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Broadly speaking, every state recognizes the right of individuals to prevent the unauthorized use of their names and likenesses for commercial purposes. Some states, including New York, consider this a civil right similar to the right of privacy, but elsewhere the concept is termed a “right of publicity.” A recent decision by the 7th U.S. Circuit Court of Appeals, Toney v. L’Oreal, [FOOTNOTE 1] raises a difficult and fascinating issue which has sometimes divided the courts: when and how might the federal Copyright Act pre-empt state causes of action arising from the right of publicity? ‘TONEY V. L’OREAL’ In 1995, a professional model named June Toney signed an agreement with Johnson Products Co., maker of a number of hair care products including Ultra Sheen Supreme. The agreement granted Johnson a five-year license to use Toney’s likeness on packaging for the product and a one-year license to use the likeness in national print advertising. Toney posed for photographs, one of which was selected for use by Johnson. The company then changed hands several times; evidently the ultimate owner, L’Oreal, lost track of the expiration date of its license with Toney, because it continued using her picture past the end of the license period. Toney brought a claim in the U.S. District Court for the Northern District of Illinois alleging a violation of the Lanham Act (later withdrawn) and an infringement of the model’s rights under the Illinois Right of Publicity Act (IRPA). The operative language of IRPA prohibits the unconsented use of “an individual’s identity for commercial purposes.” The district court granted L’Oreal’s motion to dismiss, and the 7th Circuit affirmed, holding that the state claim was pre-empted by the federal Copyright Act. Under �301, the Copyright Act explicitly pre-empts “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 sections 102 and 103.” Toney’s claim was “equivalent” to a copyright claim, in the court’s view, because “it cannot be disputed that Ms. Toney’s likeness in photographic form is an original work and fixed in tangible form,” and the conduct alleged to violate the right, i.e., reproduction and distribution of the photo, is identical to the conduct which would constitute an infringement of copyright. Unfortunately for Toney, she did not own the copyright in the photograph. The second part of the court’s analysis, regarding the conduct of the defendant, appears correct. Toney sought to prohibit the reproduction and distribution of photos of her face on packages of Ultra Sheen Supreme, and that is clearly activity which would violate �106. But the court’s determination that a model’s likeness is a “work of authorship” is more problematic. First, common sense suggests that the arrangement of features on a person’s face is not a work of authorship, except perhaps in cases of extensive plastic surgery (which, like marble busts, might be deemed sculptural works, if sufficiently original). The only case which even arguably speaks to the question, Natkin v. Winfrey in the Northern District of Illinois, [FOOTNOTE 2] came out the other way and found that a person’s visage is not authorship for purposes of copyright. There, television personality Oprah Winfrey asserted that she was a joint author of certain photographs taken of her, because her likeness constituted much of the content of the photos. The court squarely rejected that argument, saying in effect that a person is not the “author” of his or her appearance and copyright cannot extend to such subject matter. Nimmer, the leading treatise on copyright, reaches the same conclusion. Accordingly, Toney’s counsel argued on appeal that what the model sought to protect was not a particular photographic “likeness” but rather her “identity,” which is what the IRPA expressly covers. The court refused to consider a distinction between the two terms because the complaint and the argument below had been presented solely in terms of the model’s “likeness” and the 7th Circuit refused to entertain a new argument on appeal. If the case only stood for the proposition that a litigant has to use the word “identity” (not “likeness”) to properly plead an IRPA claim, it would be of limited interest outside Illinois procedural circles. ‘BALTIMORE ORIOLES’ AND ITS PROGENY The court went much further, however, to find that Toney’s claim was incurably pre-empted by the Copyright Act, whether pleaded in terms of likeness or identity. The court reasoned that in the copyright pre-emption analysis there is no difference between a person’s likeness and the photographic fixation embodying that likeness. In support, the court relied heavily on Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n., 805 F2d 663 (7th Cir. 1986), a case involving the broadcasts of sporting events. In Baltimore Orioles, certain major league baseball players asserted a right of publicity claim stemming from the use of their likenesses (or identities) in telecasts of ball games in which