Toney v. L'Oreal Usa, Inc.

• Decision Date: 21 June 2005
• Docket Number: No. 03-2184.,03-2184.
• Citation: 406 F.3d 905
• Parties: June TONEY, Plaintiff-Appellant, v. L'OREAL USA, INC., The Wella Corporation, and Wella Personal Care of North America, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

406 F.3d 905

June TONEY, Plaintiff-Appellant, v. L'OREAL USA, INC., The Wella Corporation, and Wella Personal Care of North America, Inc., Defendants-Appellees.

No. 03-2184.

United States Court of Appeals, Seventh Circuit.

Argued April 8, 2004¹.

Decided May 6, 2005.

Rehearing En Banc Denied June 21, 2005.

COPYRIGHT MATERIAL OMITTED

June Toney, Chicago, IL, pro se.

Thomas J. Westgard (argued), Chicago, IL, for Plaintiff-Appellant.

John S. Letchinger (argued), Wildman, Harrold, Allen & Dixon, Daniel M. Feeney, Miller, Shakman & Hamilton, Chicago, IL, for Defendants-Appellees.

Before KANNE, EVANS, and WILLIAMS, Circuit Judges.

KANNE, Circuit Judge.

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. Toney appeals, and we reverse.

I. Background

In November 1995, June Toney, a model who has appeared in print advertisements, commercials, and runway shows, authorized Johnson Products Company to use her likeness on the packaging of a hair-relaxer product called "Ultra Sheen Supreme" from November 1995 until November 2000. In addition, Toney authorized the use of her likeness in national magazine advertisements for the relaxer from November 1995 until November 1996. Additional uses (e.g., promotion of other products and/or for extended time periods) were contemplated by the agreement, but, as specifically stated in the agreement, the particular terms for any such uses were to be negotiated separately.

In August 2000, L'Oreal USA, Inc., acquired the Ultra Sheen Supreme line of products from Carson Products, which had previously acquired that same product line from Johnson. Subsequently, in December 2000, the Wella Corporation purchased and assumed control of the line and brand from L'Oreal.

In her complaint filed in state court, Toney asserted that L'Oreal, Wella Corporation, and Wella Personal Care of North America, Inc., (collectively, "defendants") used her likeness in connection with the packaging and promotion of the Ultra Sheen Supreme relaxer product beyond the authorized time period. Specifically, she claimed that the defendants thereby violated (1) her right to publicity in her likeness as protected under the Illinois Right of Publicity Act, 765 Ill. Comp. Stat. 1075/1-60 ("IRPA"), and (2) the Lanham Trademark Act of 1946, 15 U.S.C. § 1125(a).

The case was properly removed to federal district court on the basis of federal question jurisdiction. Following the defendants' motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure, the district court found that the IRPA-based claim met the conditions set out in § 301 of the Copyright Act ("Act"), 17 U.S.C. § 301, and was therefore preempted. Toney later voluntarily dismissed her Lanham Act claim with prejudice and the case was closed. She now appeals the district court's preemption determination. For the reasons stated herein, we reverse.

II. Analysis

The question we must address is whether Toney's claim, brought under the IRPA, is preempted by the Copyright Act. We review this legal question and the district court's decision to grant the defendants' motion to dismiss de novo. See Stevens v. Umsted, 131 F.3d 697, 700 (7th Cir.1997).

The 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. See, e.g., Cal. Fed. Sav. & Loan Ass'n v. Guerra, 479 U.S. 272, 280, 107 S.Ct. 683, 93 L.Ed.2d 613 (1987) (stating that "when acting within constitutional limits, Congress is empowered to pre-empt state law by so stating in express terms.").

A. Toney's Claim Has Not Been Waived

Before interpreting the statutes at issue, we will dispose of the defendants' waiver argument. The defendants argue that Toney has waived any claim that the IRPA protects her "identity," as compared to her likeness fixed in photographic form. They point out that the word "identity" does not appear in her complaint and that "a plaintiff cannot amend [her] complaint by a brief that [she] files in the ... court of appeals." Harrell v. United States, 13 F.3d 232, 236 (7th Cir.1993); see also Bell v. Duperrault, 367 F.3d 703, 709 n. 1 (7th Cir.2004) (citing Williams v. REP Corp., 302 F.3d 660, 666 (7th Cir.2002) ("A party waives any argument that it does not raise before the district court ....") (quotation omitted)). In addition to finding problems with the complaint, the defendants point to the fact that in Toney's response to the defendants' motion to dismiss before the district court, she expressly stated that her claim "is narrowly directed to the use of her likeness, captured in photograph or otherwise." (R. 13 at 4.)

Although Toney's complaint could have been more clear, we find that the minimal requirements for notice pleading have been met here. Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain a "short and plain statement of the claim showing that the pleader is entitled to relief," as well as a jurisdictional statement and a demand for relief. Id. Toney was required only to provide the defendants with "fair notice of what the plaintiff's claim is and the grounds upon which it rests." Leatherman v. Tarrant County Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 168, 113 S.Ct. 1160, 122 L.Ed.2d 517 (1993) (quotation omitted). Toney's complaint alleges unauthorized commercial use of her likeness by the defendants under the IRPA. The complaint does not explain the legal theory that Toney relies upon, but it was not required to do so. We find that Toney provided the defendants with adequate notice of her claim. The identity claim was not waived.

B. Toney's Claim Survives Preemption

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." J. Thomas McCarthy, 2 RTS. OF PUBLICITY & PRIVACY § 11:52 (2d ed.2004) (emphasis in original) (internal citations and quotations omitted). 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." Id. 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." Id. 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." Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-04 (9th Cir.2001) (quotation omitted); see also Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 623 (6th Cir.2000); Brown v. Ames, 201 F.3d 654, 658 (5th Cir.2000).²

Having reviewed the rights protected by the IRPA, we must now determine whether Toney's claim has been preempted by federal law. Section 301 of the Copyright Act delineates two conditions which, if met, require the preemption of a state-law claim in favor 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.

17 U.S.C. § 301(a). We will take the questions in reverse order, first determining whether the work at issue is fixed in a tangible form and whether it comes within the subject matter of copyright as specified in § 102. Second, we consider 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 second aspect of the test requires a showing that the right to be enforced is "equivalent" to any of the rights set forth in § 106. The notes and commentary accompanying § 106 make it clear that copyright holders have five exclusive and fundamental rights: reproduction, adaptation, publication, performance, and display.³ 17...