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5 6 7 UNITED STATES DISTRICT COURT 8 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 9 10 JOHN BOSHEARS, individually and CASE NO. C21-1222 MJP on behalf of all others similarly 11 situated, ORDER ON DEFENDANT’S MOTION TO DISMISS AND 12 Plaintiff, MOTION TO STAY 13 v. 14 PEOPLECONNECT, INC., 15 Defendant. 16 17 This matter comes before the Court on Defendant PeopleConnect, Inc.’s Motion to 18 Dismiss (Dkt. No. 25) and Motion to Stay (Dkt. No. 28). Having reviewed the Motions, Plaintiff 19 John Boshears’ Oppositions (Dkt. Nos. 30, 33), the Replies (Dkt. Nos. 35, 36), the Notices of 20 Supplemental Authority (Dkt. Nos. 37, 41, 44), and all supporting materials, and having held oral 21 argument on March 18, 2022, the Court DENIES in part and GRANTS in part the Motion to 22 Dismiss and DENIES the Motion to Stay. 23 24 1 BACKGROUND 2 Defendant PeopleConnect, Inc. (“Classmates”) is a Washington corporation that operates 3 a website marketing access to and reprints of over 400,000 yearbooks spanning more sixty years. 4 (First Amended Complaint ¶¶ 19, 23, 35 (Dkt. No. 17).) Classmates invites website visitors to
5 buy a subscription service that offers the ability to “See the people who remembered you,” “See 6 all the visits to your Classmates® Guestbook,” “Read and reply to messages in your Classmates 7 Inbox,” “Save 20% on all Yearbook Reprints,” and “Find old friends on Classmates® 8 Locations.” (Id. ¶ 33.) Visitors encounter Classmates’ offer to subscribe in two relevant ways. 9 First, after a visitor searches for an individual and clicks on a photo of that person, they are 10 directed through a “pop-up window” to sign up for a free account. (Id. ¶ 32.) Once a visitor 11 obtains an account, they are then directed to a separate screen offering access to the subscription 12 services for a fee ranging from $3/month to $1.50/month depending on the subscription term. 13 (Id.) Second, visitors who have registered for a free account are presented with a “banner ad” 14 adjacent to photographs of an individual for whom the user searched that tells the user “It’s time
15 to upgrade!” (Id. ¶ 35.) The “upgrade” offer is to buy a subscription, which includes the 16 following “benefits”: “See who visited your profile,” “Send private messages,” and “Discount 17 yearbook reprints.” (Id.) 18 Plaintiff Josh Boshears is a citizen of Indiana, where he resides and attended high school 19 from 1995-1998. (FAC ¶¶ 22, 37.) Boshears has never used Classmates’ website but learned that 20 it uses pictures of him from his high school yearbooks to advertise subscription services and 21 reprints of yearbooks. (Id. ¶ 24.) He has not consented to the use of his persona. (Id. ¶¶ 22, 24- 22 26.) He also claims that he does not know how Classmates came into possession of the 23 yearbooks with his likeness. (Id. ¶ 37.) He alleges that Classmates has stolen his intellectual
24 1 property and invaded his privacy. (Id. ¶ 40.) He claims that Classmates’ use of his persona 2 “caused [him] mental injury and disturbed his peace of mind.” (Id. ¶ 41.) He claims he “is deeply 3 uncomfortable in the knowledge that Classmates is distributing his name and photographs as a 4 minor child publicly on the Internet for a commercial purpose to a worldwide audience.” (Id.)
5 Boshears brings two claims against Classmates arising out of its use of his persona to 6 advertise its subscription services: (1) a violation of the Indiana Right of Publicity Act, Ind. 7 Code. § 32-36-1-8 (“IRPA”); and (2) the common law tort of misappropriation of his name and 8 likeness. (FAC ¶¶ 50-61.) Boshears seeks to represent a class of similarly-situated Indianans. 9 And while Boshears’ Amended Complaint attacks Classmates’ use of his image to sell 10 yearbooks, he indicates his intention not to pursue those allegations. (See Pl. Opp. at 21 n.8 (Dkt. 11 No. 30).) The Court construes Boshears’ statement as a knowing waiver and relinquishment of 12 any claims premised Classmates’ use of his likeness to sell yearbooks. 13 Classmates asks the Court to dismiss the claims against it on several grounds: (1) failure 14 to satisfy the elements of the IRPA or avoid its exclusions; (2) Indiana does not recognize claims
15 of misappropriation of a person’s likeness and image; (3) Boshears has violated Washington’s 16 anti-SLAPP law; (4) Boshears must arbitrate his claims; (5) Boshears’ claims are preempted by 17 the Copyright Act; (6) Boshears’ IRPA claim violates the First Amendment; and (7) Classmates 18 is immune from suit under the Communications Decency Act. Classmates also asks the Court to 19 stay discovery pending the resolution of the motion to dismiss. 20 ANALYSIS 21 A. Motion to Dismiss Standard 22 The Court may dismiss a complaint for “failure to state a claim upon which relief can be 23 granted.” Fed. R. Civ. P. 12(b)(6). “A complaint may fail to show a right of relief either by
24 1 lacking a cognizable legal theory or by lacking sufficient facts alleged under a cognizable legal 2 theory.” Woods v. U.S. Bank N.A., 831 F.3d 1159, 1162 (9th Cir. 2016). In ruling on a Rule 3 12(b)(6) motion, the Court must accept all material allegations as true and construe the complaint 4 in the light most favorable to the non-movant. Wyler Summit P’Ship v. Turner Broad. Sys., Inc.,
5 135 F.3d 658, 661 (9th Cir. 1998). The complaint “must contain sufficient factual matter, 6 accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 7 U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). 8 B. IRPA Claim 9 Classmates seeks dismissal of Boshears’ IRPA claim for three reasons: (1) he has not 10 satisfied the claim elements; (2) the IRPA’s newsworthy exception bars the claim; and (3) the 11 IRPA’s literary works exception bars the claim. The Court reviews these arguments after briefly 12 reviewing the elements of the IRPA claim. 13 1. The IRPA’s Elements 14 The IRPA forbids the non-consensual “use [of] an aspect of a personality’s right of
15 publicity for a commercial purpose during the personality’s lifetime or for one hundred (100) 16 years after the date of the personality’s death. . . .” Ind. Code Ann. § 32-36-1-8(a) (West). To 17 state a claim, the plaintiff must therefore allege a non-consensual, commercial use of their 18 personality. The plaintiff must also allege “an act or event that occurs within Indiana, regardless 19 of a personality’s domicile, residence, or citizenship.” Ind. Code Ann. § 32-36-1-1 (West). 20 By statute, the “right of publicity” broadly includes “a personality’s property interest in 21 the personality’s: (1) name; (2) voice; (3) signature; (4) photograph; (5) image; (6) likeness; (7) 22 distinctive appearance; (8) gestures; or (9) mannerisms.” Ind. Code Ann. § 32-36-1-7 (West); see 23 Ind. Code Ann. § 32-36-1-6 (defining “personality”) (West). And “‘commercial purpose’ means
24 1 the use of an aspect of a personality’s right of publicity as follows: (1) On or in connection with 2 a product, merchandise, goods, services, or commercial activities[;] (2) For advertising or 3 soliciting purchases of products, merchandise, goods, services, or for promoting commercial 4 activities[; or] (3) For the purpose of fundraising.” Ind. Code Ann. § 32-36-1-2 (West).
