Hill v. Pub. Advocate of the United States

Wiley Y. Daniel

Motions granted in part and denied in part.

Anjali Jayanand Nair, David C. Dinielli, Samuel Eugene Wolfe, Montgomery, AL, Christopher L. Larson, Kathryn Ann Feiereisel, Faegre Baker Daniels LLP, Denver, CO, Daniel David Williams, Faegre Baker Daniels LLP, Boulder, CO, Daralyn Jeannine Durie, Joseph Charles Gratz, Durie Tangri, LLP, San Francisco, CA, for Plaintiffs. Barry Kevin Arrington, Arrington Law Firm, Centennial, CO, Christopher Michael Collins, Vanderpool Frostick & Nishanian, P.C., Manassas, VA, Laurin Howard Mills, David Alan Warrington, Leclairryan, PC, Alexandria, VA, Terrance L. Ryan, The Terry Ryan Law Firm, LLC, Fort Collins, CO, for Defendants.

Wiley Y. Daniel, Senior U.S. District Judge

THIS MATTER is before the Court on defendant, Public Advocate of the United States' Motion To Dismiss Plaintiffs' First Amended Complaint [ECF No. 101] and defendants, National Association for Gun Rights, Rocky Mountain Gun Owners, Lucius O'Dell, Andrew Brown, and Dudley Brown's Motion To Dismiss The First Amended Complaint [ECF No. 106]. For the reasons stated below, the motions are GRANTED IN PART and DENIED IN PART.

The Plaintiffs admit that they were injured in New Jersey. ECF No. 109, p. 10, ¶ 4. However, the Plaintiffs state that in this specific context, the fact that they were injured in New Jersey is not dispositive. The Plaintiffs rely on Elvig v. Nintendo of Am., Inc., 696 F.Supp.2d 1207 (D.Colo.2010), for the proposition that when the place of injury “is simply fortuitous, having little relation to the occurrence and the parties with respect to the particular issue, the place of injury is not accorded significance.” ECF No. 109, p. 10, ¶ 4 (internal quotation marks omitted) (quoting Elvig, 696 F.Supp.2d at 1210–11). Elvig did not involve a privacy tort, as is the case here. Because the place of injury regarding privacy torts is not always clearly ascertainable in comparison to other torts, I do not find the statement cited to in Elvig dispositive.

It is undisputed that Edwards and Privitere suffered injury in New Jersey. However, Edwards and Privitere also suffered injury in Colorado, the place where approximately 7,400 mailers were distributed. The mere fact that Edwards and Privitere were not physically present in Colorado during the distribution of mailers does not automatically preclude a finding that they suffered injury in Colorado. It is counterintuitive to state that Edwards and Privitere did not suffer injury in Colorado when approximately 7,400 Colorado residents received mailers mocking Edwards and Privitere's sexual preference in an attempt to influence state elections. Thus, I find that Edwards and Privitere sustained injury in both Colorado and New Jersey and this factor is neutral.

Taking the allegations in the First Amended Complaint [ECF No. 92] as true, as I must at this stage of the proceedings, Andrew Brown, Dudley Brown, and O'Dell played a significant role in preparing the mailers and all are alleged to reside in Colorado. See ECF No. 92, p. 8, ¶ 30 and p. 9, ¶¶ 31–32. Spectrum Marketing Companies, Inc. (“Spectrum”), a New Hampshire company, also played a role in preparing the mailers as the Plaintiffs alleged that “O'Dell coordinated the logistics of printing and distributing the Mailers with Spectrum ...” Id. at p. 14, ¶ 60. Thus, I find that the conduct causing the injury occurred in Colorado and New Hampshire. Because the choice of law dispute is between Colorado and New Jersey and because no conduct causing the injury occurred in New Jersey, this factor favors application of Colorado state tort law.

According the Plaintiffs' allegations: (1) Edwards and Privitere are New Jersey residents; (2) Public Advocate is a Washington, D.C. corporation with its principal place of business in Virginia; and, (3) Rocky Mountain is Colorado corporation with its principal place of business in Colorado. This factor is neutral.

The only relationship between Edwards and Privitere and Public Advocate and Rocky Mountain is that Edwards and Privitere are victims of the alleged tort. Thus, this factor is neutral.

Based on my analysis of the factors stated in Restatement (Second) of the Conflicts of Laws § 145, I find that Colorado has the most significant relationship to the occurrence and parties. Edwards and Privitere sustained injury in Colorado and significant acts in preparing the mailers occurred in Colorado via Andrew Brown, Dudley Brown, and O'Dell. The only relationship New Jersey has with this action is that Edwards and Privitere reside there and sustained injury there. Thus, Colorado has the most significant relationship to the occurrence and the parties and Colorado state tort law will apply.

