• Seventh Circuit Appears To Change Course on Federal Copyright Law Preemption Of State-Law Right-Of-Publicity Claims
  • June 21, 2005 | Author: Ryan S. Hilbert
  • Law Firm: Manatt, Phelps & Phillips, LLP - Palo Alto Office
  • A fashion model's right-of-publicity claim under Illinois state law was not preempted by the federal Copyright Act, the U.S. Court of Appeals for the Seventh Circuit recently held, thereby expressly reversing its own fall 2004 ruling on the same issue in the same litigation. Toney v. L'Oreal USA Inc. (The Seventh Circuit's earlier, contrary opinion was discussed in the December 6, 2004 issue of this newsletter.)

    June Toney is a model who has appeared in print advertisements, commercials and runway shows. In November 1995, Toney authorized Johnson Products Co. to use her likeness for a limited time on the packaging of a hair relaxer product called "Ultra Sheen Supreme." The Ultra Sheen Supreme line of products was subsequently acquired by L'Oreal USA Inc. and later the Wella Corporation (collectively, "Defendants"). When Defendants continued to use Toney's likeness beyond the authorized time period, Toney sued in federal court in Chicago, IL for a violation of her right of publicity under Illinois state law. Defendants moved to dismiss Toney's claim on the ground that it was preempted by the federal Copyright Act. The trial court agreed with Defendants and dismissed Toney's state-law right-of-publicity claim. Toney appealed.

    In fall 2004, the Seventh Circuit held that Toney's state-law right-of-publicity claim was preempted by the Copyright Act and affirmed the trial court's dismissal of Toney's claim. Shortly thereafter, Toney filed a petition for rehearing and a petition for rehearing en banc (i.e., by the full appellate court and not just a three-judge panel). On February 3, 2005, the Seventh Circuit granted Toney's petition for rehearing (but not en banc) and ordered supplemental briefing by the parties. Then, just recently, the Seventh Circuit vacated its fall 2004 opinion and reversed the trial court's dismissal of Toney's claim.

    The federal copyright law requires that two conditions be met before preemption of a state-law claim occurs: (1) the work of authorship in which the right is asserted must be fixed in a tangible medium of expression and come within the subject matter of copyright; and (2) the right in question must be "equivalent" to at least one of the rights specified in federal copyright law.

    The Court addressed directly whether Toney's state-law right-of-publicity claim was preempted by the Copyright Act and held that neither of these conditions had been met. With respect to the first condition, the Court found that there was no "work of authorship" at issue in Toney's claim because a person's likeness, her persona, is not authored and is not fixed, regardless of whether it appears in a copyrightable photograph. As to the second condition, the Court said that the rights protected by the Illinois right-of-publicity statute were not "equivalent" to any of the rights under the Copyright Act because "identity claims," such as those protected by the Illinois statute, concern an amorphous concept that is simply not protected by copyright law. Because neither of the two conditions was met, the Court held that Toney's state-law right-of-publicity claim was not preempted.

    Another point, perhaps the most interesting one, addressed by the Court, was whether, and to what extent, the Seventh Circuit's prior holding in Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n required the Court to reach a contrary result. In Baltimore Orioles, the Seventh Circuit held that the copyrights held by Major League Baseball ("MLB") clubs in the telecast of MLB games preempted the players' rights of publicity in their game-time performances. This decision has been widely criticized over the years by courts and commentators alike, many of whom view the case as broadly holding that all state-law right-of-publicity claims in the Seventh Circuit are preempted by copyright law. In an apparent attempt to assuage such concerns, the Seventh Circuit clarified its holding in Baltimore Orioles to support only the proposition that "state laws that intrude on the domain of copyright are preempted even if the particular expression is neither copyrighted nor copyrightable... [Baltimore Orioles] simply does not stand for the proposition that the right of publicity as protected by state law is preempted in all instances by federal copyright law; it does not sweep that broadly."

    Toney is important for several reasons. First, the case makes clear that state-law right-of-publicity claims brought in the Seventh Circuit (covering Illinois, Indiana and Wisconsin) are not automatically preempted by copyright. Clients who are considering whether to bring a claim relevant to this topic -- or even how to defend against such a claim -- should keep this guiding principle in mind. Second, the case suggests that the Seventh Circuit may be moving away from its rejection of the popular "extra elements" test employed by the U.S. Court of Appeals for the Ninth Circuit and others. Courts that apply such a test are often less likely to find copyright preemption of state-law claims. Third, the decision suggests that the Court may finally be willing to reconsider its opinion in Baltimore Orioles. In the fall 2004 Toney opinion, the Court went out of its way to say that it was not addressing the Baltimore Orioles case. In the new Toney opinion, however, the Court changed course entirely and sought to clarify its holding in Baltimore Orioles. The fact that the Court was willing to address this case now, combined with the Court's new view of state-law claims and preemption in the future, could mean that the Court is ready to confront its controversial decision head on.