they played. Their team sued for a declaratory judgment confirming that the team had a right to telecast the games without obtaining further consent from the players. The 7th Circuit held in favor of the team, finding that the club could not be precluded from broadcasting games by individual players’ publicity claims. In this context, the players’ claim was deemed “equivalent to copyright” and thus pre-empted. As Toney read the case, “[f]or purposes of a �301 pre-emption analysis, Baltimore Orioles in essence obviated the distinction between the content of publicity rights and the artistic — and thus obviously copyrightable — product resulting from the photographic (or filmic) recording of someone’s likeness (or performance).” [FOOTNOTE 3] Consequently, the only claim that can be brought to stop any use of a film, photograph or any other copyrightable work is a copyright infringement claim. A number of decisions have reached similar results, finding the publicity claims of individual performers pre-empted when they sought to interfere with the exploitation of films or videos in which they appeared. In Fleet v. CBS, [FOOTNOTE 4] for example, a California state court held that an actor’s right of publicity claim was pre-empted when he attempted to enjoin the showing of one of his films. In Comedy III v. New Line Cinema, [FOOTNOTE 5] the heirs of the Three Stooges comedy team suffered the same fate in the 9th U.S. Circuit Court of Appeals when they objected to the use of a Stooges clip in a feature film. In other cases, though, similar claims have succeeded, and the difference is instructive. The same Three Stooges heirs whose claims were pre-empted in Comedy III v. New Line won a later action against a T-shirt maker for incorporating a (copyrightable) drawing of the Stooges into a shirt design. [FOOTNOTE 6] More notably, the actors who played the hapless characters Norm and Cliff in the popular TV series “Cheers” persuaded the 9th Circuit to enjoin a licensee of Paramount, the series’ owner, from using (copyrightable) electronic robots resembling their characters in “Cheers”-themed airport bars. [FOOTNOTE 7] THE ‘CHEERS’ CASE The Cheers case is consistent with another recent 9th Circuit decision, Downing v. Abercrombie & Fitch, [FOOTNOTE 8] one from the 5th U.S. Circuit Court of Appeals, Brown v. Ames, [FOOTNOTE 9] and another from the 6th U.S. Circuit Court of Appeals, Landham v. Louis Galoob Toys, [FOOTNOTE 10] all of which rejected the construction of Baltimore Orioles proposed by the Toney court. Brown v. Ames, for example, noted that Baltimore Orioles “has been heavily criticized” and flatly declined to find a person’s likeness copyrightable simply because it was embodied in a copyrighted work. Downing likewise reversed a district court determination that a legendary surfer’s publicity claim was pre-empted, where his likeness was reproduced and distributed in a copyrighted sportswear catalog. Expressly following Brown v. Ames, Downing stated that “a person’s name or likeness is not a work of authorship within the meaning of [the Copyright Act]. This is true notwithstanding the fact that Appellants’ names and likenesses are embodied in a copyrightable photograph.” Landham v. Galoob, involving an actor’s claim that a toy figure incorporated his likeness from a movie role, also distinguished Baltimore Orioles, noting that the actor “is not claiming the right of publicity in order to gain rights in the telecast of his performance, or to contest [the copyright owner's] right to create derivative works from its copyrighted work in general. Rather, he claims that the toy evokes his personal identity — an inchoate “idea” which is not amenable to copyright protection — to his emotional and financial detriment. Regardless of the merits of his claim, it does assert a right separate from those protected by the Copyright Act.” [FOOTNOTE 11] These cases indicate that the mere distribution or display of a copyrightable work incorporating a person’s likeness is not always sufficient to result in pre-emption, as Toney broadly asserts. Indeed, Baltimore Orioles itself remarks in a footnote that “a player’s right to publicity in his name or likeness would not be pre-empted if a company, without the consent of the player, used the player’s name to advertise its product.” [FOOTNOTE 12] The Toney court conceded that “a casual reading of that language does seem to support [Ms.] Toney’s proposition” that her claim survives pre-emption, but the court rejected such a “casual” reading for several reasons. Chief among them was the Toney court’s belief that the footnote was inconsistent with the “general holding” of Baltimore Orioles. LIMITING THE HOLDING But it is also possible to read the footnote as a limitation of the holding, not an inconsistency, and such a reading has at least three distinct advantages over the 7th Circuit’s interpretation:
� it doesn’t read clear language out of a controlling decision in this area, � it avoids a circuit split, and � it makes great intuitive sense.

