Slightly over a year ago, I posted a story about the Seventh Circuit's changing its mind on the right of publicity being preempted in the Toney case. The new opinion held the right wasn't, generally, preempted. The word "generally" is mine, because the name one puts on a cause of action is the pleader's choice and may or may not be wholly accurate. Anyone who has read even a few dozen preemption cases, especially in the unfair competition or breach of contract areas, quickly realizes that labels are not necessarily descriptive; they may mask less than candid efforts to avoid preemption. But in other cases, the scope of the state law in question may not be well-defined, and the pleader is making a good faith effort to make new law.
Preemption and jurisdiction collide typically in two possible ways, first in a federal action for copyright infringement when supplemental state law claims are attached; second in a state court action where the claimant asserts causes of action only under state law. Defendant in the state law case may think that the causes pled are really federal claims in disguise. Such a defendant has two choices. Remain in state court and assert that the claim is preempted, in which event the state court will decide the question; or, remove the case to federal court under 28 USC section 1441. The federal court will then decide if the cause of action is preempted. While the preemption analysis will be the same in both state and federal court, the burden is on the party seeking removal.
Here is where the word "generally" comes back in play. Let's say a plaintiff in state court asserts violation of a state right of publicity, generally not preempted and therefore not properly removable. But what if the right allegedly violated is not like in Toney an exact replica of the plaintiff's image, but is instead something else, like use of a fictional character that plaintiff performed as? This issue was recently addressed in Stanford v. Caesar's World Entertainment, 2006 WL 1214960 (M.D. Tenn. May 1, 2006). The character "Loose Slot Louie" (see the name of defendant in the caption) was part of an advertising campaign. Plaintiff executed a release, but claimed that there was inadequate consideration and that the release was otherwise limited to specific uses.
Distinguishing Tony, the court found that the use was not of a likeness of plaintiff's personal traits, but rather of an advertisement in which a fictional character played by plaintiff appeared. This advertisement was within the scope of copyright and the use in question was of the advertisement, therefore the claim was preempted and properly removed. Not all right of publicity claims are the same.