229 Cal. App. 4th 1001
Cal. Ct. App.2014Background
- Timed Out, LLC is the assignee of two professional models who discovered defendants (Youabian, Inc. and Kambiz Youabian) had used the models’ images on defendants’ website to advertise cosmetic medical services without consent.
- The models assigned to Timed Out their rights to bring suit for misappropriation of their images; Timed Out sued for common‑law and statutory misappropriation of likeness (Cal. Civ. Code § 3344).
- Defendants moved for judgment on the pleadings, arguing the right of publicity is a personal tort that cannot be assigned and that the state claims are preempted by federal copyright law.
- The trial court relied on Lugosi v. Universal Pictures and held the right of publicity is personal and nonassignable, granting judgment for defendants.
- The Court of Appeal reversed: it held the pecuniary aspects of the right of publicity (and a cause of action to recover those pecuniary losses) are assignable, a limited or exclusive assignment can confer standing, and the state claims are not preempted by the Copyright Act.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Assignability of right of publicity | Right is a transferable pecuniary interest; assignment valid | Right of publicity is a personal tort and nonassignable (Lugosi) | Assignable when it concerns pecuniary commercial interests; Lugosi does not bar inter vivos assignment |
| Assignability of cause of action / "right to sue" | Assignment of the Models’ pecuniary interest (even limited) gives standing | A naked/right‑to‑sue assignment is insufficient; an exclusive license is required | A chose in action for pecuniary misappropriation is assignable; allegations here support inference of an exclusive or adequate assignment |
| Scope of damages assignable | Plaintiff seeks only pecuniary relief (profits, dilution of commercial value) | Some tort damages (emotional distress, punitive) are personal and nonassignable | Economic damages for commercial misappropriation are assignable; personal damages would not be |
| Copyright preemption | Right of publicity protects persona, not copyrightable authorship; not preempted | Claims seek to prevent display of copyrighted photos and thus are preempted | No preemption: the cause targets commercial use of likeness (persona), not the copyrightable photograph or exclusive rights under §106 |
Key Cases Cited
- Lugosi v. Universal Pictures, 25 Cal.3d 813 (Cal. 1979) (right of publicity described as personal; pre‑death heirs lacked standing where owner never exercised/assigned right)
- Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal.4th 387 (Cal. 2001) (right of publicity protects the economic value of name, voice, likeness)
- Murphy v. Allstate Ins. Co., 17 Cal.3d 937 (Cal. 1976) (bad‑faith insurer cause of action contains assignable and nonassignable components)
- Essex Ins. Co. v. Five Star Dye House, Inc., 38 Cal.4th 1252 (Cal. 2006) (assignability is the rule; purely personal torts are the exception; bad‑faith is a hybrid claim)
- KNB Enters. v. Matthews, 78 Cal.App.4th 362 (Cal. Ct. App. 2000) (distinguishes publicity rights from copyright; state publicity claims are not automatically preempted)
- Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001) (articulates two‑part test for Copyright Act preemption of state claims)
- Crown Co. v. Nye Tool Works, 261 U.S. 24 (U.S. 1923) (patent/copyright statutory regimes can limit common‑law assignability rules)