It is one thing to say that Major League Baseball greats, Barry Bonds or A-Rod, cannot invoke their rights of publicity to block the broadcast of a ball game, as Baltimore Orioles holds, but it is quite another to say that one of those players cannot prohibit Gillette from putting a (copyrightable) photo of his face on a box of razor blades. The Toney analysis, applied literally, would necessarily yield that result. A more sensitive analysis could harmonize all of the above cases under a general principle that when the defendant merely exploits a copyrighted work as such, with the authority of the copyright holder, a right of publicity claim is pre-empted. This would reach Baltimore Orioles, and Fleet v. CBS, and the Three Stooges film-clip case. But where the defendant seeks to enjoin a different product, which merely incorporates a copyrightable likeness to enhance its salability, such as the Three Stooges T-shirt, the Toney hair care product or the Dowling sportswear catalog, the claim should not be pre-empted. Under this approach, the photographer who took Toney’s picture could sell that photograph, for someone to hang on the wall, and Toney could not interfere with that exploitation.[FOOTNOTE 13] There would still be borderline cases about which reasonable minds might differ (such as the Norm and Cliff robots in the Cheers case), but as a general framework this would appear to be preferable to the 7th Circuit’s bright-line rule. CONCLUSION The Toney court’s extension of Baltimore Orioles to a fact situation which that decision expressly distinguished — use of a likeness to sell a commercial product — all but precludes any right of publicity action in which the defendant distributes or displays a copyrightable work. This broad and categorical approach is far stricter than that previously applied in any other circuit, and it may not long survive. On Feb. 3, 2005, the 7th Circuit granted Toney’s motion for reconsideration and ordered supplemental briefing on the following question: “Should Baltimore Orioles remain the controlling law in this circuit in light of Brown v. Ames, Landham v. Louis Galoob Toys and Dowling v. Abercrombie & Fitch?” In light of this order, it would not be surprising if Toney were ultimately to be reconsidered en banc by the 7th Circuit. Robert J. Bernstein practices law in New York City and is the immediate past president of the Copyright Society of the USA. Robert W. Clarida is a partner at Cowan, Liebowitz & Latman, and is chairman of the Copyright and Literary Property Committee of the Association of the Bar of the City of New York.(c) 2005 Cowan, Liebowitz & Latman and Robert J. Bernstein. ::::FOOTNOTES:::: FN1 384 F.3d 486 (7th Cir. 2004). FN2 111 F.Supp.2d 1003 (N.D.Ill. 2000). FN3 Toney, slip op. at 5-6. Toney also cited to the 2nd Circuit decision in NBA v. Motorola, 105 F.3d 841 (2d Cir. 1997) for the same proposition. Motorola was not a right of publicity case, but involved claims by the NBA against the defendant’s re-transmission of game information to mobile pager devices. The defendant obtained its information from licensed broadcasts, but the raw information (score, time remaining, etc.) did not infringe the copyright in the broadcast itself. A variety of state claims were asserted. The district court had found certain of NBA’s claims could survive �301 under a doctrine of “partial pre-emption” because they alleged violations with respect to the games themselves rather than with respect to the broadcasts. On appeal, the 2nd Circuit reversed these holdings, finding that any state claim pre-empted as to the telecast must also be pre-empted as to the underlying (uncopyrightable) game. The only claim the 2nd Circuit allowed to proceed, a hot-news misappropriation claim, was deemed sufficiently different from a copyright claim that it would survive pre-emption whether the source of the copying was deemed to be the underlying game or the telecast. FN4 50 Cal. App. 4th 1911 (Cal. Ct. App. 1996). FN5 200 F.3d 593 (9th Cir. 2000). FN6 25 Cal. 4th 387 (Cal. Sup. Ct. 2001). FN7 125 F.3d 806 (9th Cir. 1997). FN8 265 F.3d 994 (9th Cir. 2001). FN9 201 F.3d 654 (5th Cir. 2000). FN10 227 F.3d 619 (6th Cir. 2000). FN11 Id. at 623. FN12 805 F.2d at 676, n.24. FN13 See, e.g., Simeonov v. Tiegs, 602 N.Y.S.2d 1014 (Civ. Ct. 1993) (sculptor permitted to sell bust of model Cheryl Tiegs without violating Tiegs’ right of publicity under New York law).

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