Gonna Wash That Right Of Publicity Right Out Of My Hair

Edwin F. McPherson - The John Marshall Review of Intellectual Property Law (Spring, 2005)

Subsequent to the preparation of this article, the Seventh Circuit was persuaded to reconsider its 2004 decision in Toney v. L’Oreal U.S.A., Inc.1 After reconsideration—which included an analysis that was completely antithetical to its original decision—on May 6, 2005 the Seventh Circuit reversed the decision of the district court, and remanded the case for further proceedings.2That the same judges of the same circuit reversed their own decision so decisively is as bizarre as the nature of the original opinion; however, it is certainly more in line with reality and the law in other circuits.

Essentially, the court contradicted the premise of its original decision (which was based upon the Baltimore Orioles case3); i.e., that an individual’s persona is fixed in a tangible medium of expression, and essentially that anything that is fixed in a tangible medium of expression is preempted by Federal copyright law.4 In Baltimore Orioles, the court had earlier summarily dismissed all of the decisions from the Second and Ninth Circuits as having been “premised upon an erroneous analysis of preemption,” and responded to both circuits’ determinations by saying simply: “[w]e disagree,” indicating that “a performance is fixed in tangible form when it is recorded.”5

In the new decision, the court suddenly finds that “Toney’s identity is not fixed in a tangible medium of expression,” and that there “is no ‘work of authorship’ at issue in Toney’s right of publicity claim. A person’s likeness—her persona—is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change this.”6 The court went on to say that, as a result, the rights protected by the IRPA are not equivalent to the exclusive rights protected by the Copyright Act.7

Finally, under the heading “C. Conflicting Precedent,” the court “clarified” its holding in Baltimore Orioles, which it acknowledged has been “widely criticized by * Edwin F. McPherson is a partner at McPherson & Kalmansohn, LLP in Los Angeles, Cal., specializing in entertainment and intellectual property litigation. Asha Dhillon, whose valuable assistance and research for this article is acknowledged and appreciated, is an associate at the firm. McPherson & Kalmansohn, LLC has litigated numerous right-of-publicity and copyright cases through trial and appeal.

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1. Toney v. L’Oreal U.S.A., Inc., 384 F.3d 486 (7th Cir. 2004), reh’g en banc granted, No.
03-2184, 2005 U.S. App. Lexis 1943 (Feb. 3, 2005), rev’d, No. 03-2184, 2005 U.S. App. LEXIS 7897
(May 6, 2005).

2. See Toney v. L’Oreal U.S.A., Inc., No. 03-2184, 2005 U.S. App. LEXIS 7897 (7th Cir. May 6,

3. Balt. Orioles v. Major League Baseball Players Ass’n, 805 F.2d 663 (7th Cir. 1986).

4. See Toney, 384 F.3d at 489–92.

5. Balt. Orioles, 805 F.2d at 677 n.26.

6. Toney, 2005 U.S. App. LEXIS 7897, at *11.

7. Id.

Edwin F. McPherson

Mr. McPherson is a frequent author and lecturer. He has handled numerous matters involving copyright infringement, trademark infringement, management/artist disputes, rights of publicity, rights of privacy (including internet privacy and stalking), record production and distribution, music publishing, defamation, motion picture and television production and distribution, breach of implied contract (submission cases), net profits, unfair competition, WGA, DGA, SAG and AFTRA disputes, wrongful termination and other labor-related matters, insurance coverage and bad faith, legal malpractice, and general civil litigation. In addition, Mr. McPherson has served as a consultant and expert witness in connection with the California Talent Agencies Act, about which he has written numerous articles.


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