Litigation over who owns a makeup design preempted by copyright law. MOURABIT v. KLEIN

A copyright is a set of exclusive rights granted to the creator of a new work of expression when it is fixed in a tangible medium. Copyright protects works like photographs, sculpture, literature and software. Copyright law grants the owner of a copyright the exclusive right to reproduce, distribute, perform, display transmit or make derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement. A copyright owner can file a lawsuit to stop copyright infringement with an injunction and get monetary damages for copyright infringement which has occurred.

Copyright law does not exist in a vacuum. In the United States, like most other jurisdictions, several different sections of law must be complied with when filing a lawsuit. A plaintiff may have a meritorious cause of action and still fail to get a judgement in their favor, if the plaintiff does not properly plead their case. Lawsuits filed in the United States are subject to several standards, some are codified and some are based on court precedent.

A copyright infringement lawsuit must be brought in a federal court except in rare exceptions like sound recordings made before 1978. If a plaintiff files a copyright infringement lawsuit in a state court it is likely the defendant will request removal to a federal court or the states court will dismiss the case for lack of subject matter jurisdiction. Even if a plaintiff cites a state law as the basis for the complaint can be dismissed if the state law is similar to federal copyright law.

This is know as preemption. As long as a work fits within one of the general subject matter categories, the federal copyright law prevents the states from protecting the work even if it fails to achieve federal statutory copyright because it is too minimal or lacking in originality to qualify for federal copyright protection. Under the preemption test, the states are precluded from enforcing penalties for copyright violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law.

SAMMY MOURABIT v. STEVEN KLEIN, SHISEIDO INC., 19-2142-cv (2nd Cir. 2020) is a case where preemption frustrated the efforts of a plaintiff.

This case focuses on makeup applied to a model by a makeup artist. In 2015, Shiseido collaborated with Klein to create a holiday makeup collection. Shiseido used one of Klein’s photographs from the photo shoot to promote and advertise their new makeup line.The plaintiff in this case applied the makeup to the model which was the subject of the photo shoot. When photographs from the photo shoot were publicly displayed another makeup artist was credited with the design.

In June 2018, Plaintiff obtained a copyright registration for a drawing of the makeup artistry that was showcased during the photo shoot and filed a complaint against Defendants. The complaint alleged copyright infringement, as well as state law claims of unjust enrichment, unfair competition/misappropriation, and violation of New York General Business Law (“GBL”) § 349. Defendants removed the case to federal court. In federal court Plaintiff conceded that his claim for copyright infringement should be dismissed, but that the state law claims should continue. The district court held that the state law claims were preempted by copyright law and dismissed the case entirely. Plaintiff appealed the case to the Court of Appeals for the Second Circuit.

On appeal Plaintiff argued that that state law claims were not preempted because his makeup design (a) does not fall within one of the categories of copyrightable works set forth in 17 U.S.C. § 102, and (b) the makeup design was not
fixed in a tangible medium of expression. The Second Circuit noted that to meet the subject matter requirement for preemption a work does not need to be copyrightable, the work must merely fit in the category of copyrightable works in the broad sense. Copyright law protects two dimensional drawings, therefore make up fits into a category of works protected by copyright law in a board sense. The question of whether applying make up to a human fixes a work in a tangible medium is something which has not been directly addressed by a court. For the purpose of the appeal the Second Circuit held that fixation occurred when the Plaintiff’s makeup was photographed.

Based on this reasoning, the Second Circuit affirmed the District Court’s decision. The state claims were found to be preempted by federal copyright law.

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