5 2. Prima Facie Claim 6 Classmates argues that Boshears has not adequately alleged facts satisfying IRPA’s 7 territoriality or commercial use requirements. The Court agrees in part. 8 a. Territoriality 9 Absent any binding case law, the parties dispute the reach of the territoriality provision in 10 the IRPA. Classmates argues that “Plaintiff must plead that the ‘act or event’ that allegedly 11 violates the statute ‘occur[red] within Indiana.’” (Mot. at 3 (Dkt. No. 25).) Boshears suggests a 12 broader interpretation that reaches any act or event that “gave rise to [Boshears’] IRPA claim,” 13 including Classmates’ failure to obtain his consent in Indiana. (Opp. at 3 (Dkt. No. 30).) 14 Boshears further invokes personal jurisdiction jurisprudence and case law interpreting a
15 territoriality provision in an unrelated Illinois law. (Id.) Classmates takes issue with this, 16 asserting that “whether a court may have personal jurisdiction over a defendant due to certain 17 minimum contacts with the state is not remotely the same inquiry as whether the plaintiff has 18 pled that the specific ‘act’ prohibited by IRPA occurred ‘within Indiana’—an express 19 requirement of Plaintiff’s cause of action.” (Reply at 2 (citing Ind. Code § 32-36-1-1(a)) (Dkt. 20 No. 36).) 21 The Court agrees with Classmates that the IRPA’s territoriality provision requires the 22 “act or event” occurring in Indiana to be the non-consensual commercial use of the personality. 23 The Court begins its analysis with the territoriality provision itself, which states that the IRPA
24 “applies to an act or event that occurs within Indiana, regardless of a personality’s domicile, 1 residence, or citizenship.” Ind. Code Ann. § 32-36-1-1 (West). To understand the terms “act or 2 event,” the Court considers the IRPA’s jurisdictional provision in Section 9. This provision states 3 that any person “submits to the jurisdiction of Indiana courts” if they do any of the following: 4 “(1) engages in conduct within Indiana that is prohibited under section 8 of this chapter1; (2)
5 creates or causes to be created within Indiana goods, merchandise, or other materials prohibited 6 under section 8 of this chapter; (3) transports or causes to be transported into Indiana goods, 7 merchandise, or other materials created or used in violation of section 8 of this chapter; or (4) 8 knowingly causes advertising or promotional material created or used in violation of section 8 of 9 this chapter to be published, distributed, exhibited, or disseminated within Indiana.” Ind. Code 10 Ann. § 32-36-1-9. These jurisdictional requirements strongly suggest that the required “act or 11 event” occurring in Indiana must be a violation of Section 8’s bar on the non-consensual, 12 commercial use of a personality. And because Section 8 requires evidence of both a non- 13 consensual and commercial use, it is not enough to allege that the defendant failed to obtain 14 consent in Indiana without also identifying a commercial use in Indiana.
15 Applying this definition, the Court finds that Boshears has not sufficiently alleged an act 16 or event that occurred in Indiana in violation of the IRPA. Boshears alleges that Classmates has 17 used his “photographs in advertisements displayed on Classmates’ website to users in Indiana.” 18 (FAC ¶ 54.) This allegation might be sufficient to satisfy the territoriality requirement because it 19 points to a non-consensual commercial use of his image in Indiana. But the allegation finds no 20 further factual support. Boshears admits he has never seen the website and he does not allege that 21 anyone else in Indiana has. Only Boshears’ attorney has viewed the photo on Classmates, and 22 that occurred outside of Indiana. These facts render the allegation in the Amended Complaint too 23
1 Section 8 refers to the bar on the non-consensual, commercial use of a personality. 24 1 attenuated to satisfy Rule 8 under the Iqbal/Twombly standard. But the Court believes this 2 pleading deficiency can be overcome with additional allegations and/or supporting materials 3 such as an affidavit. 4 In reaching this decision, the Court rejects Boshears’ reliance on the decision in a similar
5 case brought against Classmates: Knapke v. PeopleConnect, Inc., C21-262 MJP (W.D. Wash.). 6 Boshears notes that in ruling a motion to dismiss in Knapke, the Court held that there was no 7 requirement to allege that anyone actually saw the image of the plaintiff. (Opp. at 4 (citing 8 Knapke, Order on Motion to Dismiss (Dkt. No. 25).) But in Knapke, the Court considered an 9 Ohio law that contains no territorial requirement. See Knapke, Dkt. No. 25 at 12. That makes the 10 decision in Knapke unhelpful in understanding the parameters of the IRPA’s territoriality 11 requirement. 12 The Court is also unconvinced by Boshears’ other alleged “acts or events” satisfy the 13 territoriality requirement. First, Boshears alleges that Classmates misappropriated his yearbooks 14 in Indiana. (Opp. at 3 (citing FAC ¶ 54).) But Boshears also alleges that he “does not know how
15 Classmates obtained his photographs as a child.” (FAC ¶ 12.) That admission undermines his 16 argument, and the Court finds the allegations insufficient. Second, the Court is unpersuaded that 17 Classmates’ failure to obtain Boshears’ consent in Indiana satisfies the territoriality requirement. 18 As explained above, the act or event occurring in Indiana must also include the use of the image 19 in Indiana. And the Court is unconvinced that cases interpreting a different Illinois law are 20 relevant. (See Opp. at 5-6 (citing Vance v. Int’l Bus. Machines Corp., 20-cv-577, 2020 WL 21 5530134, at *4 (N.D. Ill. Sept. 15, 2020); Rivera v. Google Inc., 238 F. Supp. 3d 1088, 1102 22 (N.D. Ill. 2017)).) Not only are the statutes different, but neither case stands for the proposition 23 that the location of the plaintiff who did not consent is sufficient to state a claim under Illinois
24 1 law. See Vance, 2020 WL 5530134, at *3 (declining to rule on the extraterritoriality issue); 2 Rivera, 238 F. Supp. 3d at 1101-02 (finding territoriality satisfied where Google obtained the 3 images from the plaintiffs in Illinois and did so without consent). Third, Boshears suggests that 4 because the harm was “felt in Indiana” he has satisfied the territoriality requirement. (Opp. at 6.)
