BY BOB LaBATE
When Illinois enacted its Right of Publicity Act several years ago, most commentators–including me–cheered because it greatly strengthened an individual’s ability to control the commercial use of his or her "identity" (the name, likeness and other personal characteristics strongly associated with that individual). Among its many virtues, the new Act created a right of publicity for everyone (not just celebrities) and defined "identity" broadly to include a variety of attributes such as name, signature, photograph, image, likeness and voice. It required written consent for use of a person’s identity and it had teeth, providing significant remedies for unauthorized uses, including minimum damages, attorneys fees, injunctive relief and even punitive damages for continued bad acts.
As expected, the new Right of Publicity Act has proven to be a sharp sword with which to defend individual identity rights. It clearly defines the rights it protects (and the exceptions to those rights), and it is easy to apply to new cases. And because the new Act provides for recovery of attorney fees, the discussion often centers not on whether the violation has occurred but, instead, on how much the violator will pay.
However, a recent federal decision regarding Toney v. L’Oreal USA, Inc., et al. (N.D. Illinois, case no. 02 C 3002) would limit the circumstances where the Illinois Right of Publicity Act applies, particularly where (as with models and actors) individuals initially consent to the use of their publicity rights, but subsequently decide that those rights have been violated.
The background facts are not complicated. The plaintiff, June Toney, a model, authorized Johnson Products to use her image on packages of a hair-care product for five years pursuant to a written agreement. Johnson Products sold the hair-care product line to L’Oreal USA, Inc. which, about one month after the expiration of Toney’s original five-year agreement with Johnson Products, sold the product line to Wella Personal Care of North America, Inc. Wella continued to market and distribute the hair-care product adorned with Toney’s likeness.
In her suit, Toney alleged that Johnson Products, L’Oreal and Wella violated her publicity rights under the Illinois Act by continuing to use her image after the expiration of the five-year agreement and using her image in ways not permitted under the agreement. In response, the Defendants moved to dismiss Toney’s right of publicity action arguing, among other things, that Toney had sued them after the one-year period for filing such actions and that Defendants’ right as the owners of the copyright for the product packaging pre-empted Toney’s publicity rights claim.
Put another way, Defendants argued that since Toney had filed too late–but even if she filed timely, she had authorized them to include her likeness in a copyrighted work (the hair-care product packaging)–she could not now sue them under the Illinois Publicity Rights Act for exercising their right (granted under the Copyright Act) to print and distribute the copyrighted hair-care product package. Thus, Defendants argued that the rights granted to them under the federal Copyright Act effectively trumped Toney’s publicity rights and prevented her from suing Defendants for violation of the Illinois Publicity Rights Act.
U.S. District Judge Guzman agreed with Toney that she had five years, not one year, to file an action for breach of her publicity rights under Illinois law. But he agreed with Defendants that the U.S. Copyright Act pre-empted her publicity rights action and, in late October 2002, he dismissed Count I of Toney’s action.
Judge Guzman’s decision regarding pre-emption of publicity rights was based on an earlier decision, Baltimore Orioles, Inc. v. Major League Baseball Players Association, 805 F. 2d 663 (7th Cir. 1986), which held that publicity rights could be pre-empted: (i) where, with the plaintiff’s consent, a work is fixed in a tangible medium of expression (such as printing Toney’s likeness on hair-care packaging) and (ii) where the plaintiff’s publicity rights were "equivalent" to any of the rights granted to a copyright owner under section 106 of the Copyright Act (in this case, the distribution of the hair-care packaging). The fact that the Defendants continued to use Toney’s likeness after expiration of her five-year agreement was not a factor in Judge Guzman’s decision.
It is important to note that Toney still has publicity rights against third-party infringers, and she can still enforce her Illinois Publicity Rights against someone who used her publicity rights without her written consent. (Toney also could file a breach of contract action against Defendants for violation of the five-year agreement, but for some reason she did not do so.) But Judge Guzman’s decision made clear that Toney could not sue the Defendants because she had authorized them to use her likeness.
That publicity rights may be pre-empted by the U.S. Copyright Act has been controlling law in the states of Illinois, Wisconsin and Indiana since 1986, when the Seventh Circuit Court of Appeals issued its decision in Baltimore Orioles v. Major League Baseball Players. What is new, however, is the decision that once an individual authorizes the use of her likeness in a copyrighted work, she forever loses the right to sue the copyright owner (in this case, the Defendants) for violation of her publicity rights, even if the copyright owner violates the terms of the original agreement for use of the publicity rights.
Such a broad waiver of publicity rights seems at odds with the Seventh Circuit’s opinion in Baltimore Orioles, which specifically mentioned that holders of publicity rights may negotiate contractual limits on the use of their images. In contrast, the Toney decision effectively prevents enforcement, under publicity rights law, of any limits which might be negotiated by the publicity rights holder.
Whether other courts will follow Judge Guzman’s ruling is not clear, but this ruling should be a warning to anyone who, like models or actors, routinely authorizes others to use their image, likeness or voice for commercial purposes. Once you allow someone to incorporate your likeness into a copyrighted work (like product packaging, films, photographs, and sound recordings), you may find yourself unable to enforce your publicity rights against the copyright owners, even if they violate the terms of your agreement with them.
The Illinois Right of Publicity Act is still a valuable weapon when dealing with third parties who violate your publicity rights without permission. But, if you have authorized others to use your identity, you may find that publicity rights are pre-empted by the U.S. Copyright Act.
©2002 Robert J. Labate. This column is provided as a source of information and is not to be construed as legal advice or opinion. You may contact me via e-mail at robert.labate@hklaw.com or via mail to Bob Labate at Holland & Knight LLC, 500 West Madison Street, Suite 4000, Chicago, Illinois 60661, or call 312/715-5700.