In order to prevail on a Colorado state law tort claim for appropriation of name or likeness, a plaintiff must establish: “(1) the defendant used the plaintiff's name or likeness; (2) the use of the plaintiff's name or likeness was for the defendant's own purposes or benefit, commercially or otherwise; (3) the plaintiff suffered damages; and (4) the defendant caused the damages incurred.” Joe Dickerson & Assocs., L.L.C. v. Dittmar, 34 P.3d 995, 997 (Colo.2001). A plaintiff will not prevail on this claim if a “defendant's use of the plaintiff's name and likeness is privileged under the First Amendment.” Id. Whether a defendant's use of a plaintiff's name or likeness is privileged under the First Amendment is a question of law. Id. at 1003.

Public Advocate and Rocky Mountain argue that the First Amendment's Free Speech Clause bars the Plaintiffs' tort claim.

The First Amendment's Free Speech Clause states that “Congress shall make no law ... abridging the freedom of speech ...” U.S. Const. amend. I. The Supreme Court of the United States has held that the Free Speech Clause “can serve as a defense in state tort suits ...” Snyder v. Phelps, 562 U.S. 443, 131 S.Ct. 1207, 179 L.Ed.2d 172 (2011) (citing Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 50–51, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988)). Regarding a First Amendment defense in the context of an appropriation of name or likeness tort claim, the Colorado Supreme Court has stated that, “there is a First Amendment privilege that permits the use of a plaintiff's name or likeness when that use is made in the context of, and reasonably relates to, a publication concerning a matter that is newsworthy or of legitimate public concern.” Joe Dickerson & Assocs., L.L.C., 34 P.3d at 1003 (citations omitted). “In many situations, however, it is not altogether clear whether a particular use of person's name or likeness is made for the purpose of communicating news or for the purpose of marketing a product or service.” Id. “To resolve this question, courts must determine whether the character of the publication is primarily noncommercial, in which case the privilege will apply, or primarily commercial, in which case the privilege will not apply.” Id. (citing Tellado v. Time–Life Books, Inc., 643 F.Supp. 904, 909–10 (D.N.J.1986)).

Pursuant to the Colorado Supreme Court's pronouncement in Joe Dickerson & Assocs., L.L.C., I must determine two issues: (1) whether the Defendants' use of the Plaintiffs' name or likeness was primarily commercial or noncommercial; and, (2) whether such use reasonably relates to a publication concerning a matter that is newsworthy or of legitimate public concern. Because the First Amendment privilege will not apply if the Defendants' use was commercial, I must address that issue first.

“Commercial speech is speech that proposes a commercial transaction.” Joe Dickerson & Assocs., L.L.C., 34 P.3d at 1004 (citing City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 422–23, 113 S.Ct. 1505, 123 L.Ed.2d 99 (1993). “It is the content of the speech, not the motivation of the speaker, which determines whether particular speech is commercial.” Id. (citations omitted).

Neither of the mailers proposes a commercial transaction. The mailers are simply statements of disapproval of certain political candidates. While Public Advocate may profit in some tangential way e.g., a Colorado resident who received one of the mailers agrees with Public Advocate's viewpoint regarding same-sex unions and feels moved to donate money to or volunteer for the organization, such a collateral effect is insufficient to conclude that the mailers were used for a primarily commercial purpose. I find that the mailers were used for a primarily noncommercial purpose and therefore the First Amendment privilege may be asserted. Whether the privilege bars the Plaintiffs' tort claim depends on whether Public Advocate and Rocky Mountain's use of Edwards and Privitere's name and likeness reasonably relates to a publication concerning a matter that is newsworthy or of legitimate public concern.

Speech deals with matters of public concern when it can be fairly considered as relating to any matter of political, social, or other concern to the community, or when it is a subject of legitimate news interest; that is, a subject of general interest and of value and concern to the public.

Snyder, 131 S.Ct. at 1216 (internal quotation marks and citations omitted). Same-sex marriage is matter of public concern. See, e.g., Raymen v. United Senior Ass'n, 409 F.Supp.2d 15, 23 (D.D.C.2006) (citations omitted) (“Clearly the issues of same-sex marriage and support for the military are issues of public concern and both have been widely discussed in the media”). At the time of the actions giving rise to this suit (Spring 2012), Colorado had not yet passed the Colorado Civil Union Act, Colorado Revised Statutes 14–15–101, et seq. , effective May 1, 2013, which grants same-sex couples the legal right to enter into a civil union and enjoy the “rights, protections, duties, obligations, responsibilities, and other incidents under law as are granted to or imposed upon spouses ...” C.R.S. 14–15–107(1). Thus, the mailers were sent for the sole purpose of negatively impacting pro same-sex union candidates' chances of being re-elected/elected. Public Advocate and Rocky Mountain knew that same-sex marriage is politically charged issue, otherwise they would not have cherry-picked this issue out of all the issues facing Senator Jean White and candidate Jeffrey Hare. Public Advocate and Rocky Mountain's actions are evidence that same-sex marriage can at the very least be considered as relating to political concerns of the community. Therefore, I find that the mailers reasonably relate to a matter of public concern.