5 But this does not identify a non-consensual, commercial use of the image in Indiana. Boshears 6 provides no authority for this proposition. He also misplaces reliance on a decision considering 7 the Illinois’ Deceptive Trade Practices Act, which employs a different standard by which to 8 measure territoriality that has no apparent analog to the IRPA. (See Opp. at 6 (citing Specht v. 9 Google, Inc., 660 F. Supp. 2d 858, 866 (N.D. Ill. 2009)).) 10 Given Boshears’ failure to allege sufficient plausible allegations of a non-consensual 11 commercial use of his image in Indiana, the Court GRANTS the Motion to Dismiss as to this 12 claim. But the Court’s dismissal is without prejudice and it will permit Boshears an opportunity 13 to amend his complaint. 14 b. Commercial Use
15 Classmates argues that because Boshears has not alleged an unauthorized endorsement, 16 he has not satisfied the commercial use requirement of the IRPA claim. (Mot. at 4 (citing Daniels 17 v. FanDuel, Inc., 109 N.E.3d 390, 392, 396, 397 (Ind. 2018) (“Daniels II”)).) This argument rests 18 on a faulty analysis of the Daniels II case and the Court rejects the argument. 19 The IRPA received its first in-depth analysis by both the Indiana Supreme Court and the 20 Seventh Circuit in the Daniels v. FanDuel litigation. In the Daniels matter, college football 21 players alleged that an internet-based fantasy football website violated the IRPA by using their 22 personalities without consent to attract participants to buy into a fantasy football league that 23 could yield cash prizes. See Daniels II, 109 N.E.3d at 392. The district court found that the
24 alleged use fell within the “newsworthy” exception under the IRPA, and the Seventh Circuit then 1 certified a question to the Indiana Supreme Court to determine “[w]hether online fantasy-sports 2 operators that condition entry on payment, and distribute cash prizes, need the consent of players 3 whose names, pictures, and statistics are used in the contests, in advertising the contests, or 4 both.” Id. The Indiana Supreme Court found that consent was not necessary because the
5 statistics, images, and names of the players was sufficiently “newsworthy” to fit within the 6 “newsworthy” exception to the IRPA. See id. at 396-97. 7 Classmates incorrectly contends that Daniels II imposed a requirement that Boshears 8 allege Classmates used his image to make an endorsement. (See Mot. at 4 (quoting Daniels II 9 and arguing that the “commercial use” must be the use of “plaintiff’s personality to depict an 10 ‘unauthorized endorsement’”). But the Court in Daniels II did not hold that there must be an 11 allegedly non-consensual endorsement. The question of what constitutes a “commercial use” was 12 not before the Court. Instead, the Court “answered the question [presented by the Seventh 13 Circuit] narrowly” and found only that the IRPA’s newsworthy exception applied to “online 14 fantasy sports operators that condition entry to contests on payment and distribute cash prizes
15 [and who] . . . use the names, pictures, and statistics of players without their consent. . . .” 16 Daniels II, 109 N.E.3d at 392. The Court made no pronouncement that only endorsements are 17 actionable commercial uses, though it identified such uses as commercial. 18 Boshears has sufficiently alleged a commercial use of his personality. As alleged in the 19 Amended Complaint, the Classmates’ website uses his image to advertise a paid subscription to 20 its services in at least two ways. That is sufficient to show a commercial use. Boshears has 21 alleged a violation of his “right to control one’s identity from direct appropriation” which the 22 Court in Daniels II concluded “would seem central to the right of publicity recognized in 23 Indiana.” Daniels II, 109 N.E.3d at 397. The Court rejects Classmates’ Motion as to this issue.
24 1 3. Newsworthy Exception 2 Classmates contends that even if Boshears has stated a claim under the IRPA, its conduct 3 falls within the “newsworthy” exception. The Court disagrees. 4 The IRPA does not apply to “Material that has political or newsworthy value.” Ind. Code
5 Ann. § 32-36-1-1(1)(c)(1)(B). In Daniels II, the Indiana Supreme Court explained the contours of 6 the “newsworthy” exception to the IRPA. First, the Court adopted the “expansive common law 7 view of the term ‘newsworthy.’” Daniels II, 109 N.E.3d at 396. The Court did so in part to avoid 8 construing the statute to run afoul of the First Amendment. See id. Second, the Court cited an 9 opinion from the District Court for the Southern District of Indiana interpreting the common law 10 definition of “newsworthy.” See id. (citing Time, Inc. v. Sand Creek Partners, L.P., 825 F. Supp. 11 210, 212 (S.D. Ind. 1993)). In Time, the court explained that “[t]he privilege of enlightening the 12 public is by no means limited to dissemination of news in the sense of current events but extends 13 far beyond to include all types of factual, educational and historical data, or even entertainment 14 and amusement, concerning interesting phases of human activity in general.” Time, 825 F. Supp.
