Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 1 of 19 Page ID #:128
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`KATHRYN J. FRITZ (CSB No. 148200)
`kfritz@fenwick.com
`TYLER G. NEWBY (CSB No. 205790)
`tnewby@fenwick.com
`MARY M. GRIFFIN (CSB No. 324073)
`mgriffin@fenwick.com
`NICHOLAS A. SANTOS (CSB No. 335767)
`nsantos@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
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`Attorneys for Defendant
`NEOCORTEXT, INC.
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`FENWICK & WEST LLP
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
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`KYLAND YOUNG, individually and on
`behalf of all others similarly situated,
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`Plaintiff,
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`v.
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`NEOCORTEXT, INC.,
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`Defendant.
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`DEFENDANT NEOCORTEXT,
`INC.’S NOTICE OF MOTION AND
`MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT
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`July 14, 2023
`Date:
`Time: 1:30 p.m.
`Dept: Courtroom 9B
`Judge: Hon. Wesley L. Hsu
`Trial Date: None
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 2 of 19 Page ID #:129
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`NOTICE OF MOTION AND MOTION TO DISMISS
`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
`PLEASE TAKE NOTICE that on July 14, 2023, at 1:30 p.m., or as soon
`thereafter as counsel may be heard, in Courtroom 9B of the above-entitled Court,
`located at 350 W. 1st Street, Los Angeles, CA 90012, Defendant NeoCortext, Inc.
`will, and hereby does, move this Court to dismiss Plaintiff Kyland Young’s
`Complaint in its entirety pursuant to Federal Rules of Civil Procedure 12(b)(6) on the
`grounds that:
`(1) Plaintiff’s right of publicity claim is preempted by the Copyright Act;
`(2) Plaintiff’s right of publicity claim is barred by the First Amendment; and
`(3) Plaintiff fails to plead a prima facie violation of his right of publicity.
`Defendant’s Motion is made on this Notice, the accompanying Memorandum
`of Points and Authorities, all pleadings and papers that are of record in this case, and
`on such other and further evidence as may be offered at the hearing.
`This Notice of Motion is made following the conference of counsel for
`Defendants and Plaintiff under L.R. 7-3, which took place on May 24, 2023, where
`the parties thoroughly discussed the substance and potential resolution of the filed
`motion by videoconference. The parties were unable to reach a resolution, and
`Plaintiff opposes the Motion.
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`Dated: May 31, 2023
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`FENWICK & WEST LLP
`By: /s/ Tyler G. Newby
`Tyler G. Newby
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`Attorneys for Defendant
`NEOCORTEXT, INC.
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 3 of 19 Page ID #:130
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`TABLE OF CONTENTS
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`ATTORNEYS AT LAW
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`Page
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`I.
`INTRODUCTION ........................................................................................... 1
`FACTS ALLEGED .......................................................................................... 2
`II.
`III. LEGAL STANDARD ...................................................................................... 3
`IV. ARGUMENT .................................................................................................. 3
`A.
`The Copyright Act Preempts Plaintiff’s Claim. .................................... 4
`1.
`The subject matter of Plaintiff’s right of publicity claim
`falls within the subject matter of copyright. ............................... 4
`Plaintiff asserts rights that are equivalent to rights within
`the general scope of copyright. ................................................... 6
`Plaintiff’s Right of Publicity Claim is Also Barred by the First
`Amendment. ........................................................................................ 10
`Plaintiff Fails to Plead a Prima Facie Violation of His Right of
`Publicity. .............................................................................................. 11
`CONCLUSION ............................................................................................. 13
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`2.
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`B.
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`C.
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`V.