The Plaintiffs present an argument focusing on the phrase “reasonably relate.” They argue that while whether or not Senator Jean White and candidate Jeffrey Ware get elected is certainly a matter of public concern, they are not reasonably related to that matter of public concern. However, whether or not Senator Jean White and candidate Jeffrey Ware get elected is irrelevant in this discussion. The speech at issue, which occurred in the context of a political election, is Public Advocate and Rocky Mountain's disapproval of same-sex marriage, and the public concern at issue is same-sex marriage. The Plaintiffs focus solely on the political election in an attempt to avoid application of the First Amendment privilege. The Plaintiffs are splitting hairs. The test of whether the First Amendment privilege applies is whether a defendant's use of a plaintiff's name or likeness reasonably relates to a publication concerning a matter that is newsworthy or of legitimate public concern. Public Advocate and Rocky Mountain's use of the photo reasonably relates to a matter of legitimate public concern: same-sex marriage. The mailers, in which the predominant image is Edwards and Privitere kissing, were used to voice disapproval of Senator Jean White and candidate Jeffery Ware's support for same-sex marriage. Thus, the matter of public concern is same-sex marriage and it cannot be said that the lifted portion of the photo is not reasonably related to same-sex marriage. Further, the Plaintiffs rely on Magistrate Judge Hegarty's Recommendation in Bustos v. United States, 2009 U.S. Dist. LEXIS 80496 (D. Colo. June 26, 2009), to support their argument. However, in ruling on Magistrate Judge Hegarty's Recommendation, Judge Babcock rejected that portion of the Recommendation relied on by the Plaintiffs. See Bustos v. United States, 2009 U.S. Dist. LEXIS 74511, *11–12 (D.Colo. Aug. 21, 2009). As such, Bustos does not bolster the Plaintiff's argument.

I find that Public Advocate and Rocky Mountain's use of Edwards and Privitere's name and likeness was primarily noncommercial and that it reasonably relates to a legitimate matter of public concern. As such, the First Amendment privilege bars the Plaintiffs' Colorado state law tort claim for appropriation of name or likeness and that claim is DISMISSED WITH PREJUDICE.

In order to prevail on a claim for copyright infringement under the Copyright Act, 17 U.S.C. § 101, et seq., a plaintiff must establish: “(1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (citing Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 548, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)). Even if a plaintiff establishes these two elements, the Copyright Act provides a safe harbor for a defendant's fair use of material otherwise protected by copyright. See 17 U.S.C. § 107. The Defendants argue that their use of the photo constitutes fair use under 17 U.S.C. § 107.

When determining whether the fair use doctrine bars a copyright infringement claim, courts consider the following factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.
17 U.S.C. § 107. The fair use doctrine calls for a “case-by-case” analysis. Harper & Row, Publrs., 471 U.S. at 549, 105 S.Ct. 2218. “Fair use is a mixed question of law and fact.” Id. at 560, 105 S.Ct. 2218 (citing Pacific & Southern Co. v. Duncan, 744 F.2d 1490, 1495 n. 8 (11th Cir.1984)).

Public Advocate states that “use of the Mailers was purely educational as part of Public Advocate's permissible efforts to inform the voters in the Colorado Republican primary regarding the issue of traditional family values.” ECF No. 102, p. 12, ¶ 2. While use for nonprofit educational purposes is valid under this factor, Public Advocate's use of the photo is not the type of “education” contemplated by the statute. 17 U.S.C. § 107 states that fair use of copyrighted works “for purposes such as ... teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” That language suggests that the educational purposes contemplated by the statute's drafters relates to schooling, not mailers circulated during an election. Thus, I am not persuaded by Public Advocate's argument.

