## Facts

- June Toney, a professional model, authorized Johnson Products Company to use her likeness on “Ultra Sheen Supreme” hair-relaxer packaging from November 1995 through November 2000 and in national magazine advertisements from November 1995 through November 1996.
- The parties contemplated possible additional uses, but any such terms were to be negotiated separately.
- The hair-relaxer line was later acquired and transferred among successor companies, including L’Oreal USA, Inc. and Wella-related entities.
- Toney alleged that defendants continued using her likeness in product packaging and promotion after the authorized time periods and without her consent.
- Toney brought a claim under the Illinois Right of Publicity Act (IRPA) and also pleaded a Lanham Act § 43(a) claim (not resolved in the appeal).

## Issues

1. Whether an IRPA right-of-publicity claim based on unauthorized commercial use of a person’s likeness is preempted by Copyright Act § 301 when the likeness is embodied in a copyrighted photograph.

## Decision

- The Seventh Circuit reversed the district court’s Rule 12(b)(6) dismissal of the IRPA claim and remanded.
- The court held the IRPA claim was not preempted by Copyright Act § 301.
- The court reasoned that the IRPA protects a person’s identity/persona, which is distinct from the copyright interests in a photograph, and that the claim contains an extra element—commercial appropriation of identity—making it qualitatively different from copyright infringement.

## Legal Principles

- Copyright Act § 301 preempts state-law claims only if (1) the work falls within the subject matter of copyright and (2) the state-law rights asserted are equivalent to the exclusive rights in 17 U.S.C. § 106.
- A right-of-publicity claim that targets unauthorized commercial use of a person’s identity is not equivalent to a claim for unauthorized reproduction, distribution, or display of a copyrighted work.
- The “extra element” of misappropriation of identity/persona for commercial purposes can defeat § 301 preemption even when a copyrighted work (such as a photograph) is the vehicle by which the identity is used.

## Conclusion

The Seventh Circuit held that Illinois’s statutory right of publicity protects control over the commercial use of one’s identity, and because that interest is not equivalent to copyright’s § 106 rights, the Copyright Act did not preempt Toney’s IRPA claim alleging continued commercial use of her likeness beyond her consent.


Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005)