15 at 212 (quoting Rogers v. Grimaldi, 695 F. Supp. 112, 117 (S.D.N.Y. 1988)). Third, while the 16 Court embraced a broad definition of “newsworthy,” it recognized that “the unauthorized use of 17 a personality to advertise or promote a product likely lies outside the scope of what is considered 18 newsworthy.” Daniels II, 109 N.E.3d at 397. This is true even if the person at issue is a media 19 personality or sports figure. See id. (noting that Kareem Abdul-Jabbar could sue for 20 misappropriation of his identity even though he is a celebrity sports figure). 21 Classmates’ use of Boshears’ personality to advertise its subscription service is not 22 newsworthy. As alleged, Classmates uses Boshears’ image for the purpose selling a subscription 23 to Classmates’ website that allows users to communicate, view other users, see high-resolution
24 1 copies of yearbooks and buy yearbook reprints at a discount. The use of Boshears’ likeness is not 2 alleged to be “enlightening” or newsworthy even if Boshears and his former classmates may 3 have interest in the historical subject matter. See Time, 825 F. Supp. at 212. During oral 4 argument Classmates suggested that essentially any use of a student’s picture is newsworthy,
5 which strains credulity. (Hearing Transcript at 6:4-12 (Dkt. No. 43).) While a yearbook itself 6 may potentially have be newsworthy to the students involved, Classmates provides no cogent 7 explanation why its use of Boshears’ yearbook photo to sell subscriptions is newsworthy. 8 Classmates’ use of the photos to sell a subscription—the real focus of this case—has only 9 commercial, not newsworthy value. The Court is further unconvinced by Classmates’ argument 10 that “there wouldn’t be an industry for old yearbooks if there wasn't an interest in them.” 11 (Hearing Tr. at 5:15-16.) Whether Classmates generates revenue from selling subscriptions its 12 yearbook-related services is not determinative of whether the use of Boshears’ image here is 13 newsworthy. 14 In reply, Classmates cites to Daniels II and argues that because some of the information
15 here is factual, it falls within the newsworthy exception. (Reply at 5.) But the parties in Daniels 16 II agreed that statistics related to the football players were “newsworthy.” Daniels II, 109 N.E.3d 17 at 397. Here, there are no similar concessions and no indication that the biographical information 18 about Boshears has any newsworthy character. Classmates’ position appears ultimately to be that 19 any factual information is newsworthy. That cannot be squared with the Indiana Supreme 20 Court’s express recognition that some uses of even famous personalities are not newsworthy. See 21 id. The Court therefore declines to adopt Classmates’ position which would essentially cause the 22 newsworthy exception to eclipse the protections of IRPA. 23
24 1 The Court rejects Classmates’ argument that its conduct falls within the newsworthy 2 exception to the IRPA. 3 4. Literary Work Exception 4 Classmates argues that its use of Boshears’ personality falls within the “literary work”
5 exception to the IRPA. The Court disagrees. 6 The IRPA does not apply to “Literary works, theatrical works, musical compositions, 7 film, radio, or television programs.” Ind. Code Ann. § 32-36-1-1(1)(c)(1)(A). At least one court 8 has concluded that this reaches video games. See Dillinger, LLC v. Elec. Arts Inc., 795 F. Supp. 9 2d 829, 836 (S.D. Ind. 2011). Here, even if one accepts that yearbooks are literary works, 10 Classmates has not shown that its subscription service is a literary work. Boshears attacks only 11 the use of his likeness to sell the subscription service that lets users engage with each other, build 12 profiles, message each other, and view high resolution copies of yearbooks. He no longer attacks 13 Classmates’ use of his likeness to sell yearbooks. Based on these narrowed allegations and the 14 procedural posture, the Court is unconvinced that the subscription service is a literary work. The
15 Court rejects Classmates’ argument as to this exception. 16 C. Common Law Misappropriation Claim 17 Classmates ask the Court to dismiss Boshears’ common law misappropriation of a name 18 and likeness claim on the theory that it is unrecognized in Indiana. The Court disagrees. 19 Indiana has recognized a common law claim for misappropriation of a likeness or name. 20 See Felsher v. Univ. of Evansville, 727 N.E.2d 783, 787 (Ind. Ct. App.) overruled on other 21 grounds by Felsher v. Univ. of Evansville, 755 N.E.2d 589, 599-601 (Ind. 2001). In the context 22 of an “invasion of privacy” claim, Indiana courts consider “‘four distinct injuries: (1) intrusion 23 upon seclusion, (2) appropriation of [name or] likeness, (3) public disclosure of private facts, and
24 1 (4) false-light publicity.’” Felsher v. Univ. of Evansville, 755 N.E.2d 589, 593 (Ind. 2001) 2 (quoting Doe v. Methodist Hosp., 690 N.E.2d 681, 684 (Ind. 1997) (citing Restatement (Second) 3 of Torts, § 652A (1977))). In Felsher, the Court of Appeals recognized that there had been “no 4 Indiana cases regarding the strand of invasion of privacy involving appropriation of another’s
5 name or likeness.” 727 N.E.2d at 787. But, citing the Restatement Second of Torts § 652, the 6 Court favorably identified “the strand of invasion of privacy recognized in Indiana and known as 7 ‘appropriation of name or likeness.’” Id. The Court then upheld the trial court’s preliminary 8 injunction that barred the defendant from “appropriating the names and likenesses” of three 9 individual plaintiffs. Id. 786, 787. As the Court explained, the defendant “ha[d] no right to 10 appropriate either a name or a likeness not his own. Id. at 787–88. On review, the Indiana 11 Supreme Court rejected the Court of Appeals’ conclusion that a corporation could maintain a 12 claim for misappropriation of a likeness or name. See Felsher, 755 N.E.2d at 594. But the Court 13 affirmed the injunction entered in favor of the individual plaintiffs on this very same claim with 14 only one minor revision. See id. at 599-601. Had the Supreme Court believed the claim was not
15 cognizable it would not have upheld the trial court’s preliminary injunction. Based on the 16 Court’s review of the two opinions in Felsher, the Court concludes that Indiana recognizes a 17 claim for misappropriation of one’s likeness and name. 18 Under Indiana law, “an appropriation and use of a plaintiff’s name or likeness occurs 19 whenever the defendant ‘makes use of the plaintiff’s name or likeness for his own purposes or 20 benefit, even though the use is not a commercial one, and even though the benefit sought to be 21 obtained is not a pecuniary one.” Felsher, 727 N.E.2d 783, 787 (citing Restatement (Second) of 22 Torts § 652I cmt. b (1977)). Classmates offers no argument why Boshears’ complaint fails to 23 state a claim. Instead, Classmates relies on the Indiana Supreme Court’s statement in Daniels II
