Color Him Right About Publicity Rights

In a recent column I criticized a decision by the Federal Court of Appeals for Illinois that seemed to have fundamentally confused rights of publicity and copyright law. Now that court has taken the unusual step of vacating its original opinion and issuing a new opinion, which holds that publicity rights are not preempted by copyright law.

In that case, June Toney, a model, had authorized the limited use of her likeness by L'Oreal, which then continued to use her photographs beyond the time period she had authorized. Toney sued, alleging this violated her rights of publicity under Illinois law. Originally, the Court of Appeals concluded that Toney's likeness in the photographs was within L'Oreal's copyright, and therefore dismissed the case as preempted by federal copyright law. In its original opinion, the court saw no legal distinction between the content of the photograph, which is protected by publicity rights, and the artistic elements in the photograph, which are protected by copyright.

In its new opinion, the court reversed this conclusion and said that federal copyright law only preempts state statutes which create rights equivalent to those created by copyright law. Copyright law protects a work of authorship fixed in a tangible medium of expression. Here, the Illinois statute protects a person's "identity" - that is, attributes that identify an individual, such as name, images, likeness or voice. The court held that Toney's state right to protect her identity was not equivalent to rights protected by copyright law: a person's likeness is not a work of authorship and is not fixed in a tangible medium of expression. Accordingly, Toney's claim under Illinois' right of publicity statute was not preempted by copyright law.

With this new decision, it seems the court has come into harmony with other federal circuits. Toney now has the right to pursue her claim against L'Oreal for use of her likeness without her permission. That means businesses in Illinois (like Hawaii) must make sure they have permission from their models - or anyone else, for that matter - before using their likeness for commercial purposes, as well as any necessary rights under copyright law.

Bob Godbey is a partner in the Honolulu law firm of Godbey Griffiths Reiss Chong. A graduate of the Harvard Law School, he practices in the area of technology and the law. He welcomes comments through www.LawHI.com.

Do you like what you read? Subscribe to Hawaii Business Magazine »