In November 1995, model June Toney authorized Johnson Products to use her image on packages of a hair-care product for five years pursuant to a written agreement. Subsequently, Johnson Products sold the hair-care product line to L’Oreal USA, Inc. which, in turn, sold the product line to Wella Personal Care of North America, Inc. Wella continued to market and distribute the hair-care product with Toney’s likeness.In her suit, Toney alleged that Johnson Products, L’Oreal and Wella violated her publicity rights under the Illinois Right of Publicity Act (“IRPA”) by continuing to use her image beyond the authorized time period. Initially, Toney brought suit under the IRPA and the Lanham Trademark Act. The district court found that the IRPA-based claim met both conditions set out in § 301 of the Copyright Act (“Act”) and was therefore preempted. Toney later voluntarily dismissed her Lanham Act claim with prejudice, and the case was closed. Toney then appealed the district court’s preemption determination.
The issue under appeal is whether Toney’s claim, brought under the IRPA, is preempted by the Copyright Act. The IRPA allows 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. However, § 301 of the Act delineates two conditions which, if met, require the preemption of a state-law claim in favor of the rights and remedies available under the Act. First, the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in § 102. Second, the right must be equivalent to any of the rights specified 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.” 17 U.S.C. § 102(a). Because Toney’s likeness in photographic form is an original work and is fixed in tangible form, photographs of her likeness are the subject matter of copyright. Toney argued that her IRPA claim is based on her right of publicity in her likeness, as distinguished from her likeness in photographic form. However, for the purposes of a § 301 analysis, the distinction between the content of publicity rights and the artistic product resulting from the photographic recording of someone’s likeness is in essence obviated. See Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 674-676 (7th Cir. 1986).
Toney’s sole substantive argument on appeal is one never previously offered: she asserts that her IRPA claim is actually directed at the Defendants’ use of her “identity,” as opposed to photographs of her likeness. Because Toney did not argue in any pleading before the district court that her “identity” could serve as a basis for relief under the IRPA and to avoid preemption under § 301, she is barred from making such an assertion on appeal.
In addition to the tangible form requirement, § 301 also requires a showing that the right to be enforced is “equivalent to any of the rights specified in § 106.” Section 106 gives copyright holders five exclusive, fundamental rights: reproduction, adaptation, publication, performance, and display. 17 U.S.C. § 106. A copyright is violated or infringed when a party, other than the copyright holder, exercises, without permission, one of these fundamental rights. The § 106 inquiry asks whether the right protected under the state law addresses conduct qualitatively different from that which the Act speaks to. In this case, Toney’s right of publicity in her likeness in photographic form protected under the IRPA is qualitatively indistinguishable from the rights enumerated in § 106. While Toney does not hold the copyright in the photographs used in advertisement, the copyright holder cannot reproduce, adapt, publish, or display the photos without infringing on Toney’s right to publicity.
Because the IRPA-based claim is preempted by the Act, the Seventh Circuit upholds the district court’s dismissal. The Court further observes that Toney could have brought a breach of contract action and avoided the copyright preemption issues.