24 1 that “no Indiana court has directly created a common law right of publicity in our state. . . .” 2 Daniels II, 109 N.E.3d at 395. But this statement does not stand for the proposition that a person 3 cannot bring a claim for misappropriation of a likeness or name or that Felsher is no longer good 4 law. Classmates’ own briefing ignores Felsher entirely. At oral argument Classmates suggested
5 that the claim in Felsher was a “false light” claim and not a misappropriation claim. (Hearing Tr. 6 at 15.) That is incorrect. In analyzing the misappropriation claim, the Court of Appeals noted that 7 it was, in fact, distinct from plaintiffs’ false light claim. Felsher, 727 N.E.2d at 787 n.1. 8 The Court DENIES the Motion as to this claim and finds the claim adequately pleaded. 9 D. Washington’s Uniform Public Expression Protection Act 10 Classmates argues that Boshears’ claim is barred by Washington’s Uniform Public 11 Expression Protection Act (UPEPA). The Court disagrees. 12 UPEPA requires a defendant to show (1) “that the [plaintiff] failed to state a cause of 13 action upon which relief can be granted,” and (2) that the defendant exercised one of the 14 constitutionally protected rights “on a matter of public concern.” RCW 4.105.060,
15 4.105.010(2)(c). But UPEPA does not apply to “a person primarily engaged in the business of 16 selling or leasing goods or services if the cause of action arises out of a communication related to 17 the person’s sale or lease of the goods or services.” RCW 4.105.010(3)(a)(iii). 18 Classmates’ argument under UPEPA fails for two reasons. First, because Boshears has 19 stated a claim under Indiana common law, the UPEPA claim cannot be maintained. See RCW 20 4.105.060. Second, because Classmates speech at issue is “related to [Classmates’] sale . . . of . . 21 . services” it is excluded from the Act. RCW 4.105.010(3)(a)(iii). Classmates argues that its 22 conduct falls outside this exception because it is selling yearbooks and because it maintains a 23 database of yearbooks that courts have found to be protected non-commercial speech. But this
24 1 argument ignores the allegations in the Amended Complaint which attack Classmates’ use of 2 Boshears’ image to advertise its subscription services, which is purely commercial. And the 3 cases Classmates cites are factually distinguishable. (See Mot. at 10-11.) In the primary case on 4 which Classmates relies, the court held that a website’s encyclopedic database containing
5 information about movies, casts, and crew members that did not “propose a commercial 6 transaction” contained non-commercial speech. See IMDb.com Inc. v. Becerra, 962 F.3d 1111, 7 1121–22 (9th Cir. 2020). But here, Boshears attacks Classmates’ commercial use of his name 8 and likeness to sell subscription services. And unlike in IMDb, Classmates’ speech “propose[s] a 9 commercial transaction.” Id. at 1122. 10 The Court DENIES the Motion as to this claim. The Court also DENIES Boshears’ 11 request for fees and costs incurred in opposing the UPEPA claim. UPEPA only compels the 12 Court to award of costs, fees, and expenses to the non-moving party if defendant’s motion is “not 13 substantially justified,” or if it is “filed solely with the intent to delay the proceeding.” See RCW 14 4.105.090. Here, the Court finds sufficient justification for Classmates to have pursued the claim
15 and there is no clear basis to conclude it was done to delay the proceedings. 16 E. Arbitration 17 Classmates argues that in filing his complaint, Boshears’ agreed to arbitrate all of his 18 claims by ratifying his counsel’s pre-existing agreement with Classmates to arbitrate any claims 19 related to counsel’s use of Classmates’ website. The Court finds no merit in this theory. 20 To understand Classmates’ arguments, the Court reviews several relevant facts. In 2019, 21 Boshears’ counsel created an account with Classmates and agreed to Classmates’ Terms of 22 Service (TOS), including the requirement to arbitrate claims related to his use of the website. In 23 preparing the amended complaint in 2021, counsel created a new account with Classmates and
24 1 sent a letter to Classmates opting out of the arbitration requirement on his own and his client’s 2 behalf, as permitted by the TOS. (See Declaration of Benjamin Osborn ¶ 4 (Dkt. No. 32).) He 3 then used this new account to do all of his research that forms the basis of the complaint, 4 including to take the screen shots of Classmates’ website that show the use of Boshears’ likeness
5 and name and the subscription purchase offers. 6 Effect of Opt-Out 7 Classmates first argues that counsel’s opt-out is ineffective because of his pre-existing 8 agreement to arbitrate his claims. Classmates invokes the TOS and case law in support of is 9 argument, neither of which persuades the Court. First, Classmates cites the TOS which forbids 10 the creation of more than one personal membership. (See TOS § 3(A) (Ex. 2 to the Declaration 11 of Tara McGuane).) But the TOS do not state what the remedy is if one creates multiple accounts 12 or what impact that may have on a later opt-out request using a new account. The TOS could 13 have, but do not include a provision stating that any user who makes a new account is bound by 14 the original terms of their agreement, including as to the arbitration provision. Instead,
15 Classmates’ website allowed counsel to create the new account and gather the content used in the 16 Amended Complaint. The Court is therefore unpersuaded that the TOS compel finding that 17 counsel’s opt-out is ineffective. Second, Classmates cites to the Restatement Second of Contracts 18 proposition that there must be two parties to a contract and suggests that counsel remains bound 19 by his initial agreement. (Mot. at 15.) But that does not answer the question of whether counsel 20 may create a new account and validly opt out of arbitration related to his use of the new account. 21 Classmates’ Reply invokes a Ninth Circuit decision in Stover v. Experian Holdings, Inc., 978 22 F.3d 1082, 1084, 1085-86 (9th Cir. 2020). (Reply at 8). But Stover is not particularly relevant 23 because it addressed a different legal question with a unique factual posture without announcing
