Model June Toney licensed use of her likeness in packaging for ‘Ultra Sheen Supreme’ hair products. Was her later action against the advertisers for unauthorised use a copyright infringement or right of publicity claim? Could Ms Toney own copyright in her face?
Topic: Intellectual property
Who: June Toney v L'Oreal USA Inc, the Wella Corporation and Anor
Where: The US Court of Appeals for 7th Circuit, Chicago
When: May 2005
What happened:
In November 1995 June Toney, a model who had appeared in print ads and commercials, authorised Johnson Products to use her likeness on the packaging of a hair-relaxer product called "Ultra Sheen Supreme". The licensed term was from November 1995 until November 2000. Various other uses were also authorised including national magazine ads.
In August 2000 the Ultra Sheen Supreme product line fell into the hands of L'Oreal USA Inc and in December 2000, the Wella Corporation purchased and assumed control of the line and brand from L'Oreal.
In proceedings filed in the Illinois State Court, Toney asserted that L'Oreal and Wella had used her likeness in connection with Ultra Sheen products in an unauthorised manner and thereby violated her right to publicity in her likeness as protected under the Illinois Right of Publicity Act.
At first instance Toney failed but she appealed.
"Identity" and "Likeness" quite different?
L'Oreal and Wella's first point of defence was that by bringing an action in respect of her "likeness" she was disentitled from claiming under the Illinois Rights of Publicity Act ("IRPA"). This was because the IRPA protected only her "identity" not her "likeness". The Court saw no material distinction and threw that defence out summarily.
"Federal copyright law trumps state law" defence
The second defence was on the basis that the IRPA could not be relied on at all. This argument was based on the position under the US Federal Copyright Act. This stipulated that from 1978, in all states of the US, "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright … are governed exclusively by this Act."
L'Oreal and Wella argued that the right of publicity was equivalent to a right in the nature of copyright and since the right of publicity legislation in Illinois was brought into force well after 1978, it was rendered ineffective or "pre-empted" by the Copyright Act. Accordingly Toney's claim under the IRPA had to fail.
At first instance, the Court had bought this argument and thrown out Toney's claim. The appeal judges were of a different view. There was no "work of authorship" at issue in Toney's right of publicity claim of the kind that one would normally expect to see in copyright cases. Her likeness, her persona, was not authored and was not fixed. The fact that an image of a person might be fixed in a copyrightable photograph does not change this. On this basis, the rights protected by the IRPA were not "equivalent" to any of the exclusive rights within the general scope of copyright under the Copyright Act.
Accordingly Ms Toney's appeal was successful and her case, as they say, continues.
Why this matters:
The Illinois Rights of Publicity Act, like similar legislation in most US states, provides that an individual's identity cannot be used for commercial purposes during his or her lifetime without written consent from the appropriate person.
This case underlines that position and draws a clear distinction between these species of rights and the rights protected by copyright. Some here in the UK might think that an individual has copyright in his or her own face and can control use of it on that basis. Not so. The only copyright that can come into being in the context of the human visage is the copyright that protects a photograph, portrait or drawing of it.
Under English law, absent written agreement to the contrary, the owner of the copyright in a photograph of anybody's face or "likeness" will be the person who presses the camera shutter and not the individual whose face is being photographed. So far as rights of publicity are concerned, there are no equivalent statutory rights here in the UK, but other relevant laws and codes dictate that care is still needed before using for advertising purposes any image of a living person, particularly the image of a famous one.
