Toney v LOreal and Wella
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[edit] 1 Toney v L’Oreal and Wella
Case Name: Toney v L’Oreal and Wella
Key Words: copyright, preemption, right of publicity
Court: United States Court of Appeals for the Seventh Circuit
Country: USA
Citation: 7th Circuit Appeal No. 03-2184
Date: 6 May 2005
Case No.: No. 03-2184
Importance: Identity is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted. The fact that a photograph could be copyrighted, and that the defendants owned the copyright to the photograph that was used, is irrelevant to the Illinois Right of Publicity Act (IRPA) claim. The basis of a right of publicity claim, concerns the message—whether the plaintiff endorses, or appears to endorse the product in question.
Facts: Model June Toney’s photograph was used to advertise a hair product marketed by Johnson Products Company. Toney consented to the use of her photograph for a limited time, but when a successor company later used the photograph without her permission, Toney filed suit alleging that her right of publicity had been violated. The district court dismissed her claim after finding that it was preempted by federal copyright law. Thus the appeal.
[edit] 2 Decision and Reasoning
[edit] 2.1 Can claim brought under IRPA be preempted by the Copyright Act?
The Illinois Right of Publicity Act (IRPA) grants an individual the “right to control and to choose whether and how to use an individual’s identity for commercial purposes.” (765 Ill. Comp. Stat. 1075/10.) Moreover, the IRPA provides that “[a] person may not use an individual’s identity for commercial purposes during the individual’s lifetime without having obtained previous written consent from the appropriate person . . . .”[765 Ill. Comp. Stat. 1075/30]. However, these state law rights are only valid if they do not interfere with federal copyright protections.
The IRPA states that a person’s “identity” is protected by the statute. Identity is defined to mean “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice.” [765 Ill. Comp. Stat. 1075/5] In short, the IRPA protects a person’s right to publicity. The subject matter of such a claim “is not a particular picture or photograph of plaintiff. Rather, what is protected by the right of publicity is the very identity or persona of the plaintiff as a human being.” A photograph “is merely one copyrightable ‘expression’ of the underlying ‘work,’ which is the plaintiff as a human being. There is only one underlying ‘persona’ of a person protected by the right of publicity.” In contrast, “[t]here may be dozens or hundreds of photographs which fix certain moments in that person’s life. Copyright in each of these photographs might be separately owned by dozens or hundreds of photographers.” A persona, defined in this way, “can hardly be said to constitute a ‘writing’ of an ‘author’ within the meaning of the copyright clause of the Constitution.” [Quoting, J. Thomas McCarthy, 2 Rts. Of Publicity & Privacy § 11:52 (2d ed. 2004) (emphasis in original) (internal citations and quotations omitted)]
Section 301 of the Copyright Act delineates two conditions which, if met, require the pre-emption of a state-law claim in favour of the rights and remedies available under federal law. Section 301(a) states:
On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by section [ ] 102 . . . are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
The two things need to be determined. Firstly, whether the work at issue is in tangible form and whether it comes within the subject matter of copyright as specified in § 102, and secondly, whether the right is equivalent to the general copyright protections which are set out in § 106.
Section 102 of the Act defines the subject matter of copyright as “original works of authorship fixed in any tangible medium of expression,” including “pictorial” works. [17 U.S.C. § 102(a)]. The Act’s definitional section explains that a work is “fixed” in a tangible medium of expression “when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[17 U.S.C. § 101.]
The notes and commentary accompanying § 106 make it clear that copyright holders have five exclusive and fundamental rights: reproduction, adaptation, publication, performance, and display [17 U.S.C. § 106]. A copyright is violated or infringed when, without permission, someone other than the copyright holder exercises one of those fundamental rights. Put differently, to avoid pre-emption, a state law must regulate conduct that is qualitatively distinguishable from that governed by federal copyright law—i.e., conduct other than reproduction, adaptation, publication, performance, and display.
Toney’s identity is not fixed in a tangible medium of expression. There is no “work of authorship” at issue in Toney’s right of publicity claim. A person’s likeness—her persona—is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change that. From this, it must also be found that the rights protected by the IRPA are not “equivalent” to any of the exclusive rights within the general scope of copyright that are set forth in § 106. Copyright laws do not reach identity claims such as Toney’s. Identity, as we have described it, is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted.
The purpose of the IRPA is to allow a person to control the commercial value of his or her identity. Unlike copyright law, “commercial purpose” is an element required by the IRPA, and is defined to mean “the public use or holding out of an individual’s identity (i) on or in connection with the offering for sale or sale of a product, merchandise, goods, or services; (ii) for purposes of advertising or promoting products, merchandise, goods, or services; or (iii) for the purpose of fundraising.” [765 Ill. Comp. Stat.1075/5]. Clearly the defendants used Toney’s likeness without her consent for their commercial advantage. The fact that the photograph itself could be copyrighted, and that defendants owned the copyright to the photograph that was used, is irrelevant to the IRPA claim.
The basis of a right of publicity claim concerns the message—whether the plaintiff endorses, or appears to endorse the product in question. One can imagine many scenarios where the use of a photograph without consent, in apparent endorsement of any number of products, could cause great harm to the person photographed. The fact of Toney consenting to the use of her photograph originally did not change that analysis. The defendants did not have her consent to continue to use the photograph, and therefore, they stripped Toney of her right to control the commercial value of her identity.
[edit] 2.2 Result
Dismissal of Toney’s right of publicity claim vacated; case remanded for further proceedings in the district court.
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