24 1 any legal rule supporting Classmates’ position here. Having considered all of Classmates’ 2 arguments, the Court is left without sufficient basis to conclude that counsel’s opt-out has no 3 effect. The Court also notes that counsel created the account expressly to investigate the claims 4 in this case pursuant to Rule 11 as an agent of his client, he used only this account to investigate
5 the claim and take the screen shots, and he timely submitted the opt-out request for him and his 6 client. (Osborn Decl. ¶¶ 2-4.) 7 Ratification 8 Even if the Court found that the opt-out was ineffective, the Court is unconvinced by 9 Classmates’ ratification argument. 10 Under Indiana law, a principal may be bound by an agent through the theory of 11 ratification. “Ratification means the adoption of that which was done for and in the name of 12 another without authority.” Heritage Dev. of Indiana, Inc. v. Opportunity Options, Inc., 773 13 N.E.2d 881, 889 (Ind. Ct. App. 2002) (citation and quotation omitted). “When a principal, with 14 full knowledge of the facts, appropriates the fruits of an agent’s unauthorized act, the principal
15 may not complain later the agent acted without authority.” Blairex Lab’ys, Inc. v. Clobes, 599 16 N.E.2d 233, 236 (Ind. Ct. App. 1992) So “[a] principal will be bound by a contract entered into 17 by the principal’s agent on his behalf regardless of the agent’s lack of authority if the principal 18 subsequently ratifies the contract as one to which he is bound.” Heritage, 773 N.E.2d at 889 19 “Ratification may be express, where the principal explicitly approves the contract, or implied, 20 where the principal does not object to the contract and accepts the contract’s benefits.” Id. 21 Classmates has not advanced a compelling ratification argument. Counsel’s original 22 agreement to the TOS’s provision to arbitrate was accomplished two years before he began 23 representing his client. Counsel’s 2019 agreement was not “done for an in the name of”
24 1 Boshears. See Heritage, 773 N.E.2d at 889. Nor do any facts suggest that Boshears had any 2 knowledge, let alone “full knowledge,” that his counsel ever agreed to arbitrate claims related to 3 his use of the Classmates’ website. See Hutter v. Weiss, 132 Ind. App. 244, 253, 177 N.E.2d 4 339, 344 (1961) (Under Indiana law, “[t]he general rule is that full knowledge by the principal of
5 all the material facts is indispensable to a ratification by him of the unauthorized act of his 6 agent.”). Nor is there any evidence that Boshears received any “benefit” from his counsel’s use 7 of the Classmates’ website, as counsel’s use merely aided in the filing of a complaint and 8 satisfying counsel’s Rule 11 obligations. See Callahan v. PeopleConnect, Inc., No. 21-16040, 9 Memorandum at 3 (9th Cir. Mar. 18, 2022) (considering a similar ratification argument under 10 California law and finding “considerably doubt on this record that the Plaintiffs received any 11 ‘benefits’ that would trigger ratification, such as a settlement or receipt of payment”). Even if the 12 filing of the complaint was a benefit and Boshears learned of his counsel’s prior agreement when 13 Classmates filed its motion to dismiss, Boshears could not avoid accepting the benefit because 14 the complaint was already a matter of public record. See id.
15 At oral argument, Classmates suggested for the first time that the Court should apply 16 Washington law to analyze its ratification argument. (Hearing Tr. at 17-18.) The basis of this 17 request appears to stem from an agreement between Classmates and the plaintiff in the Knapke 18 matter as part of a pending appeal. (Id.) Classmates never advanced this argument in its motion 19 or reply. Although Classmates has waived any choice of law argument, the Court has 20 independently considered the issue and finds no material basis on which to distinguish 21 Washington law from Indiana law on this issue. See Riss v. Angel, 131 Wash. 2d 612, 636 22 (1997) (“To be charged by ratification with the unauthorized act of an agent, the principal must 23
24 1 act with full knowledge of the facts, accept the benefits of the acts, or without inquiry assume an 2 obligation imposed.”) 3 The Court rejects Classmates’ strained ratification argument and finds no basis on which 4 to permit any limited discovery. The Court also declines Boshears’ suggestion that the Court
5 label Classmates’ arbitration argument frivolous. The Court thus DENIES Classmates’ request to 6 compel arbitration. 7 F. Copyright Act 8 Classmates argues that the Copyright Act preempts Boshears’ claims. The Court 9 disagrees. 10 The Copyright Act provides that “the owner of copyright . . . has the exclusive rights to 11 do and to authorize” others to display, perform, reproduce or distribute copies of the work and to 12 prepare derivative works. 17 U.S.C. § 106. “Section 301 of the Act provides for exclusive 13 jurisdiction over rights that are equivalent to any of the exclusive rights within the general scope 14 of copyright as specified in the Act.” Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d
15 1146, 1152 (9th Cir. 2010). The Ninth Circuit employs a two-part test to measure preemption, 16 which asks: (1) does the subject matter of the state law claim fall within the subject matter of 17 copyright as described in 17 U.S.C. §§ 102 and 103; and (2) if so, are the rights asserted under 18 state law are equivalent to the rights contained in 17 U.S.C. § 106? See id. at 1153 (quoting Laws 19 v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137-38 (9th Cir. 2006)). 20 Section 102 explains that “[c]opyright protection subsists . . . in original works of 21 authorship fixed in any tangible medium of expression, now known or later developed, from 22 which they can be perceived, reproduced, or otherwise communicated, either directly or with the 23 aid of a machine or device [and w]orks of authorship include . . . pictorial, graphic, and
24 1 sculptural works.” 17 U.S.C. § 102. “Section 103 provides that the subject matter specified in § 2 102 also includes compilations and derivative works, ‘but the copyright in a compilation or 3 derivative work extends only to the material contributed by the author of such works as 4 distinguished from the preexisting material employed in the work.’” Downing v. Abercrombie &
