1 This appe al involve s only Corbis. FOURTH DIVI SION AUGUST 2, 2007

No. 1-06-0870

JAMES B ROWN, THE N EW JAME S BRO WN ) Appeal from the ENT ER PR ISES , INC ., a nd J ES US MUH AMM AD- ALI, ) Circuit Court of ) Co ok Co un ty. Plaintiff s-Appell ees, ) ) v. ) ) ACMI P OP DI

VISION, a Division of Con quest ) Operator Services Corporation, ) CONQUEST LONG DI STANCE, B&L L ICENSE, ) INC. , DOLLAR B IL

L WAL LER, Z ERO HOUR ) RECORDS, F RANK CI CERO, d/b/a Globe Post

ers, ) Honorab le

) Allen S. Goldberg, Defend ants-App ellants. ) Judge Presiding.

PRESID ING

JUSTICE

CAMPBEL

L del ivered t

he opinion

of the co urt: This is an interlocutory appe al pursuant to Supreme Court Rule 308 (155 Ill. 2d R. 308). Plaintiffs, singer and recording ar tist James Brown, The New James Brown Enterprises, I nc., and Jesus Muhammad-Ali, filed a complaint against defendant, the Corbis Corporation (Corbis), 1 a company that license s copyrig hts for stock photographs and images, see king damages and other relie f in co nnect ion wi th Co rbis's disp lay of pho tograp hic im ages of J ames Br own on Corbi s's website. Corbis appeals from the trial court's denial of its motion to dismiss counts II I and VI of plaintiffs' amended complaint.1-06-0870

2 Prior to oral arguments in this case, but after the filing of all parties' briefs, plaintiff 2 On March 22, the trial court certified the following questions for appeal pursuant to Supreme Court Rule 308:

"1. Whether the c ircuit co urt erre d in deny

ing Corb is's motion to dismiss counts III

and VI under 735 I

LCS 5/2-619 and in rejecting Corbis' s argument that the undisput ed fact s show tha

t Corbis did not use photographs of James Brown for an improper c ommercial purpose under either the I llinois common law or the Illinois Right of Publicity Act, 735 I

LCS 1075/1, et seq. "; and "2. Whether the circuit court erred in its July 23, 2004, order and memorandum opinion by holding that the U.S. Copy right Act does not preempt the claims asserted by Plaintiffs in counts II I and VI of the amended complaint." The Archive Council of America (ACA) filed a n amicus curie

brief in su pport of Cor bis's position. For the following reasons, we answe r each of the certified questions in the neg ative, affirm the judgement of the trial court, and re mand this matter for further proceeding s consistent with this opinion. BACKGROUND The late James Brown was a professional singe r and recording artist of international

renown. 2 In October 2002, Br own filed a multicount complaint against, inter alia , Corbis,1-06-0870

James Brown died.

3 Brown alleged that six other defendants used his voice a nd likeness for the sale or promotion of merchandise such as phone cards and posters. No such allegations were made against Corbis. 3 alleging that Corbis infringed B rown's right of publicity through Corbis's unauthorized commercial use of his image on the I nternet. In counts I

II and VI, respectively, Brown a lleged that Corbis's Internet sale of photographs of Brown violates Brow n's right of publicity

under common law and the Illinois Right of Publicity Act (735 IL CS 1075/1, et seq (West 2002)) (Publicity Act). 3 On Ja nuary 13, 2003, Corbi s fil ed a mo tion to di smis s coun ts III and VI of Bro wn's complaint pursuant to sections 2-615 and 2-619 of the I llinois Code of Civil Procedure. (735 5/2-615, 6 19 (West 20 02)). I n support o f its sect

ion 2-619 m

otion, Corb is submitte d the aff idavit of its senior corporate counsel, Dave Gre en. Green testified that Corbis is in the business of licensing copy rights f or photog raphs an d other a rtistic ima

ges. Cor bis either owns the c opy

rights to those images or is authorized to license the copy right to those images on behalf of photogr aphers a nd artists whom Corbi s repre sents and to whom Cor

bis pay s roy alties. Corbis displays a cata

logue of over 2.1 million photographic image s it owns on its website so that customers can identify

the images they

choose to license. The photographs shown on the site are either obscured with a visible watermark or ar e a very low resolution in order to prevent use of the imag es by

customers prior to t

he execut ion of copyr

ight lice nses. Green stated that Corbis's pricing for c opyright lice nsing depends on the extent of the customer's proposed use and that Corbis charg es a newspaper with a gre ater circulation a higher1-06-0870

