The U.S. Court of Appeals for the Seventh Circuit vacated and remanded the decision of the District Court for the Northern District of Illinois holding that the Copyright Act preempted the Illinois Right of Publicity Act (IRPA). Toney v. L’Oreal USA, Inc., Case No. 03-2184 (Seventh Cir. Apr. 8, 2005) (Kanne, J.).
June Toney is a print model whose likeness appeared on Johnson Products Company’s Ultra Sheen Supreme hair product packaging from November 1995 to November 2000 and in magazine advertisements for these products from November 1995 to November 1996. Toney authorized Johnson Products to use her likeness on this packaging and in these advertisements, but the authorization agreement stated that any additional uses of her likeness would be negotiated separately. Johnson Products sold the Ultra Sheen Supreme line of products to Carson Products, who later sold the line to L’Oreal USA. L’Oreal USA then sold the product line to Wella Products. After these acquisitions, Toney brought suit against Wella, L’Oreal USA and related parties claiming that their use of her likeness in connection with the packaging and promotion of the Ultra Sheen Supreme product beyond the authorized time period violated her right to publicity in her likeness, as protected under the IRPA.
The District Court for the Northern District of Illinois held that Toney’s IRPA claim was preempted by the Copyright Act. Toney appealed.
The Seventh Circuit held that the Illinois Right of Privacy Act is not preempted by copyright law based on a two-part analysis. Under U.S. copyright law, a state law claim is preempted in favor of the rights and remedies available under federal copyright law if "all legal rights are equivalent to any of the exclusive rights within the general scope of copyright as specified in §106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright" (emphasis added). The Court reviewed these criteria and found that preemption did not apply to Toney’s claim.
First, although the Court recognized that it is possible to fix a person’s image in copyrightable form, such as in a photograph, it found that Toney’s right of publicity claim did not include any "work of authorship" because "[a] person’s likeness—her persona—is not authored, and it is not fixed." Therefore, the Court held that "the rights protected by the IRPA are not ‘equivalent’ to any of the exclusive rights within the general scope of copyright." According to the Court, "copyright laws do not reach identity claims" because identity "is an amorphous concept that is not protected by copyright law."
The Court also noted that the IRPA requires a "commercial purpose" and that "the defendants used Toney’s likeness without her consent for their commercial advantage." Whether the defendants owned the copyright to the photograph containing Toney’s image was irrelevant to Toney’s right of publicity claim because the IRPA claim "relates to whether the plaintiff endorses or appears to endorse the product in question." Even though Toney originally consented to the use of the photograph, she did not specifically consent to the defendants’ later use of the photograph.
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