September 27, 2021

Volume XI, Number 270

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September 24, 2021

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Second Circuit Avoids “Making Up” Copyright Ruling Finding Artist’s Claims Preempted

In a non-precedential ruling, the US Court of Appeals for the Second Circuit affirmed the dismissal of a makeup artist’s lawsuit filed against a fashion photographer, finding the plaintiff’s state unjust enrichment and unfair competition/misappropriation claims were preempted by the Copyright Act. Sammy Mourabit v. Steven Klein, Case No. 19-2142-cv (2d Cir. June 8, 2020) (Summary Order).

In 2013, Sammy Mourabit was the makeup artist for a W Magazine editorial shoot featuring actress Juliette Lewis and photographed by Steven Klein. Two years later, photographs from the W Magazine shoot were used in connection with Klein’s collaboration with a cosmetics company. Mourabit was not credited for the makeup in the cosmetics campaign, which instead implied to consumers that Lewis’s makeup look had been created by an artist affiliated with the cosmetics brand.

After Mourabit obtained a copyright registration for a drawing of the makeup artistry showcased in the cosmetics campaign, he filed a complaint against Klein and others alleging copyright infringement, as well as state law claims of unjust enrichment and unfair competition/misappropriation. Early in the proceeding, Mourabit conceded that his copyright claim based on the registered drawing of his makeup look should be dismissed. The parties continued to disagree, however, as to whether Mourabit’s state law claims were preempted by the federal Copyright Act.

The district court found that Mourabit’s state law claims fell within the preemptive scope of the Copyright Act because makeup artistry is of a type of work that fits into the “pictorial, graphic and sculptural works” copyright category and could be “fixed in a tangible medium of expression.” Mourabit therefore appealed the district court’s dismissal of his state law claims under such preemption.

The Copyright Act preempts a state law claim when (1) “the claim applies to a work of authorship fixed in a tangible medium of expression and falling within the ambit of one of the categories of copyrightable works” and (2) “the claim seeks to vindicate legal or equitable rights that are equivalent to…exclusive rights already protected by copyright law…” Mourabit’s appeal challenged only the lower court’s assessment of the first preemption prong, or the “subject matter requirement,” as referred to in Second Circuit precedent.

To avoid preemption of his state law claims, Mourabit was forced to argue that his work of makeup artistry for the W Magazine photo shoot did not meet the subject matter requirement for copyright protection. Specifically, Mourabit claimed that his makeup artistry was not protectable because it did not fall within one of the categories of copyrightable works set forth in the Copyright Act, and because his makeup artistry “was not fixed in a tangible medium of expression.” The Second Circuit disagreed with both of Mourabit’s assertions.

First, the Second Circuit explained that it was not required to decide whether Mourabit’s makeup artistry is a copyrightable work because the scope of copyright preemption is “broader than the scope of copyrightable materials.” Instead, for his state law claims to be preempted by the Copyright Act, Mourabit’s makeup artistry does not have to consist entirely of copyrightable material and only has to fit into one of the copyrightable categories “in a broad sense.” Here, the Court found that Mourabit’s makeup artistry is essentially a painting displayed on a person’s face. Nevertheless, the Court stopped short of holding that Mourabit’s makeup artistry qualifies as a copyrightable work of authorship. Instead, the Court found that for preemption purposes only, the work shares enough features with the category of pictorial, graphic and sculptural works to fall within the “broad ambit” of the Copyright Act and, therefore, subject to copyright preemption.

Therefore, with Mourabit’s work having been found to fall within the ambit of one of the categories of copyrightable works, the Second Circuit affirmed the district court’s dismissal of Mourabit’s state law claims as preempted

Practice Note: The Second Circuit dodged the plaintiff’s assertion that his makeup artistry fails to satisfy the preemption subject matter requirement because the work was not fixed in a tangible medium of expression. Despite a “lively academic debate” on the issue and no federal appeals court precedent addressing whether a human body part (in this case, a model’s face) may qualify as a tangible medium of expression for purposes of copyright protection, the Court determined that it “need not venture further into this uncharted territory” or speak to the district court’s affirmative conclusion on this point. Rather, the Court alternatively held that makeup artistry was sufficiently fixed in a photograph at issue and that the Copyright Act provides that a work of authorship may be fixed by or under the authority of the author.

© 2021 McDermott Will & EmeryNational Law Review, Volume X, Number 176
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About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney
Associate

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

949-757-6001
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