5 Fitch, 265 F.3d 994, 1003 (9th Cir. 2001) (quoting 17 U.S.C. § 103). 6 A “person’s name or likeness is not a work of authorship within the meaning of 17 7 U.S.C. § 102.” Downing, 265 F.3d at 1004. This is true even if the plaintiff’s “names and 8 likenesses are embodied in a copyrightable photograph.” Id. Thus, “a publicity-right claim is not 9 preempted when it targets non-consensual use of one’s name or likeness on merchandise or in 10 advertising.” Maloney v. T3Media, Inc., 853 F.3d 1004, 1010 (9th Cir. 2017). “But when a 11 likeness has been captured in a copyrighted artistic visual work and the work itself is being 12 distributed for personal use, a publicity-right claim interferes with the exclusive rights of the 13 copyright holder, and is preempted by section 301 of the Copyright Act.” Id. 14 The Copyright Act does not preempt Boshears’ claims. Classmates’ alleged misuse of his
15 likeness to sell subscription services is not a work of authorship that falls under Section 102 of 16 the Copyright Act. See Downing, 265 F.3d at 1004. Copyright Act preemption therefore does not 17 apply. See Jules Jordan, 617 F.3d at 1153; see Daniels v. FanDuel, Inc., No. 18 116CV01230TWPDKL, 2017 WL 4340329, at *13 (S.D. Ind. Sept. 29, 2017) (concluding that 19 “Indiana’s right-of-publicity statute is not preempted by the Copyright Act”) aff’d, 909 F.3d 876 20 (7th Cir. 2018). Classmates suggests that the Court’s analysis would change if it considered a 21 “review of the full website.” (See Reply at 10.) But Classmates has not explained why 22 consideration of such materials would be appropriate on a motion to dismiss. And the Court’s 23
24 1 review of those materials does not convince it that Classmates use of Boshears’ likeness to 2 advertise its subscription services falls within Section 102 of the Copyright Act. 3 The Court rejects this argument and DENIES the Motion as to this issue. 4 G. First Amendment
5 Classmates argues that Boshears’ IRPA claim violates its rights under the First 6 Amendment. (Mot. at 18.) The Court disagrees. 7 The Court must first resolve whether the Classmates’ use of Boshears’ likeness to 8 advertise its subscription services is core First Amendment speech or commercial speech. 9 Commercial speech is “defined as speech that does no more than propose a commercial 10 transaction.” United States v. United Foods, Inc., 533 U.S. 405, 409 (2001). The Supreme Court 11 has noted that “advertising which ‘links a product to a current public debate’ is not thereby 12 entitled to the constitutional protection afforded noncommercial speech.” Bolger v. Youngs Drug 13 Prods. Corp., 463 U.S. 60, 67–68 (1983) (holding that “information pamphlets are properly 14 characterized as commercial speech”). “Where the facts present a close question, ‘strong
15 support’ that the speech should be characterized as commercial speech is found where the speech 16 is an advertisement, the speech refers to a particular product, and the speaker has an economic 17 motivation.” Hunt v. City of Los Angeles, 638 F.3d 703, 715 (9th Cir. 2011) (citing Bolger, 463 18 U.S. at 66–67). But “[c]ommercial speech does not retain its commercial character ‘when it is 19 inextricably intertwined with otherwise fully protected speech.’” Id. (quoting Riley v. Nat’l Fed. 20 of the Blind of N. Car., Inc., 487 U.S. 781, 796 (1988)). 21 As alleged, the advertisements at issue in this case are commercial speech. Classmates 22 attempts to avoid this conclusion by arguing that Boshears is attacking its “dissemination of 23 yearbook excerpts on a free, publicly accessible database.” (Mot. at 18.) But what Boshears
24 1 seeks to stop is Classmates use of his likeness to advertise its subscription services that allows 2 user to connect and interact and access full resolution copies of the yearbooks. The 3 advertisements at issue that Classmates created are not intertwined with otherwise protected 4 speech. And the mere fact that Boshears’ photos do not appear on the screens offering the sale of
5 the subscription is not dispositive. As alleged, a user is offered the subscription service after 6 clicking on Boshears’ image or a user is offered the subscription on the page displaying 7 Boshears’ image. (FAC ¶¶ 32, 35.) 8 Having concluded that the speech is commercial, the Court considers whether the IRPA 9 violates the First Amendment. “Commercial speech that is not false or deceptive and does not 10 concern unlawful activities, however, may be restricted only in the service of a substantial 11 governmental interest, and only through means that directly advance that interest.” Zauderer v. 12 Off. of Disciplinary Couns. of Supreme Ct. of Ohio, 471 U.S. 626, 638 (1985). “The protection 13 available for particular commercial expression turns on the nature both of the expression and of 14 the governmental interests served by its regulation.” Centr. Hudson Gas & Elec. Corp. v. Pub.
15 Serv. Comm’n, 447 U.S. 557, 563 (1980). The Court engages in a multi-step analysis. “First, we 16 determine whether the expression is constitutionally protected.” Bolger, 463 U.S. at 68. “For 17 commercial speech to receive such protection, ‘it at least must concern lawful activity and not be 18 misleading.’” Id. (quoting Centr. Hudson, 447 U.S. at 566). “Second, we ask whether the 19 governmental interest is substantial [and i]f so, we must then determine whether the regulation 20 directly advances the government interest asserted, and whether it is not more extensive than 21 necessary to serve that interest.” Id. at 68-69. 22 The Court is skeptical that the commercial speech at issue is entitled to any protection, 23 given that it allegedly misappropriates Boshears’ persona and potentially misleads the public.
24 1 See Zauderer, 471 U.S. at 638. Even if it the speech is entitled to protection, the IRPA advances 2 Indiana’s substantial interest in protecting its citizens from non-consensual commercial use of 3 their personality. As the Indiana Supreme Court has noted, “[t]he right to control one’s identity 4 from direct appropriation would seem central to the right of publicity recognized in Indiana”
5 through the IRPA. Daniels II, 109 N.E.2d at 397. Indeed, the IRPA “reportedly came about after 6 concerns that profiteers were selling baseball-style cards of an AIDS victim without the consent 7 of his surviving family.” Id. at 397 n.3. This affirms Indiana’s substantial interest in protecting 8 its citizens right to publicity. And given the exceptions embedded in the law (two of which 9 Classmates has invoked), it does not appear more extensive than necessary to protect against 10 non-consensual commercial misuse of one’s likeness or name. 11 The Court therefore rejects this as basis on which to dismiss the claims. 12 H. Communications Decency Act 13 Classmates argues that it is entitled to immunity under the Communications Decency 14 Act, 47 U.S.C. § 230(c)(1). The Court is unpersuaded.
