.C. § 410(c). That means that "the party opposing the copyright must meet a very high burden of proof to overcome that presumption." Bibbero Sys., Inc. v. Colwell Sys., Inc., 731 F. Supp. 403, 404 (N.D. Cal. 1988) (internal quotations omitted).
Plaintiffs registered the Subject Work as a work made for hire. (Abundis-Guillen Decl. Ex. 4.) To qualify as a work made for hire, the work must be:
specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that
the work shall be considered a work made for hire.17 U.S.C. § 101. When considering the requirement for a written instrument, other courts in the Central District of California have ruled "that a writing must be executed before the actual work is created to qualify as a work made for hire." Sisyphus Touring, Inc. v. TMZ Prods., Inc., 208 F. Supp. 3d 1105, 1112 (C.D. Cal. 2016) (citing Andreas Carlsson Prods., AB v. Barnes, 2012 WL 2366391, at *5 (C.D. Cal. June 18, 2012)).
Defendants question whether the Subject Work meets this made-for-hire standard. First, they argue that the photo is not part of a collective work and is instead more accurately characterized as a "standalone photograph." (Opp. at 20.) Defendants also note that the Agreement between Plaintiffs and Guerra was executed after the creation of the work and is not a proper written instrument. (Id. at 21-22.)
Though these alleged inaccuracies may have influenced the Copyright Office's decision to issue a made-for-hire registration, Defendants must prove the registration's invalidity. On this record, Defendants have not offered any evidence suggesting that Plaintiffs had subjective awareness of the facts and law at the time of the application and knowingly mispresented the nature of the Subject Work. Further, assuming this photo was not made for hire, Guerra had original ownership of the image's copyright as the creator. See 17 U.S.C. § 201(a). Guerra then transferred ownership to Plaintiffs by way of assignment. See id. § 201(d). Because the alleged inaccuracies in Plaintiffs' copyright application were curable on that basis, Defendants cannot show that the Register of Copyrights would have refused registration.
Defendants next attack the validity of Guerra's assignment, arguing that it fails for lack of consideration. (Opp. at 23-25.) The Agreement is subject to California law. (Abundis-Guillen Decl. Ex. 1 (Agreement) at 2.) California law provides that "[a] written instrument is presumptive evidence of a consideration." Cal. Civ. Code § 1614. Defendants bear the burden of proving want of consideration. See id. § 1615. Defendants have proffered no evidence that rebuts the presumption of consideration. The Agreement remains presumptively supported by valid consideration and ownership of the image was assigned to Plaintiffs. As a result, Defendants have failed to create a triable issue of fact as to the validity of the Subject Work's copyright registration.
Having decided that the copyright registration is valid as a matter of law, the Motion can be granted as to Defendants' liability for copyright infringement only if Plaintiffs also prove the second element: the copying of constituent elements that are original. Defendants do not rebut Plaintiffs' evidence on this second element. The Court therefore treats Plaintiffs' arguments as unopposed and takes its own look at the evidence to decide whether Plaintiffs are "entitled to judgment as a matter of law." Pinder v. Emp. Dev. Dep't, 227 F. Supp. 3d 1123, 1135 (E.D. Cal. 2017) (quoting Leramo v. Premier Anesthesia Med. Grp., 2011 WL 2680837, at *8 (E.D. Cal. July 8, 2011)). To prove that there was a copying of constituent elements, a plaintiff can provide either "evidence of direct copying" or evidence "that the defendant had access to the plaintiff's work and that the two works are substantially similar." Funky Films, Inc. v. Time Warner Ent. Co., 462 F.3d 1072, 1076 (9th Cir. 2006) (internal quotations omitted), overruled on other grounds by Skidmore ex rel. Randy Craig Wolfe Trust v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020).
Here, Plaintiffs have provided sufficient evidence of direct copying to warrant judgment as a matter of law. Defendants obtained a copy of the Subject Work from the internet. (Pls.' Response ¶ 43.) Leaving Gallardo's hair, jewelry, body, hands, clothing, and pose unaltered, Defendants then superimposed the face of a stock-photography model over Gallardo's face. (Pls.' Response ¶ 28.) This Modified Work directly copied several original elements of the copyrighted Subject Work without authorization before being published on two AIIA billboards. (Pls.' Response ¶¶ 30 & 32.) Pena and Wetzel were involved in the process of obtaining a copy of the Subject Work and approving the modifications. (Pls.' Response ¶¶ 45-48.) This conduct establishes AIIA's, Pena's, and Wetzel's liability for copyright infringement as a matter of law. The Court therefore GRANTS Plaintiffs' Motion as to the claims for copyright infringement.
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART Plaintiffs' Motion for Partial Summary Judgment. Plaintiffs have established liability on the copyright claims as a matter of law. But a question of fact remains as to the right-of-publicity claims.