Ashley Gasper is an adult movie actor who performs under the stage name "Jules Jordan" and is also the president and sole shareholder of Jules Jordan Video (“JJV”), the creator of the videos in which Gasper appears. He and his company sued 144942 Canada, Inc., d/b/a Kaytel Video Distribution and other defendants (“Kaytel”) alleging that Kaytel had copied and sold thirteen copyrighted adult DVDs owned by JJV or Gasper and featuring Gasper’s performances (the “JJV action”).
The trial court found, among other things, that neither Gasper nor JJV had standing to assert the copyright claims. It concluded that because Gasper was employed by JJV, the motion pictures were works for hire under 17 U.S.C. § 101 of the Copyright Act. Thus, JJV was the author, leaving Gasper without standing. The court also concluded that because the copyright registration was made in in Gasper’s name, the registration was invalid, also leaving JJV without standing.
The Ninth Circuit disagreed, and reversed the trial court's ruling, holding that in the context of a "one-man shop," where Gasper was the sole officer, director and shareholder of JJV, exercised complete control over it and made all decisions concerning the company, Gasper had standing.
The Copyright Act, 17 U.S.C. § 101, defines a work made for hire as:
(1) a work prepared by an employee within the scope of his or her employment; orThe Ninth Circuit agreed with the district court that the films could not be considered works for hire under § 101(2) because there was no written instrument. Thus, although he was an employee of the company, if the work was not prepared within the scope of his employment, it would not constitute a work for hire. That is, if Gasper performed his creative work as an independent contractor, he would be considered the author.
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audio visual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the works shall be considered a work made for hire.
The Ninth Circuit reasoned that, since JJV was Gasper, "JJV intended whatever Gasper intended, and if Gasper intended that his creative work be outside the scope of his employment with JJV, there was no one to disagree." Gasper testified at trial that he always intended that his “creative work” be kept separate from his work for JJV and that he would have ownership of the copyrights. In this context, the Ninth Circuit found that the works were not works made for hire and that Gasper owned the copyright and had standing to sue.
Further, even if they were works for hire and JJV did own the copyrights, it would have been a "mistake" on the copyright registration to list Gaspard as the owner of the copyright, rather than JJV, and inadvertent mistakes do not invalidate a copyright or bar an infringement action unless the alleged infringer has relied on the mistake to its detriment, or the claimant intended to defraud the Copyright Office in making the misstatement. None ot those exceptions applied and, again, as a one man shop, JJV being Gasper, a transfer of rights could have been made at any time.
The Court dismissed Kaytel's argument that there was no written transfer (as required by section 204(a) of the Copyright Act, because there was "no dispute between the copyright owner and the transferee" as to the validity of the transfer. The Court explained that the statute was designed to resolve disputes between copyright owners and transferees and to protect against mistaken or fraudulent claims of oral licenses or copyright ownership. However, because the owner and the transferee here agreed about the ownership issue, Kaytel, as a third party infringer, was not permitted to rely on this provision to avoid a suit for infringement. The court reversed the trial court on the standing issue
The court also clarified that, although California law recognizes an ascertainable interest in the publicity associated with one's voice, the Copyright Act preempts California law with respect to claims alleging misappropriation of the right of publicity where the claims are based solely on the vocal performance contained within a copyrighted medium.
The case, Jules Jordan Video, inc. v. 144942 Canada Inc. (U.S. Court of Appeals for the Ninth Circuit, Case No. 08-55075), is available here.
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