James Brown "Live": Papa's Got a Brand New Claim

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While death has ended James Brown's reign as Hardest Working Man in Show Business, his post-mortem litigation may yet snatch from Elvis the title Hardest Work Corpse in Lawsuits.  His latest appearance was in the Illinois Appellate Court, where he was the headliner in the appeal of a right-of-publicity claim against a company that licenses copyrights for stock photographs.  The case presents an intriguing and somewhat confusing fair-use struggle along the border between right of publicity and copyright law.

The basic facts are straightforward: The main defendant, Corbis Corp., licenses the use of stock photographs and images. Its customers range from newspapers and magazines to advertising agencies.  It had, for example, given Rolling Stone Magazine a license to use certain photographs of James Brown in a profile the magazine published under the title Being James Brown.

So far, so good.  Entirely proper, no cause of action.

But Corbis operates a Web site on which it displays images of its copyrighted photos that are available for licensing. Brown sued, alleging that display of his images was a commercial use that violated his right of publicity under Illinois common law and under the Illinois Right of Publicity Act, 765 Ill. Cons. Stat. 1075.

Corbis filed a motion to dismiss, arguing (a) that its display of the photographs could not constitute "an improper commercial purpose" under the state law because it already owned or controlled the copyrights in them, and (b) that Brown's claims were preempted by the federal Copyright Act.  The trial court granted the motion to dismiss on both grounds; but then, on a motion for reconsideration from beyond the grave, reversed itself and denied the motion on both grounds.

The court of appeals eventually declined to resolve the first issue -- "commercial purpose" -- on the ground that at the pre-trial motion stage there were just too many disputed material facts to conclude that the trial court erred in denying the motion.  Its discussion of those facts, however, is worthy of a law school exam question.  I respectfully dissent.

But as for the preemption question, the opinion shows how complicated that issue remains after the Seventh Circuit's decision in Toney v. L'Oreal USA, Inc. 406 F.3d 905 (7th Cir.2005), which -- like the trial court in the James Brown case -- was the second decision on that appeal and which, upon a motion for rehearing, reached the opposite result from the original decision.  (Both opinions are available here.)  The plaintiff in Toney was a fashion model who consented to the use of her photograph for a limited time on a hair care package.  When a successor company used her photograph after expiration of the consent, she sued for violation of her right of publicity. The defendant, as the owner of the copyright in the photo, moved to dismiss under Section 301 of the Copyright Act,  arguing that its reproduction and display of the photography were within its exercise of its exclusive rights under Section 106.  But the Seventh Circuit ultimately held that her claim survived preemption by the Copyright Act because the subject matter of a right-of-publicity claim is not a particular photograph but "the persona of the plaintiff as a human being."  Toney, 406 F.3d at 908.  Because the copyright law did not protect the plaintiff's "identity," her state claim was not preempted.

A later decision by the Ninth Circuit in Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006), reached the opposite conclusion in a case where Sony had a license to use a recording of plaintiff's song. Without her permission, Sony included a sample of the song in a CD and music video featuring another artist.  The Ninth Circuit dismissed her right-of-publicity claim as preempted by the copyright law because it was based solely on her voice "embodied within a copyrighted sound recording."

Corbis argued that Laws and not Toney applied because its web site was merely displaying the photograph as the photograph itself.  The Illinois court disagreed:

In Toney, the defendant used a copyrighted photo to endorse a product. By contrast, Corbis is using a copyrighted photo to distribute a license. Corbis argues that Brown has not asserted a right of publicity claim separate from the enumerated rights under section 106 of the Copyright Act and that his claim is a direct challenge to Corbis's right to control the distribution and display of the copyrighted images.

Brown responds that Corbis argues a distinction without a difference. Brown argues that the images of James Brown advertised for sale on Corbis's Web site do, in fact, constitute fixed work on the Internet in that the "licenses" result in a tangible photograph to the end user. Brown distinguishes Laws, noting that there, the plaintiff had contractually released control and copyright of her recording to Sony. ... By contrast, Brown never consented to any sale of his photographs and never possessed control of a copyright interest to release.

Under the circumstances, where it is possible that the photos as displayed on Corbis's Internet Web page can be interpreted as tangible, the Publicity Act as applied here would not preempt copyrights.

And thus the Illinois court rejected the preemption argument.

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