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Cosmetic differences - Copyright Act preempts state law claims over makeup artistry

December 1, 2020
Year End 2020 IP Newsletter

To qualify for copyright protection, works must be “fixed in a tangible medium of expression.” Does human skin count as a tangible medium of expression? The U.S. Court of Appeals for the Second Circuit considered that question in a recent case — but in the end held off on a decision. Instead, it found a different basis for ruling against a makeup artist.

Artists face off in court

The plaintiff, Sammy Mourabit, is a makeup artist who worked on a 2013 fashion photo shoot with actress Juliette Lewis. Steven Klein was the photographer for the shoot.

In 2015, Klein teamed up with a cosmetics company to create a holiday makeup collection and used a photo from the shoot to promote and advertise the line. The photo showed Lewis wearing makeup Mourabit had applied.

In June 2018, Mourabit obtained copyright registration for a drawing of the makeup artistry Lewis had showcased. Two months later, he sued Klein and the cosmetics company for copyright infringement of the drawing, and filed state law claims for unjust enrichment and unfair competition/misappropriation. The case was moved from state court to federal court.

Before trial, Mourabit conceded that his copyright claim should be dismissed. The court subsequently dismissed the state law claims, too.

It determined that the state law claims arose from his makeup artistry, rather than the copyrighted drawing, and were preempted by the Copyright Act. In other words, Mourabit could enforce his rights in the artistry only under federal copyright law, not under state law. Mourabit appealed.

Second Circuit brushes off the claims

The Copyright Act preempts a state law claim when:

  1. The claim applies to a work of authorship that’s fixed in a tangible medium of expression and falls within one of the categories of copyrightable works (the subject matter requirement), and
  2. The claim seeks to vindicate rights that are the equivalent of the exclusive rights protected under copyright law (the general scope requirement).

Mourabit’s appeal focused on the first prong of the test. He argued that the makeup artistry he’d developed for the photo shoot didn’t satisfy the subject matter requirement because it wasn’t a copyrightable work. He further argued that the work wasn’t fixed in a tangible medium of expression.

The Second Circuit explained that the scope of copyright preemption is broader than the scope of copyrightable materials. As a result, a work can meet the subject matter requirement even if it doesn’t consist entirely of copyrightable material. It “need only fit into one of the copyrightable categories in a broad sense.”

The court concluded that, for preemption purposes only, the makeup artistry easily fell within the category of “pictorial, graphic and sculptural works.” The category includes pictures, paintings or drawings depicted in either two- or three-dimensional space.

The Second Circuit found that the makeup artistry fit in the category because it was essentially a painting displayed on a person’s face. It stopped short, though, of declaring that the makeup artistry qualified as a copyrightable work.

Mourabit alternatively argued that the makeup artistry wasn’t fixed because human skin isn’t a tangible medium of expression. And even it was, he contended, the makeup he’d designed and applied wasn’t sufficiently permanent.

The court noted that a federal appellate court hasn’t addressed the question of whether a human body part could be a tangible medium of expression. But it found that it needn’t venture into that “uncharted territory” because the makeup artistry was fixed in Klein’s photo, which Mourabit had authorized.

Skin in the game?

Unlike the plaintiff in this case, many body art creators would prefer human body parts to qualify as tangible media of expression. But they’ll have to wait to get a definitive answer on whether they can obtain copyright protection for their works on the basis of being fixed on human skin.

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