The Defendants also state that their use of the photo was “transformative” and for political purposes. The Defendants cite to Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), for the statement that “the more transformative the new work, the less will be significance of other factors, like commercialism, that may weigh against a finding of fair use.” Defendants state that their use of the photo was “highly transformative.” ECF No. 107, p. 13, ¶ 2. I disagree. A use is transformative if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164. The Defendants did nothing to the lifted portion of the photo, save removing the bottom portion of Edwards and Privitere's legs. The Defendants merely took the lifted portion and superimposed it on a mailer. While the Defendants placed the lifted portion in a different background and placed a caption on the mailer, such actions cannot be characterized as “highly transformative.” Further, the mere fact that the photo was used for political purposes does not bolster the Defendants' argument. Thus, this factor does not favor application of the fair use doctrine.

“Under this factor, the more creative a work, the more protection it should be accorded from copying; correlatively, the more informational or functional the plaintiff's work, the broader should be the scope of the fair use defense.” 4 Nimmer on Copyright § 1305. In paragraphs 39–41 of the First Amended Complaint [ECF No. 92], the Plaintiffs allege numerous facts regarding Hill's creative touch on the photo e.g., choosing the exact pose, camera angle, focal length of lens, aperture, shutter speed, lighting, and the photo's color. Inspection of the photo reveals that it is more creative than informational or functional and that Hill, as a professional wedding photographer, took special care in taking the photo and making sure it depicted the appropriate tone for the occasion. Thus, this factor does not favor application of the fair use doctrine.

The Defendants are correct in arguing that they only used a portion of the photo. They state that “[t]he image of the ‘kissing men’ is at most 20% of the image that Defendants used in their mailers and it is also only about 20% of the copyrighted Photograph.” ECF No. 107, p. 13, ¶ 4. Public Advocate states that the Defendants “transformed the photo by the addition of an entirely different background which removes the big city feel and places the individuals in a country setting ...” ECF No. 102, p. 12, ¶ 4, and p. 13, ¶ 1.

As I previously stated when analyzing the character and purpose of the Defendants' use, the Defendants used the focal point, the most important portion of the photo: Edwards and Privitere holding hands and kissing. The “qualitative nature of the taking” is important. Harper & Row, Publrs., 471 U.S. at 565, 105 S.Ct. 2218. The quantity of a taking does not necessarily determine the quality of the taking. See, e.g., Roy Export Co. Establishment etc. v. Columbia Broadcasting Sys. Inc., 503 F.Supp. 1137, 1145 (S.D.N.Y.1980) (“And even assuming that CBS' use of some of the films was quantitatively small, the jury could have reasonably have concluded that it was qualitatively great”). Thus, just because the Defendants lifted approximately 20% of the photo and used it in their mailer does not automatically tip this factor in favor of applying the fair use doctrine. Further, “a taking may not be excused merely because it is insubstantial with respect to the infringing work.” Harper & Row, Publrs., 471 U.S. at 565, 105 S.Ct. 2218. As Judge Learned Hand stated, “ ‘no plagiarist can excuse the wrong by showing how much of his work he did not pirate.’ ” Id. ( quoting Sheldon v. Metro–Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936)). Because of the quality of this taking, I find that this factor does not favor application of the fair use doctrine.

This factor “requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether the unrestricted and widespread conduct engaged in by the defendant ... would result in a substantially adverse impact on the potential market for the original.” Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (internal quotation marks and citations omitted). This inquiry “ ‘must take account not only of the harm to the original but also to the market for derivative works.’ ” Id. (quoting Harper & Row, Publrs., 471 U.S. at 568, 105 S.Ct. 2218).

This factor, more than any other factor, is evidence driven. While I could speculate on the photo's market and potential market, I believe that would be improper. Based on the facts of this specific case, analysis of this element is better left for a stage in the proceedings where the parties present evidence i.e., summary judgment or trial. As such, I find that the Plaintiffs' have stated a plausible copyright infringement claim under the Copyright Act, 17 U.S.C. § 101, et seq., and I DENY Public Advocate and the Defendants' Motions To Dismiss [ECF No. 101 & 106] to the extent they seek dismissal of the Plaintiffs' copyright infringement claim based on the fair use doctrine.

After careful consideration of the matters before this Court, it is

ORDERED that Public Advocate's Motion To Dismiss Plaintiffs' First Amended Complaint [ECF No. 101] and NAGR, Rocky Mountain, O'Dell, Andrew Brown, and Dudley Brown's Motion To Dismiss The First Amended Complaint [ECF No. 106] are GRANTED IN PART and DENIED IN PART. The motions are GRANTED to the extent that the First Amendment bars the Plaintiffs' Colorado state law appropriation of name or likeness tort claim, and that claim is DISMISSED WITH PREJUDICE. The motions are

to the extent that Public Advocate and the Defendants seek dismissal of the Plaintiffs' copyright infringement claim based on the fair use doctrine. -------- Notes: