19

- 2142

- cv Sammy Mourabit v. Steven Klein, et al

. UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
SUMMARY ORDER
R ULINGS BY SUMMARY OR DER D O NOT HAVE PRECEDENTI AL EFFECT . C ITATION TO A SUMMARY ORDER FILED ON OR AF TER J ANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY F EDERAL R ULE OF A PPELLATE P ROCEDURE 32.1 AND THIS COURT ’ S L OCAL R ULE 32.1.1. W HEN CITING A SUMMARY ORDER IN A D OCUMENT FILED WIT H THIS COURT , A PARTY MUST CITE E ITHER THE F EDERAL A PPENDIX OR AN ELECTR ONIC DATABASE ( WITH THE NOTATION “ SUMMARY ORDER ” ). A PARTY CITING A SUMM ARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENT ED BY COUNSEL . At a stated term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 8 th day of June, two thousand twenty

. PRESENT: BARRINGTON D. PARKER, DE NNY CHIN, SUSAN L. CARNEY, Circuit Judges

.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
SAMMY MOURABIT , Plaintiff

- Counter

- Defendant

- Appellant ,

- v - 1 9

- 2142

- c v STEVEN KLEIN, STEVEN KLEIN STUDIO, LLC, STEVEN KLEIN STUDIO, INC., Defendants

- Cross

- Defendants

- Appellees,

- v FRANCOIS NARS, SHISE IDO INC., SHISEIDO INTERNATIONAL, DBA S HISEIDO AMERICAS CORPORATION, Defendants

- Cross

- Claimants

- Counter

-2 Clai mants

- Appellees

. ∗

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
FOR PLAINTIFF

- APPELLANT: MARK WARREN MOODY, M W Moody LLC, New York, New York.
FOR DEFENDANTS

- APPELLEES: JOHN PELOSI (Angelo DiStefano, on the brief ) , Pelosi Wolf Effron & Spates LLP , New York, New York, for Steven Klein, Steven Klein Studio, LLC, and Steven Klein Studio, Inc

. RALPH H. CATHCART (Jennifer Kwon, on the brief ) , Ladas & Parry LLP , New York, Ne w York, for Shiseido Inc., Shiseido International, DBA Shiseido Americas Corporation , and Francois Nars

. Appeal from the United States District Court for the Southern District of
New York ( Torres , J .). ON CONSIDERATION WHEREOF, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment of the d istrict c ourt is AFFIRMED

. Plaintiff

- a ppellant Sammy Mourabit appeals from a judgment entered July 8, 2019 , dismiss ing his copyright infringement , common law , and statutory fraud claims against d efendant

- a ppellee s Steven Klein, Steven Klein Studio, LLC, and Steven Klein Studio, Inc. (collectively, “ Klein ” ) and Francois Nars, Shiseido Inc., and Shiseido International, DBA Shiseido Americas Corporation (collectively, “ Shiseido, ” and ,

∗ The Clerk of the Court is respectfully directed to amend the official caption to conform to the above.3 together with Klein, “ defendants ” ) , under Federal Rule of Civil Procedure 12(c)

. Mourabit alleges that d efendants violated the Copyright Act, 17 U.S.C. § 101 et seq. , and
other laws by improperly using Mourabit ’ s “ make up artistry ” in their promotion of a

new makeup line. App ’ x at 66. We assume the parties ’ familiarity with the underlying facts, the procedural history of the case, and the issues on appeal.
The facts are drawn from the first amended complaint ( “ F AC ” ) , attached exhibits, and documents integral to the FAC, and are assumed to be true. 1 Mourabit is a makeup artis t, and i n 2013, he “d [id] the make up artistry” for a fashion photo shoot organized by W Magazine (the “Photo Shoot”) . App’x 62. Klein was the photographer
at the Photo S hoot. In 2015, Shiseido collaborated with Klein to create a holiday makeup
collection

. Defendants used one of Klein’s photographs from the Photo Shoot (the “Photograph”) to promote and advertise their new makeup line

. The Photograph depicted Juliette Lewis, an actress , wearing makeup that Mourabit had applied during
the Photo Shoot

. According to the FAC, in their promotional materials, Defendants did not credit Mourabit for Lewis’s makeup, inst ead implying to consumers and the public

1 See Chambers v. Time Warner, Inc. , 282 F.3d 147, 152

- 53 (2d Cir. 2002) ( “ [T]he complaint is deemed to include

. . . any statements or documents incorporated in it by reference, ” and

“ [e]ven where a document is not incorporated by reference, the court may nevertheless consider it where the complaint relies heavily upon its terms and effect, which renders the document in tegral to the complaint. ” (internal quotation marks omitted))

.4 that Nars , another makeup artist, was responsible for the makeup artistry depicted in the Photograph. In June 2018, Mourabit obtained a copyright registration for a drawing of the makeup artistry that Lewis showcase d during the Photo Shoot (the “ Drawing ” ). Two months later, Mourabit filed a complaint in the New York State Supreme Court alleg ing copyright infringement based on his copyright registration for the Drawing ( Copyright Registration No. VA 2

- 105

- 396 ) , as we ll as state law claims of unjust enrichment, unfair competition/misappropriation, and violation of New York General Business Law ( “ GBL ” ) § 349. On September 12 , 2018 , Shiseido removed the case to the
Southern District of New York. On September 18, 2018, Mourabit filed the FAC. On December 13, 2018, a fter the parties exchanged correspondence and , in anticipation of defendants ’ motion to dismiss the FAC, Mourabit conceded in a court filing that his copyright claim based on the reg istered Drawing should be dismissed. The parties continued to disagree, however, as to whether Mourabit ’ s state law claims were preempted by the Copyright Act.
O n January 18, 2019, defendants filed their motions to dismiss. On July 2, 2019, the d istric t c ourt issued an Order dismissing Mourabit ’ s copyright infringement, unjust enrichment, and unfair co mpetition/misappropriation claims with prejudice, and dismissing Mourabit ’ s GBL § 349 claim without prejudice. T he district court dismissed
Mourabit ’ s copyright infringement claim after concluding that Mourabit abandoned it5 by his earlier concession

. Next, t he district court concluded that the unjust enrichment and unfair competition/misappropriation claims were preempted by the Copyright Act

. T he district court noted that Mourabit “ appears to allege that his state law claims arise
from his ‘ makeup artistry, ’ rather than the copyrighted drawing , ” and thus focused its analysis on the application of makeup during the Photo Shoot. App ’ x at 6. Accordingly, t he district court held that Mourabit ’ s state claims fell within the preemptive scope of the Copyright Act because makeup artistry fit s within the

“ pictorial, graphic, and sculptural works ” category and could be “ fixed in a tangible medium of expression. ” App ’ x at 7

- 8. F inally, the district court declined to exercise supplemental jurisdiction over Mourabit ’ s GBL § 349 claim and dismissed the claim without prejudice to renewal in state court. 2 Judgment entered July 8, 2019. This
ap peal followed.
DISCUSSION

“‘ We review a judgment under Federal Rule of Civil Procedure 12(c) de

novo , ’ accepting as true the allegations of the nonmovant and drawing all reasonable
inferences in its favor. ” Laurent v. PricewaterhouseCoopers LLP , 945 F.3d 739, 745 (2d Cir.

2 The district court also imposed sanctions against Mourabit’s counsel, but o n September 13, 2019, the district court granted Mourabit ’ s counsel’s motion for reconsideration and reversed the i mposition of sanctions, after conducting an in camera review of emails between counsel and concluding that it could no longer find that Mourabit ’ s counsel’s actions were “ so completely without merit ” to justify the sanctions

. See Mourabit v. Klein , 18

- cv - 8313 (AT), 2019 WL 4392535 , at *2 (S.D.N.Y. Sept. 13, 2019)

.6 2019) (quoting Graziano v. Pataki , 689 F.3d 110, 114 (2d Cir. 2012) )

. “ The standard for addressing a Rule 12(c) motion for judgment on the pleadings is the same as that for a Rule 12(b)(6) motion to dismiss for failure to state a claim. ” Cleveland v. Caplaw Enters. , 448 F.3d 518, 521 (2d Cir. 2006). Under the doctrine of complet e preemption, t he Copyright Act preempts a
state law claim when (1) “ the claim applies to a work of authorship fixed in a tangible medium of expression and falling within the ambit of one of the categories of copyrightable works ,” and (2) “ the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. § 106. ” Briarpatch Ltd., L.P v. Phoenix Pictures, Inc. , 373 F.3d 296, 305 (2d Cir. 2004)

. Here, Mourabi t does not challenge the district court’s application of the second prong of this test

— the so

- called “general scope requirement.” Id. His appeal focuses, instead, on the first prong of copyright preemption

— that is, the “subject matter requirement.” Id. Mourabit argues, in particular, that the work of makeup artistry that he developed for the Photo S hoot (the “Makeup Artistry”) does not meet the subject matter requirement because (a) it does not fall within one of the categories of copyrightable works se t forth in 17 U.S.C. § 102 , and (b) the Makeup Artistry was not fixed in a tangible medium of expression. For the reasons that follow, we conclude that neither argument provides grounds for disturbing the district court’s judgment.7 I. Work of Authorship
To resolve this appeal, we need not definitively decide whether Mourabit’s Makeup Artistry is a copyrightable work. This is because the scope of copyright preemption is broader than the scope of copyrightable materials. See Forest Park Pictures v. Universa l Television Network, Inc. , 683 F.3d 424, 429

- 30 (2d Cir. 2012) ( “ The scope of copyright for preemption purposes

. . . extends beyond the scope of available copyright protection. ” ) ; see also 1 Nimmer on Copyright § 1.16 (2019) (“ As has often been observed, ‘ the shadow actually cast by the Act’s preemption is notably broader than the wing of its protection. ’” (quoting U.S. ex rel. Berge v. Bd. of Trustees of the Univ. of Alabama , 104 F.3d 1453, 1463 (4th Cir. 1997) )

. Accordingly, “[a] work need not consist entirely of copyrightable material in order to meet the subject matter requirement .” Briarpatch , 373 F.3d at 305

. Instead, the work “ need only fit into one of the copyrightable categories in a broad sense .” Id. Here, we conc lude that , for preemption purposes only, Mourabit’s Makeup Artistry falls comfortably within “ the broad ambit of the subject matter categories listed in section 102(a) .” Forest Park Pictures , 683 F.3d at 429 (internal quotation marks omitted). In particular, the Copyright Act protects “pictorial, graphic, and sculptural works,” 17 U.S.C. § 102 (a)(5), a category that encompasses “pictures, paintings, or drawings” depicted in either two

- dimensional or three

- di mensional space , Star Athletica, L.L.C. v. Varsity Brands, Inc. , 137 S. Ct. 1002, 1009 (2017) ; see also 17 U.S.C.8 § 101 ( defining “‘[p]ictorial, graphic, and sculptural works [to] include two

- dimensional
and three

- dimensional works of fine, graphic, and ap plied art” )

. Mourabit’s Makeup Artistry fits into this category in “a broad sense” because it is essentially a painting that is displayed on a person’s face. Briarpatch , 373 F.3d at 305

. As do other works that the Supreme Court has deemed to have “picto rial, graphic, or sculptural qualities,” the Makeup Artistry involves the decorative “arrangement of colors, shapes, [and] stripes.”
Star Athletica , 137 S. Ct. at 1012

. Thus, while we stop short of holding that Mourabit’s Makeup Artistry qualif ies as a copyrightable work of authorship, we conclude that this
work shares enough features with the category of pictorial, graphic, and sculptural works to fall within the “broad ambit” of section 102(a) and, therefore, t o be potentially subject to copyright preemption

. Forest Park Pictures , 683 F.3d at 429

. II. Fixation
Mourabit co unters that his Makeup Artistry nonetheless does not satisfy the subject matter requirement because the work was not “fixed in a tangible mediu m of expression.” Briarpatch , 373 F.3d at 305

. In advancing this challenge, Mourabit
frames the relevant inquiry as whether the Makeup Artistry was fixed in Lewis’s face.
From th ere , Mourabit urges that the fixation requirement is not satisfied because (1) human skin cannot qualify as “a tangible medium of expression,” and (2) even if it did,9 the makeup that he designed and applied to Lewis’s face was not sufficiently permanent. To our knowledge, no federal appeals court has addressed whether a
human body part may qualify as a “tangible medium of expression” for copyright
purposes. This question appears in fact to have sparked a lively academic debate among copyright scholars. Compare 1 Nimmer on Copyright § 2A.15 (expressing doubt that Congress intended “the reference to ‘any tangible medium of expression’ . . . to include body parts of live human beings”) with Yolanda M. King, The Challenges "Facing" Copyright Protection for Tattoos , 92 O R
. L. R EV
. 129, 152

