The Ninth Circuit Court of Appeal recently removed a weapon from the arsenal available to artists fighting video pirates.

In Jules Jordan v. 144942 Canada et al., the court reversed a multi-million dollar jury verdict in favor of adult film star Jules Jordan on claims that a distributor selling bootleg copies of Jules Jordan videos violated his right of publicity under California law.

Jordan, whose real name is Ashley Gasper, claimed that the defendants wrongfully misappropriated his name and likeness by selling counterfeit DVDs featuring his “dramatic performances” and by using his name and likeness on the covers. The jury agreed with Jordan and awarded him approximately $2.85 million, including $2.5 million in punitive damages.

The Ninth Circuit overturned the jury’s award, finding Jordan’s right of publicity claim to be preempted by the United States Copyright Act. In layman’s terms, a finding of preemption essentially means that an artist or right’s holder can only sue for copyright infringement if the claim is of a type that copyright law normally covers. (Jordan and his company Jules Jordan Video had also sued for copyright infringement, but that claim was thrown out on technical grounds by the trial court.)

The decision reached by the Ninth Circuit on Jordan’s right of publicity claim was not surprising given the fact that the conduct Jordan was complaining about was the distribution of DVDs. Under applicable law, claims are preempted by the Copyright Act when (1) the subject of the claim is a work fixed within a tangible medium of expression that falls within the subject of copyright and (2) the right asserted under state law are equivalent to the exclusive rights granted to copyright holders under the Copyright Act (such as the right to distribute copyrighted works). The bootleg DVDs at issue in Jordan’s case clearly satisfy the first prong of the test. Motion pictures are original works of authorship fixed in a tangible form of expression (in Jordan’s case, on DVDs). Thus, the only real question in Jordan was whether the second prong of the test was also satisfied.

Fourteen years ago, in Fleet v. CBS, Inc., 50 Cal.App.4th 1911 (1996), the California Court of Appeal held, in a case similar to Jordan’s, that right of publicity claims brought by actors appearing in a motion picture were preempted by copyright law when brought against the authorized distributors of the films. What was different about Jordan is that it involved a defendants who had no rights whatsoever and were blatant pirates.

The Ninth Circuit ruled that this distinction didn’t matter for purposes of preemption and declined to follow another California case, KNB Enters. v. Matthews, 78 Cal.App.4th 362 (2000), which limited Fleet’s holding to right of publicity claims arising out of the distribution of motion pictures by authorized copyright holders.

Rather than limiting Fleet, as the KNB court did, the Ninth Circuit’s decision in Jordan takes Fleet a step further, expressly holding that right of publicity claims by actors based on the exploitation of DVDs containing their performances are preempted even if the distributor is unauthorized (or a blatant DVD pirate). The court clearly held “[i]f a plaintiff asserts a claim that is the equivalent of a claim for infringement of a copyrightable work, that claim is preempted, regardless of what legal rights the defendant might have acquired.” 2010 WL 3211818 at * 6.

The Ninth Circuity’s decision makes sense from the prospective of avoiding competing or conflicting claims by actors and authorized motion picture distributors. Under Jordan it is up to the parties holding the copyright in the film (usually the studio or distributors and not the actors) to take action against pirates.

The decision also creates, however, a potential opportunity for enterprising pirates to exploit a legal loophole.

In attempting to save his multi-million dollar jury award, Jordan argued that his publicity rights were violated not only by the defendant’s exploitation of the film, but because it had used his name and likeness on the covers of the counterfeit DVDs. The Ninth Circuit found Jordan’s argument to be “misguided” because the pictures used on the DVD covers were “still shots” from the films. This is where the loophole comes in.

If, as the decision in Jordan suggests, an actor or actress (or their estate) cannot enforce their rights of publicity where the image used to sell merchandise is taken from a copyrighted motion picture, enterprising thieves could use stills taken from old movies in the public domain, or from producers/studios who are now defunct and have no successors, without recourse. (The scenario would be there is no one with standing to enforce a copyright claim and, under Jordan, a right of publicity claim would be preempted.)

It seems hard to believe that a court faced directly with this situation would find a famous actor or actress, or their estate, to be without recourse to prevent someone from using their likeness — even if taken from an old movie or tv show — to shill a product they don’t actually enforce. Given the amount of time and effort devoted by pirates and infringers to their endeavors, it seems likely that someone will try and exploit the loophole suggested by Jordan, and that a California court will ultimately shut it down.

As for the pirates in Jordan’s case (for those of you concerned about the wrong done to Mr. Jordan and his adult film enterprise), they did not escape scot-free. In addition to reversing the right of publicity award, the Ninth Circuit also reversed the trial court’s dismissal of Jordan’s copyright claim on technical grounds and reinstated the jury’s award of statutory damages (totaling approximately $2.6 million against three defendants).