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`CASES
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ............................................................................................. 3
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ....................................................................................... 3, 12
`CBS Broad. Inc. v. Am. Broad. Cos., et al.,
`C.D. Cal. Case No. 12-CV-04073-GAF-JEMx .................................................... 5
`Conservation Force v. Salazar,
`646 F.3d 1240 (9th Cir. 2011) .............................................................................. 3
`Creative Photographers, Inc. v. Brook Collection, LLC,
`No. 2:20-cv-09261-RGK-E, 2021 WL 3568243 (C.D. Cal July 7, 2021) ........... 9
`Downing v. Abercrombie & Fitch,
`265 F.3d 994 (9th Cir. 2001) ............................................................................ 8, 9
`Hilton v. Hallmark Cards,
`599 F.3d 894 (9th Cir. 2009) ................................................................................ 3
`In re Gilead Scis. Sec. Litig.,
`536 F.3d 1049 (9th Cir. 2008) .............................................................................. 3
`Kirby v. Sega of Am., Inc.,
`144 Cal. App. 4th 47 (2006) ......................................................................... 10, 11
`Laws v. Sony Music Ent., Inc.,
`448 F.3d 1134 (9th Cir. 2006) .......................................................................... 6, 7
`Maloney v. T3Media, Inc.,
`853 F.3d 1004 (9th Cir. 2017) ..................................................................... passim
`Playboy Enters., Inc. v. Terri Welles, Inc.,
`78 F.Supp.2d 1066 (S.D. Cal. 1999) .................................................................... 9
`Van Buskirk v. Cable News Network, Inc.,
`284 F.2d 977 (9th Cir. 2002) ................................................................................ 5
`White v. City of Sparks,
`500 F.3d at 956 (9th Cir. 2007) .......................................................................... 11
`Winter v. DC Comics,
`30 Cal. 4th 881 (2003) .................................................................................. 10, 11
`STATUTES AND RULES
`17 U.S.C. § 102 ...................................................................................................... 4, 5
`17 U.S.C. § 103 .......................................................................................................... 4
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`17 U.S.C. § 106 ...................................................................................................... 4, 6
`Cal. Civ. Code § 3344 .................................................................................. 3, 4, 7, 12
`Copyright Act ................................................................................................... passim
`Federal Rules of Civil Procedure 12(b)(6) .............................................................. 3, 5
`Federal Rules of Evidence 201(b) ............................................................................. 5
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`I.
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`INTRODUCTION
`Plaintiff brings a copyright infringement action masquerading as a right of
`publicity case. Plaintiff is a reality television personality who has appeared on two
`CBS shows. Through this case, he seeks to recoup windfall damages from
`NeoCortext, a Ukrainian startup company whose Reface app allows users to make
`humorous modifications to photos and video clips from TV programs, movies, and
`Internet memes by swapping their faces for the faces of people appearing in the
`scenes. A few of the video clips and photos that Reface users can modify in this way
`are scenes from television shows in which Plaintiff appeared that Defendant procured
`from other sources. As one of many performers in those shows, Plaintiff almost
`certainly does not own the copyrights in the shows or photo stills from them. Faced
`with that inconvenient fact, Plaintiff instead claims Defendant has used his likeness
`without his consent. But this path is well-trodden, and the result is always the same,
`as it must be here: Where a right of publicity claim is based entirely on display,
`reproduction, or modification of a copyrighted work, like an episode of a TV show,
`the Copyright Act preempts the claim.
`Even if copyright did not preempt Plaintiff’s claim, the First Amendment bars
`it. Actors, celebrities, musicians, athletes, and other well-known people often try to
`control the proliferation of their photographic images, videos, and likeliness through
`the use of right of publicity lawsuits. Plaintiff, while not quite at that status, seeks to
`quash the creative efforts of Reface users through this lawsuit. But because the uses
`of likenesses were purely to enable users to create their own unique, sometimes
`humorous and absurd expressions, the First Amendment protects the use.
`Finally, Plaintiff’s claim fails because he fails to plead the requisite facts to
`allege a plausible violation of his right of publicity. The Complaint does not allege
`that NeoCortext knowingly used Plaintiff’s name, photographs, and likeness, or that
`his name was even used in the first instance. Nor does the Complaint sufficiently
`allege that NeoCortext’s use of a watermark constitutes advertising.
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 7 of 19 Page ID #:134
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`For the reasons below, the Court should grant NeoCortext’s Motion to Dismiss
`and dismiss Plaintiff’s complaint in its entirety.
`FACTS ALLEGED
`II.
`Defendant NeoCortext is “the developer of the Reface app, which is available
`for download to smartphones through both the Google Play Store and the Apple App
`Store.” Compl. ¶ 6. NeoCortext offers a free version of the app and a paid version.
`Id. ¶ 14. Both versions of the Reface app grant users access to a database of a pre-
`set catalogue. Id. The pre-set catalogue includes photos and videos of various
`“actors, musicians, athletes, celebrities, and/or other well-known individuals,” id. ¶
`1, which were taken from either “mybestgif.com, https://tenor.com/, Google Video,
`[or] Bing Video.” Id. ¶ 15. Through the Reface app, users can create new visual
`works and digital content by uploading pictures and images from their smartphone
`and choosing to swap their faces with faces from the pre-set images contained in the
`Reface app. Id. ¶ 2. The new images are commonly “shared by Free Users to ‘freak
`out friends.’” Id. ¶ 21.
`The newly created photos and video clips have both creative and aesthetic value.
`Id. ¶¶ 4, 21. Aside from the expressive value and being able to “‘Become Anyone You
`Wished to Be,’” id. ¶ 3, the Complaint alleges that the new works are also distinctive
`from the originals. For instance, the Complaint alleges that the Reface app “generates
`a new watermarked image or video where the individual depicted in the Pre-Sets
`catalogue has his or her face swapped with the upload face. The watermarked image
`or video [] prominently displays the Reface application’s logo and states ‘made with
`reface app.” Id. ¶ 2. The Complaint also alleges that the watermarked photos
`constitute advertisements and thus commercially exploit Plaintiff and other celebrities.
`Id. ¶ 21. Plaintiff alleges that “the watermarks detract from the aesthetic value of the
`images and thus incentivize Free Users to pay to remove them” and “even if the Free
`User does not pay for a subscription, the watermarks also serve as free advertising to
`attract new downloads of the Reface app. Id.
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`On these allegations, Plaintiff brings a single claim for violation of California’s
`statutory right of publicity, Cal. Civ. Code § 3344.
`III. LEGAL STANDARD
`Dismissal for failure to state a claim under Federal Rule of Civil Procedure
`12(b)(6) is proper when there is a “lack of a cognizable legal theory or the absence
`of sufficient facts alleged under a cognizable legal theory.” Conservation Force v.
`Salazar, 646 F.3d 1240, 1242 (9th Cir. 2011) (quoting Balistreri v. Pacifica Police
`Dep’t, 901 F.2d 696, 699 (9th Cir. 1988)). The complaint must plead “enough facts
`to state a claim [for] relief that is plausible on its face.” Bell Atl. Corp. v. Twombly,
`550 U.S. 544, 570 (2007). A claim is plausible on its face “when the plaintiff pleads
`factual content that allows the court to draw the reasonable inference that the
`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678
`(2009). If the facts alleged do not support a reasonable inference of liability, stronger
`than a mere possibility, the claim must be dismissed. Id. at 678-79; see also In re
`Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008) (stating that a court is
`not required to accept as true “allegations that are merely conclusory, unwarranted
`deductions of fact, or unreasonable inferences.”).
`IV. ARGUMENT
`Plaintiff brings a single claim for violation of the statutory right of publicity
`under California Civil Code § 3344. The right of publicity seeks to prevent
`commercial exploitation of an individual’s identity without that person’s consent.
`See Hilton v. Hallmark Cards, 599 F.3d 894, 910 (9th Cir. 2009) (explaining that the
`core of the right of publicity is preventing the “merchandising [of] a celebrity’s image
`without that person’s consent.”). To bring a statutory right of publicity claim under
`§ 3344, a plaintiff must allege: “(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; [ ] (4) resulting injury;” and (5) “there
`must also be an allegation of a knowing[ly] use of the plaintiff’s name, photograph
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`or likeness for purposes of advertising or solicitation or purchases.” Cal. Civ. Code
`§ 3344(a); Maloney v. T3Media, Inc., 853 F.3d 1004, 1008 n.2 (9th Cir. 2017).
`Plaintiff’s claim fails because: (a) it is preempted by the Copyright Act; (b) the First
`Amendment bars Plaintiff’s claim; and (c) because Plaintiff fails to plead a prima
`facie violation of his right of publicity.
`A. The Copyright Act Preempts Plaintiff’s Claim.
`“The Copyright Act affords copyright owners the ‘exclusive rights’ to display,
`perform, reproduce, or distribute copies of a copyrighted work, to authorize others to
`do those things, and to prepare derivative works based upon the copyrighted work.”
`Maloney, 853 F.3d at 1010 (citing 17 U.S.C. § 106). Section 301 of the Copyright
`Act preempts state-law claims that “come within the subject matter of copyright” and
`assert rights that are “equivalent” to the exclusive rights provided to copyright owners
`under the Copyright Act. 17 U.S. C. § 301(a).
`The Ninth Circuit applies a two-part test to determine whether the Copyright
`Act preempts a state-law claim. Maloney, 853 F.3d at 1010. First, the Court must
`determine whether the subject matter of the state-law claim falls within the subject
`matter of copyright as described in 17 U.S.C. §§ 102-103. Id. If the first requirement
`is met, the Court then considers “whether the rights asserted under state law are
`equivalent to the rights contained in 17 U.S.C. § 106, which articulates the exclusive
`rights of copyright holders.” Id.
`The subject matter of Plaintiff’s right of publicity claim falls
`1.
`within the subject matter of copyright.
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`Plaintiff’s claim is within the subject matter of copyright. The Copyright Act
`defines the “subject matter of copyright” to include “original works of authorship
`fixed in any tangible medium of expression . . . from which they can be perceived,
`reproduced, or otherwise communicated, either directly or with the aid of a machine
`or device.” 17 U.S.C. § 102(a). “Works of authorship” include “pictorial or graphic”
`works. Id. § 102(a)(5). In Maloney, under step one, the Ninth Circuit explained that
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`state law right of publicity claims are preempted by the Copyright Act “when a
`likeness has been captured in a copyrighted artistic visual work and the work itself is
`being distributed for personal use.” Id. at 1011. But a right of publicity claim is not
`preempted when the claim concerns the use of one’s name or likeness in advertising
`or the sale of merchandise. Id.
`The core of Plaintiff’s right of publicity claim is that Defendant used
`photographs and videos of him from the CBS television program, Big Brother, in the
`free version of its Reface app. See Compl. ¶ 2 (“[t]he free version grants the Free
`User access to the Reface library of movie and show clips and images.”); id. ¶ 22
`(explaining that the pre-set catalogue “contains images and videos often depicting
`individuals’ physical bodies in the role for which they are famous”); id (“[i]n Mr.
`Young’s case, the Reface application allows users to swap their face on his body
`from scenes on CBS’s big brother). The photo stills, video clips, and the Big Brother
`program are clearly within the subject matter of copyright, and Plaintiff has not
`alleged that he is the copyright holder. Indeed, CBS, as the exclusive licensee of the
`Big Brother program, has previously sued another network for allegedly infringing
`copyrights in Big Brother. See, e.g., CBS Broad. Inc. v. Am. Broad. Cos., et al., C.D.
`Cal. Case No. 12-CV-04073-GAF-JEMx, Complaint (Dkt. 1) at ¶¶ 74-81.1 The use
`of photographs of Plaintiff falls within the subject matter of copyright. See Maloney,
`853 F.3d at 1011.
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`1 When ruling on a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a district court
`properly considers facts for which judicial notice may be taken. See Van Buskirk v.
`Cable News Network, Inc., 284 F.2d 977, 908 (9th Cir. 2002). Federal Rules of
`Evidence 201(b) authorizes courts to take judicial notice of facts that are “not subject
`to reasonable dispute” and “can be accurately and readily determined from sources
`whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). The
`existence of CBS’s assertion of an exclusive license in Big Brother in a copyright
`infringement case is “not subject to reasonable dispute” because it is both generally
`known within the jurisdiction and can be accurately and readily determined from
`sources whose accuracy cannot reasonably be questioned, as it is available on this
`Court’s ECF system.
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`2.
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`Plaintiff asserts rights that are equivalent to rights within
`the general scope of copyright.
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`Plaintiff’s right of publicity claim asserts rights that are equivalent to those
`protected by copyright law. Section 106 of the Copyright Act affords copyright
`owners “exclusive rights” to display, perform, reproduce, distribute or create
`derivative copies of their copyrighted works. 17 U.S.C. § 106. To survive
`preemption, the asserted state-law right must protect rights that are “qualitatively
`different from” the rights protected by copyright law. Laws v. Sony Music Ent., Inc.,
`448 F.3d 1134 (9th Cir. 2006) (citation omitted). For that reason, non-preempted
`claims must have an “extra element” that is sufficient to “transform the nature of the
`action.” Id. at 1144. “But where a likeness has been captured in a copyrighted artistic
`visual work and the work itself is being distributed for personal use, a publicity right
`claim is little more than a thinly disguised copyright claim” that is preempted.
