The Seventh Circuit Reverses: Itself; Toney v. L'Oreal

On Friday, May 6th the Seventh Circuit reversed its earlier (and very controversial) opinion which had held that the Copyright Act preempted Illinois' right of publicity statute. Here's the link to the original opinion (Original Opinion). Here's the link to Friday's opinion (Friday's opinion). The new opinion correctly holds that the statute is not preempted on the facts presented (and probably most others). Both opinions are by Judge Kanne, but they are "Night and Day" as the classic song goes.

The error in the original opinion was principally its failure to distinguish between a fixation of a likeness in a copyrighted work (there a photograph) and the right granted under publicity statutes: the right to prevent an unauthorized, commercial exploitation of the likeness. While the unauthorized likeness may be fixed in a photograph (just as an unauthorized use of a voice may be fixed on a phonorecord), the fixation is not the equivalent subject matter for Section 301 purposes. Instead, it is merely the means by which the likeness is captured. Moreover, as the Seventh Circuit pointed out in its opinion Friday, no one is the author of their own likeness, a fitting observation to make on Mother's Day weekend.

Firday's opinion is also helpful in clarifying the meaning of the circuit's 1986 Baltimore Orioles opinion (805 F.2d 663), itself much criticized for its seeming holding that baseball games as games are protectible under the Copyright Act. On Friday, Judge Kanne took the opportunity to construe Baltimore Orioles as holding "that state laws that intrude on the domain of copyright are preempted even if the particular expression is neither copyrighted nor copyrightable," giving public domain and unoriginal works as examples. This should be helpful in overcoming so-called "partial preemption" claims, claims that states can protect facts, ideas, etc. since they fall outside the domain of protected material in 17 U.S.C. 102(a). (They do fall within 102(b) and are preempted for that reason too). In this connection I draw attention to footnote four, which states that the opinion was circulated to all active (that is non-senior) judges on the circuit and no one requested en banc on the preemption question.

It is rare for a panel to so completely reverse itself and so masterfully too. Congratulations to Judge Kanne and to plaintiff's attorneys: Thomas Westgard (who told me of the opinion), Simon Frankel, and Blake Lawit.