Sixth Circuit Decides “Right of Publicity” Claim is Preempted by Federal Law

A recent decision by the Sixth Circuit addresses an often-hazy aspect of the “right of publicity”: the issue of whether a publicity claim is preempted by copyright law.

When we talk about the right of publicity, we are talking about a creature of state law – a right protected under the common law and statutes of many states. Cases often arise when a celebrity claims that a use of the celebrity’s name or image violated his or her right of publicity. There is a body of cases, however, that carves out a swath of these publicity claims and holds they are preempted by federal law – specifically, by the Copyright Act. Sometimes the line between the preempted and the enduring publicity claims is hard to see.

The haziness of that line is illustrated by two appellate cases decided just one year apart. The first, in 2005, allowed a right of publicity claim. The second, in 2006, said the claim was preempted by the Copyright Act.

In the 2005 case Toney v. L’Oreal USA, Inc.,[1] the Seventh Circuit considered a fashion model’s claim under the Illinois Right of Publicity Act. The model objected to L’Oreal’s use of a photograph of her. L’Oreal actually owned the copyright in the photograph, so its use of the photograph was authorized under copyright law. But the use was not authorized by the model herself. According to the Seventh Circuit, the model’s “identity” is not covered by the Copyright Act, therefore the Illinois claim was not preempted.[2]

Compare that with the 2006 decision by the Ninth Circuit in Laws v. Sony Music Entertainment, Inc.[3] The Ninth Circuit considered a singer’s claim under California’s right of publicity law. Twenty-five years earlier, in 1981, the singer, Debra Laws, had recorded a song called “Very Special.” Much later, the pop star Jennifer Lopez used samples from that 1981 recording in a 2002 release that went to Number 1 on the United States Billboard record chart. Laws objected, but she did not own the copyright in her 1981 recording, so she invoked the right of publicity under California law. The Ninth Circuit held that Laws’ publicity claim was preempted by the Copyright Act.

The Ninth Circuit explained that its decision was consistent with the Seventh Circuit’s decision in Toney. According to the Ninth Circuit, the key distinction between the fashion model’s claim in Toney and the singer’s claim in Laws was that the fashion model in Toney had sued the very persons who owned the copyright in the photograph of her, persons whom she had once authorized to use her identity, though no longer. The singer in Laws, however, had sued someone to whom the owner of the copyright in the 1981 recording had licensed the copyright, someone who had never had any dealings with the singer.[4] A distinction without a difference, some might say. But according to Laws it makes a difference.

Now add to this growing body of case law the opinion of the Sixth Circuit issued on August 21, 2019. The decision is unpublished, but the holding is noteworthy. In this case, called Wright v. Penguin Random House,[5] the plaintiff claimed to be the real-life protagonist of the famous Fifty Shades of Grey. According to the plaintiff, since 1995 she had been publishing her memoir on a website, and her real-life adventures as told in her memoir were, without authorization, made into the story of the bestselling novel and hit movie. Unfortunately for her, she never registered the copyright in her memoir. So that left her with a claim (among others that she asserted) under Tennessee’s right of publicity statute. According to the Sixth Circuit, the claim was preempted. The Sixth Circuit appeared to find it obvious that, because the online memoir was a specific expression of an idea, and because “unauthorized publication is a core and exclusive right safeguarded by the Copyright Act,” the state law claim must be preempted.[6]

The Sixth Circuit’s decision highlights the importance of the preemption issue in many right of publicity cases. In some cases, preemption is clear-cut. Often, however, it is not.

[1] 406 F.3d 905 (7th Cir. 2005).

[2] Id. at 910 (“Identity … is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted.”).

[3] 448 F.3d 1134 (9th Cir. 2006).

[4] Id. at 1142 n.4.

[5] --- Fed. Appx. ---, 2019 WL 3945632 (6th Cir. 2019).

[6] 2019 WL 3945632, at *4.