`Maloney, 853 F.3d at 1016.
`Here, Plaintiff does not identify any use of his name, voice, photograph, or
`likeness independent of Defendant’s use of the copyrighted photos or videos in which
`Plaintiff is depicted. Rather, Plaintiff claims that Defendant violated his statutory
`right of publicity by displaying the photographs in which he appears (Compl. ¶¶ 18,
`22); displaying those photographs in its online “Pre-sets” database of photographs
`(id. ¶¶ 24, 39); allowing end users to “generate [] a new watermarked image or video
`where the individual depicted in the Pre-sets catalogue has his or her face swapped”
`with the face that was uploaded by the free user (id. ¶19); which “commercially
`exploit [Plaintiff] and other class members’ identities to promote paid subscriptions
`to the Reface application,” (id. ¶ 21). Thus, Plaintiff’s claim presumes that Reface
`displays an expressive work—his photo or clips from Big Brother—and allows users
`to create and distribute derivative works from that work without his permission, both
`of which are exclusive rights under the copyright law. Plaintiff’s claim alleges
`nothing more and, therefore, lacks the “extra element” required by law and thus is
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`6
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 12 of 19 Page ID #:139
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`qualitatively no different from a copyright claim. See Laws, 448 F.3d at 1144 (“[t]he
`mere presence of an additional element (‘commercial use’) in section 3344 is not
`enough to qualitatively distinguish [a] right of publicity claim from a claim in
`copyright.”). Therefore, Defendant’s use of Plaintiff’s image is entirely subsumed
`by the rights protected by copyright law and granted to copyright holders, which
`Plaintiff is not. Id.; Maloney, 853 F.3d at 1019.
`Plaintiff’s claim here does not differ materially from the claim in Maloney,
`which the Ninth Circuit held was preempted by Copyright Act. In Maloney, college
`athletes sued the operator of a website that displayed and sold photos of plaintiffs and
`other athletes that defendant had licensed from the NCAA. Id. at 1011-12. The Ninth
`Circuit rejected plaintiffs’ argument that because defendant made a commercial use
`of their images, their right of publicity claim survived preemption. Id. at 1138-40.
`Because the defendant simply displayed copyrighted photos and sold those photos,
`the publicity claims overlapped completely with the rights of the copyright owner.
`Id. Plaintiff’s claim here is the same. The essence of his claim is that Reface displays
`photos or video clips of him from CBS shows, and which users can view, make
`derivative works of and then distribute. Those rights are no different from those
`reserved by copyright owners and, therefore Plaintiff’s right of publicity claim is
`preempted.
`Plaintiff will likely argue that Defendant’s addition of a watermark to the
`photos and videos users create when using the free version of Reface transform the
`photos into “teaser” advertisements, which use is not preempted. But the “teaser”
`terminology is a misnomer invented by the Plaintiff. Reface’s free version is a fully
`functional version of the app that is not a time or usage limited promotion, like a true
`teaser. Like many software products with different feature levels, the PRO version
`offers features that are not available in the free version. The fact that the PRO and
`free versions have different feature sets does not make the free version an
`advertisement for the PRO version.
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`7
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 13 of 19 Page ID #:140
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`The free version is no different from the PRO version in its core feature. Both
`allow users to access photos and video clips from the “Pre-Sets” libraries. Both allow
`users to create derivative works from those source materials. The Complaint makes
`clear that Plaintiff's right of publicity claims arise out of the display and ability of
`free Reface users to modify photos and video clips of TV shows in which Plaintiff
`appeared. See Compl. ¶ 22 (“[t]he free version grants the Free User access to the
`Reface library of movie and show clips and images.”); id. ¶ 22 (describing how
`NeoCortext’s pre-sets catalogue “contains images and videos often depicting
`individuals’ physical bodies in the role for which they are famous”); id. (“In Mr.
`Young’s case, the Reface applications allows users to swap their face on his body
`from scenes on CBS’s big brother.”). While the Complaint incants the words
`“advertising” and “commercial,” the conduct that forms the basis of his complaint is
`equivalent to copyright rights. Plaintiff nowhere alleges that Defendant uses his face
`on merchandise that it sells or in advertisements that it uses to promote its products.