15 To be entitled to dismissal based on this affirmative defense, Classmates must show that 16 it is: (1) an interactive computer service provider; (2) publishing information “provided by 17 another information content provider.” 47 U.S.C. § 230(c)(1). The CDA defines “information 18 content provider” as “any person or entity that is responsible, in whole or in part, for the creation 19 or development of information provided through the Internet or any other interactive computer 20 service.” 47 U.S.C. § 230(c)(1). As to the first element, the Ninth Circuit interprets the term 21 “interactive computer service provider” expansively. See Dyroff v. Ultimate Software Grp., Inc., 22 934 F.3d 1093, 1097 (9th Cir. 2019), cert. denied, 140 S. Ct. 2761, 206 L. Ed. 2d 936 (2020). 23 And as to the second element, “what matters is whether the claims ‘inherently require[ ] the court
24 1 to treat the defendant as the ‘publisher or speaker’ of content provided by another.’” Id. at 1098 2 (quoting Barnes v. Yahoo!, Inc., 570 F.3d 1096, (9th Cir. 2009)). 3 “The prototypical service qualifying for [CDA] immunity is an online messaging board 4 (or bulletin board) on which Internet subscribers post comments and respond to comments
5 posted by others.” Kimzey v. Yelp! Inc., 836 F.3d 1263, 1266 (9th Cir. 2016) (internal 6 quotations omitted). “Taking the relevant statutory definitions and case law in account, it 7 becomes clear that, in general, Section 230(c)(1) ‘protects websites from liability [under state or 8 local law] for material posted on the[ir] website[s] by someone else.’” Dyroff, 934 F.3d at 1097 9 (quoting Doe v. Internet Brands, Inc., 824 F.3d 846, 850 (9th Cir. 2016)). When the interactive 10 computer service provider creates the content itself it “is also a content provider” and not entitled 11 to protection under the CDA. See Fair Hous. Council of San Fernando Valley v. 12 Roommates.Com, LLC, 521 F.3d 1157, 1162 (9th Cir. 2008). In other words, the CDA’s “grant 13 of immunity applies only if the interactive computer service provider is not also an information 14 content provider, which is defined as someone who is responsible, in whole or in part, for the
15 creation or development of the offending content.” Id. (internal citations omitted). 16 The Court finds that Classmates is not entitled to protection under the CDA. The sole 17 issue in this case is whether Classmates’ decision to create advertisements using Boshears’ 18 persona to sell subscription services violates the IRPA and the common law. (FAC ¶¶ 1-10.) 19 That content is generated expressly by Classmates and the advertisement is not merely a passive 20 display of content created by another entity, even if it contains a picture from a school yearbook. 21 In this context, Classmates is the content creator and is not entitled to immunity under the CDA. 22 See Roomates.Com, 521 F.3d at 1162. 23
24 1 Classmates argues that it is a mere “publisher” and not a content provider because it 2 displays old yearbooks. (Mot. at 19-20.) But this argument ignores the allegations in the 3 Amended Complaint, which focus on Classmates’ use Boshears’ photos in unique 4 advertisements created by Classmates. These are the acts of a content creator, which causes them
5 to fall outside the CDA’s grant of immunity. Classmates’ reliance on Gonzalez v. Google LLC, 2 6 F.4th 871 (9th Cir. 2021) does not alter this conclusion. In that case, the Ninth Circuit concluded 7 that Google’s algorithms suggesting related content was an act of publication because the 8 suggested related content was created by others and offered by Google merely as a response to 9 user queries and search histories. Here, Boshears is not challenging Classmates’ return of 10 information in response to a search query. Rather, he attacks what happens next—Classmates’ 11 use of his image to display advertisements to subscribe to Classmates’ services. The 12 advertisements are of Classmates’ own creation and are not the kind of “neutral tools” that are 13 shielded by the CDA’s grant of immunity. See Gonzalez, 2 F.4d at 894. 14 The Court DENIES the Motion as to this argument.
15 F. Motion to Stay Discovery 16 Classmates asks the Court to stay discovery pending a decision on the Motion to Dismiss. 17 As Classmates contends: “Courts determining whether to stay discovery pending 18 resolution of a motion to dismiss consider whether: ‘(1) the pending motion would be potentially 19 dispositive of the entire case or at least dispositive of the issue on which discovery is sought, and 20 (2) the pending potentially dispositive motion can be decided without additional discovery.’” 21 (See Mot to Stay at 4 (quoting Bosh v. United States, No. C19-5616, 2019 WL 5684162, at *1 22 (W.D. Wash. Nov. 1, 2019) (citation omitted)).) 23 Classmates cannot meet the standard it announces. Importantly, the Motion to Dismiss is
24 not dispositive of the entire case and the Court has granted leave to amend what appears to be a 1 curable defect in Boshears’ IRPA claim. As such, a stay of discovery is unnecessary. In addition, 2 the Court finds no merit in Classmates’ argument that a stay should issue because it may appeal 3 the denial of its request to compel arbitration. That issue is not before the Court and is not a basis 4 to stay discovery. The Parties must proceed to engage in discovery in good faith consistent with
5 all Court-ordered discovery. The Court is unpersuaded by any of the briefing submitted by 6 Classmates that doing so would impact its claimed right to arbitration. If Classmates believes 7 that it cannot engage in specific discovery without waiving its theoretical right to arbitrate, it 8 must promptly move for a protective order. The Court DENIES the Motion to Stay. 9 CONCLUSION 10 The Court agrees with Classmates that Boshears has not satisfied the prima facie 11 territoriality element of his IRPA claim. But the Court finds that this defect is likely curable 12 through amendment. The Court therefore GRANTS the Motion to Dismiss as to this claim 13 without prejudice and with leave to amend. Boshears shall file an amended complaint within 20 14 days of entry of this Order.
15 The Court otherwise rejects Classmates’ other arguments as to Boshears’ IRPA claim. 16 And the Court finds no merit in Classmates’ attack to the common law misappropriation claim, 17 which is adequately pleaded. The Court also rejects Classmates’ request to compel arbitration or 18 for dismissal under the Copyright Act, the CDA, or the First Amendment. The Court therefore 19 DENIES the remainder of the Motion to Dismiss. And the Court DENIES the Motion to Stay. 20 The clerk is ordered to provide copies of this order to all counsel. 21 Dated March 25, 2022. A 22 23 Marsha J. Pechman United States Senior District Judge 24