By Robert B. Barnett Jr., J.D.
As yet, no federal appeals court has addressed whether a human body part may qualify as a tangible medium of expression for copyright purposes, but this one came close.
In a suit in which a makeup artist’s state law claims against a photographer and a makeup manufacturer were dismissed as preempted by the Copyright Act, the decision was affirmed on appeal because (1) makeup artistry falls "comfortably within" the preemption categories listed in §102(a) and (2) the makeup work was "fixed in a tangible medium" because it was captured in a photograph, the U.S. Court of Appeals in New York has ruled in a summary order. Although the lower court held that makeup applied to a human face was a sufficient "tangible medium," the appellate court opted instead to rule that the tangible medium was the photograph taken of the human face with the makeup applied. As a result, the lower court correctly ruled that the Copyright Act preempted the unjust enrichment and unfair competition/misappropriation claims (Mourabit v. Klein, June 8, 2020, per curiam).
Background. Shiseido International collaborated with the fashion photographer Steven Klein to create a holiday makeup collection. To promote the new line, Shiseido used an earlier photograph that Klein had taken of the actress Juliette Lewis. Sammy Mourabit is a makeup artist. He sued Shiseido, Klein, and others, contending that they violated his rights in the makeup that appeared on Lewis’ face in the photograph by using his makeup artistry without his permission or attribution. His complaint asserted claims for copyright infringement, unjust enrichment, unfair competition/misappropriation, and violations of New York business law.
Just before filing suit, the makeup artist obtained a copyright registration for a drawing of the makeup artistry that Lewis had showcased during the original photoshoot, which became the basis for his copyright infringement claim. Before the photographer and the others filed their first response, however, the makeup artist agreed to dismiss his copyright infringement claim, leaving only the state law claims. After the photographer and the others filed motions to dismiss, the court granted the motions, ruling that the copyright infringement claim had been abandoned and that the Copyright Act preempted the unjust enrichment and unfair competition/misappropriation claims. It also refused to exercise supplemental jurisdiction over the New York business law violations claim. The makeup artist appealed.
Preemption. The Copyright Act’s preemption rule contains two requirements: (1) claims must apply to a work of authorship fixed in a tangible medium of expression that falls within the ambit of one of the copyrightable categories of copyrightable works and (2) claims must seek to vindicate legal or equitable rights that are equivalent to one of a bundle of exclusive rights already protected by copyright law (Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004)). This appeal involved only the first element. The makeup artist, however, contested both aspects of that first requirement. Thus, he contended both that (1) the work was not fixed in a tangible medium and (2) the work did not fall within one of the copyrightable categories.
Categories. The court noted that the scope of copyright preemption is broader than the scope of copyrightable materials. As a result, it did not need to determine whether makeup artistry is a copyrightable work. Nevertheless, the appellate court said, "we conclude that, for preemption purposes only, [the makeup artist’s] Makeup Artistry falls comfortably within ‘the broad ambit of the subject matter categories listed in section 102(a).’" In particular, the court said, it fell within the category for "pictorial, graphic, and sculptural works," which is a category that included pictures, paintings, or drawings. The makeup artistry fit into the category, the court said, "because it is essentially a painting that is displayed on a person’s face." It included a decorative arrangement of colors and shapes. As a result, it shared enough features with the category of pictorial, graphic, and sculptural works to fall within the "broad ambit" of §102(a).
Fixed in a medium. The makeup artist also argued that preemption did not apply because a human face was not a fixed medium. Human skin is not a tangible medium of expression, he argued, and, even if it were, the makeup applied to the face was not sufficiently permanent. The trial court rejected the makeup artist’s arguments and concluded that the human face was a tangible fixed medium of expression. As yet, no federal appeals court has addressed whether a human body part may qualify as a tangible medium of expression for copyright purposes. The Second Circuit, however, rather than answer that question, chose an alternate ground for affirming the ruling. It ruled that the fixed medium was the photograph of the face containing the makeup artistry. The court pointed out that a work with intangible properties can be embodied in any number of different material objects, citing music that can exist as sheet music, an audiotape, or a computer hard drive and a poem that can exist in a book, in a magazine, or on an internet server. In this case, the makeup artistry existed in a photograph. As a result, the makeup artistry was reproduced for more than a transitory period, and it met all the requirements for preemption.
The court, therefore, affirmed the trial court’s dismissal of the state law claims on the basis of preemption under the Copyright Act.
This case is No. 19-2142-cv.
Attorneys: Mark Warren Moody (M W MOODY LLC) for Sammy Mourabit. Angelo Distefano (Pelosi Wolf Effron & Spates LLP) for Steven Klein, Steven Klein Studio, LLC. and Steven Klein Studio Inc.
Companies: Steven Klein Studio, LLC; Steven Klein Studio Inc.
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