`At most, the Complaint alleges Defendant automatically imposes a digital
`watermark on the modified photos or GIFs that do not contain his image that free
`version users create. But simply placing a watermark on an item is not advertising.
`Where courts have found a use of an image or likeness to be for an advertising or
`commercial purpose that avoids copyright preemption, the defendant used the image
`or likeness in advertising that was separate from the copyrighted work itself. See
`Downing v. Abercrombie & Fitch, 265 F.3d 994, 1000 (9th Cir. 2001). In Downing
`the Ninth Circuit held that the Copyright Act did not preempt Plaintiff’s right of
`publicity claim against a clothing retailer that used Plaintiff’s name and photos of
`him in its catalogue which was the company’s “largest advertising vehicle.” Id. at
`999, 1000. The defendant also created t-shirts, exactly like those worn by the plaintiff
`in the photographs and advertised them for sale in the catalogue. Id. The Court held
`that the use of Plaintiff’s name and likeness in its primary advertising channel was
`not preempted. Id. at 1005.
`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`8
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`In Maloney, the Ninth Circuit clarified that “Downing did not mint a
`categorical rule that publicity-right claims ‘relating to a likeness in a photograph’ are
`not subject to preemption.” Maloney, 853 F.3d at 1012. Rather, the preemption
`analysis turns on how the likeness is used. Id. In Maloney, as here, the plaintiff’s
`right of publicity claims were based on the alleged display, distribution, and sale of
`the copyrighted work itself in which the plaintiff’s image appeared. Id. The alleged
`commercial use was simply the display and sale of the copyrighted work—both of
`which were rights exclusively granted under copyright, and the Maloney plaintiff’s
`claim was thus, which was preempted. In Downing, on the other hand, the defendant
`used photos of a famous surfer to in advertisements for its surf-themed apparel.
`Because the defendant was not selling the photos of the Plaintiff, but was using his
`persona to advertise clothes—something separate from the original works—the use
`was commercial and advertising. The claim therefore had an additional element and
`was not subsumed into copyright. Id. at 1013 (quotations omitted).
`Unlike Downing, here, Defendant simply places its watermark on the user’s
`newly generated photos as a way to distinguish the new work from the original work.
`Defendant does not, nor does the Complaint allege, sell products depicting
`photographs of Plaintiff. Indeed, watermarks serve as a common way to limit the
`utility of an object, not further it. For example, Getty Images uses a watermark on
`all of its photos, but that use does not operate as an advertisement. Common sense
`dictates that the watermark is used to convey limits on use of the image so that it
`won’t be used commercially. See Creative Photographers, Inc. v. Brook Collection,
`LLC, No. 2:20-cv-09261-RGK-E, 2021 WL 3568243, at * 1 (C.D. Cal July 7, 2021)
`(“Plaintiff placed a watermark on the center of the image, thereby protecting it with
`copyright management information.”); Playboy Enters., Inc. v. Terri Welles, Inc., 78
`F.Supp.2d 1066, 1087-88 (S.D. Cal. 1999) (explaining the court’s “befuddlement at
`the oxymoronic meaning” that a watermark, which “is usually located in the
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`NEOCORTEXT’S NOTICE OF MOTION
`AND MOTION TO DISMISS
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`9
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`
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`Case No.: 2:23-cv-02496-WLH(PVCx)
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`

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`Case 2:23-cv-02496-WLH-PVC Document 33 Filed 05/31/23 Page 15 of 19 Page ID #:142
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`background and not the foreground of a page” could be so prominent as to constitute
`a commercial theme), reversed on other grounds, 279 F.3d 796, 804 (9th Cir. 2002)).
`Plaintiff’s Right of Publicity Claim is Also Barred by the First
`B.
`Amendment.
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`ATTORNEYS AT LAW
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`Plaintiff cannot prevail on his right of publicity claim for the independent
`reason that the claim violates the expressive rights of Defendant and its users that are
`guaranteed by the First Amendment. The California Supreme Court has observed that
`the “right of publicity threatens two purposes of the First Amendment: (1) preserving
`an uninhibited marketplace of ideas; and (2) furthering the individual right of self-
`expression.” Winter v. DC Comics, 30 Cal. 4th 881, 887 (2003). “[B]ecause
`celebrities take on personal meanings to many individuals