– 55 (2013) ( concluding the opposite )

. We need not venture further into this uncharted territory, however, to resolve Mourabit’s appeal. Although the District Court concluded that the Makeup Artistry was sufficiently fixed in Lewis’s skin to satisfy the fixation requirement for copyright purposes , we affirm its judgment on the alternative ground that the Makeup Artistry was fixed in the Photograph taken by Klein

. See Lanning v. City of Glens Falls , 908 F.3d 19, 24 n.4 (2d Cir. 2018) (“[W] e ma y affirm on any grounds for which there is a record sufficient to permit conclusions of law, including grounds not relied upon by the
district court .” (alterations and internal quotation marks omitted)). Under the Copyright Act, “ [a] work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy

. . . , by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise10 communicated for a period of mo re than transitory duration.” 17 U.S.C. § 101. The Act defines “[c]opies,” in turn, as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device.” Id. When applying this fixation requirement, we must bear in mind the

“ fundamental distinction between the original work of authorship and the material object in which tha t work is fixed.” Matthew Bender & Co. v. W est Pub. Co. , 158 F.3d 693, 702 (2d Cir. 1998) (internal quotation marks omitted). The work is a form of intangible property that can be physically embodied in ( i.e. , fixed in) any number of different
material o bjects ( i.e. , tangible mediums of expression). See Matthew Bender , 158 F.3d at 699 n.9 (highlighting, in a parenthetical, “the multitude of material objects in which [a work] can be embodied”). Thus , for example, a single musical composition

— that is, a

“ musical work[]” under section 102(a) (2)

— can be fixed in sheet music, an audiotape, a computer hard drive, or all three. See 2 Patry on Copyright § 3:22

. Similarly, a poem

— that is, a “literary work[]” under section 102(a) (1)

— can be physically embodied in a book, a periodical, a microfilm, or an internet serve r . See 1 Nimmer on Copyright § 2.03

. Here, the Makeup Artistry

— i.e. , the work that Mourabit asserts is the subject of his state law claims

— was plainly fixed in Klein’s Photograph. When Klein11 photographed Lewis during the Photo Shoot, he physically embodied Mourabit’s Makeup Artistry in the Photograph, thereby allowing the work to be “ perceived, reproduced, or otherwise communicated for a period of more than transitory d uration.” 17 U.S.C. § 101; see also Maloney v. T3Media, Inc. , 853 F.3d 1004, 1011 (9th Cir. 2017) (“There is also no doubt that a photograph is sufficiently permanent to permit it to be perceived for more than transitory duration.” (internal quotation mar ks omitted)). Although Klein , not Mourabit, took the Photograph, that fact is of no import here because a work of authorship may be fixed “by or under the authority of the author.” 17 U.S.C. § 101 (emphasis added). Mourabit plainly consented to the photo graphing of his work by Klein : after all, creating such a Photograph was the goal of the Photo Shoot.
Thus , the fixation of his Makeup Artistry in the Photograph occurred under Mourabit’s authority. See Baltimore Orioles, Inc. v. Major League Baseball Players Ass ’ n , 805 F.2d 663, 675 n.22 (7th Cir. 1986) ( observing that a work may be fixed in tangible form by
someone other than the author when the author knowingly consents to the fixation); see also 1 Nim mer on Copyright § 2.03 ( stating that an author’s “voluntar[y] participat[ion]”
in the fixation of his or her work constitutes “fixation taking place under the author ’ s ‘authority’”). Thus, regardless whether the Makeup Artistry was “ fixed ” in Lewis’s fa ce for copyright purposes , it was clearly “ fixed ” in the Photograph. On this basis, we12 conclude that the district court properly dismisse d Mourabit ’ s unjust enrichment and unfair competition/misappropriation claims as preempted

. 3
* * *
We have considered Mourabit ’ s remaining arguments and conclude they

are without merit. For the foregoing reasons , we AFFIRM the judgment of the district

court. FOR THE COURT: Catherine O ’ Hagan Wolfe, Clerk

3 We need not address Mourabit ’ s GBL § 349 claim, as it s dismissal has not been appealed.