4

fee for a copy

right license than it charges a newspaper with a smaller circulation because of the "more intensive" use of the copy righted work. Green continued that Corbis never used image s of Brown to sell or advertise any "product, merchandise, goods, or se rvices" as required for applica tion of the Publicity Act nor does Corbis sell images of Brown. Rather, Corbis only offers to license certain rights under federa l copy right la w, subject to the ter

ms and con

ditions sta

ted in Corb is's site

agree ment and i

n Corbis' s licensin

g agr eements

. In a ddition, Cor

bis notifie s users of

its website

that Corbi s does not own or lice nse rig hts of publicity. The photog

raphs of Brown at issue in this case are found in the " professional use" section o f Corbis' s Web site a nd are de signate d as "ri ghts managed" images , which c ontain restrictions such

as condit ioning the licens ee's r

ight to us e the images upon ob taining all necessary third-party " rights, releases and permissions." Brown did not file any

counteraffidavit. On August 6, 2003, the trial court denied Corbis's motion to dismiss counts II I and VI pursuant to section

2-615, bu

t grant ed the mot

ion pursua

nt to secti on 2-619. The tria l court he ld that Corbis's actions as a "vehicle of information" are noncommercial and therefore Brown has no actionable right of publicity either under common law or the Publicity Act. In addition, the trial court held that Corbis's rights under the fede ral Copyrig

ht Act of 1976 (Copyrig

ht Act) (17 U.S.C.§ 101, et seq . (2000)), prevents any claim Brown might have based on his right of publicity . The tria

l court he ld that Br

own's r ight of p ublicity is equiva lent to one

of the rig hts specifie d in sectio

n 106 of the

Copy right Ac t and giv es the co

pyr ight hold er, Corb is, the sole right to distribute images of Brown.1-06-0870

5

However, on July 23, 2004, upon Br own's motion for reconsideration, the trial court completely reve

rsed it's initial holding. The trial court, recog nizing that it previously held that Corbis was exempt from liability for violating Br own's right of publicity

as a "vehicle of information," determined that it had previously erred in apply

ing the law, and reasoned that the exception applied only if the imag es sold by Corbis are used f or the purpose of disseminating

news or o ther publ ic intere st informa tion. The t

rial cou rt held tha

t in light o f the fa

ct that Cor

bis sells pictures to various categories of customers, some of whom are not news media but, rather, private or comme

rcial use rs, Brown's ri ght of pu

blicity is at issue . The tria

l court fu rther he ld that Corbi s may

be liable either d irectly or indire ctly

of "tur ning a b lind ey

e" to pos sible copyrig ht infringements. On September 17, 2004, Corbis filed its motion to reconsider the trial court's order of July 23, 2004. Corbis also moved to certify three questions of law for interlocutory appeal pursuant to Supreme Court Rule 308. On March 22, the trial court denied Corbis's motion for reconsi deration and ce

rtified t he two que stions note d above on appea l to this cou

rt. OPINI ON I. Preliminary

Matters During oral arguments on this case, the court took judicial notice of the intervening event of the death of plaintiff James Brown on December 25, 2006, subse quent to the filing of the parties' briefs but prior to oral arg uments. This court queried the parties whether the plaintiffs had filed or intended to file a sugge stion of death with this court. Plaintiffs' attorney s indicated that a suggestion-of-death filing would be made only in the trial c ourt. Following oral argume nts, this co

urt sua sponte invited the plaintiffs to provide information regarding the status of the es tate of James Brow n and any chang e in repr

esentat ion that wo

uld impac t our abili

ty to1-06-0870

6

issue an opinion in this case. Over a period of six months, the representatives of James Brown provided piecemeal answers to the inquiries of this court The following is the chronology

of the orders o f this cou

rt, along with the r

esponses provided by t he parti es: January 25, 2007: At the outset of oral arguments, this court requests that plaintiffs file a

sugge stion of de ath with th is court. February 2, 2007: Plaintiffs, James Brown and others, file motion to suggest the death of

James Brown, attaching Brown' s death certificate, and to substitute three persona l repre sentative s, Alfre d H. Bra dley , Albert H . Dallas a

nd David G. Cannon, as representatives of the Estate of James Brow n. This motion is filed concurrently

with the order of this court, dated February , 6, 2007. February 6, 2007: This court issues an order, sua sponte , requesting that James Brown

inform the court regarding: ( 1) the substitution of parties; (2) the suggest ion o f death ; (3) a ny change in repres entat ion; and (4 ) any change in the stan

ding of t he parti es. April 12, 2007: This court issues a second order deeming plaintiff' s motion filed February 2, 2007, insuffic ient to supply the information this court requested. The order requested that the party representing James Brown provide the following information: (1) status of the decedent' s estate; the location and name of the probate court; and the location and name of executor, administrator, or representative of the estate; (2) w hether the designee or representative desires leave to file an a ppeal brief; and (3) status as to the party 's authority

to continue to prose cute the appeal or whethe

r it is

ne ce ss ar y to su bs ti tu te a p ar ty.1-06-0870

4 The Augusta Chronicle, Brown' s hometown paper, continues to meticulously r eport on the death of James Brown and the legal battles surr ounding his estate. 7 May 15, 2007: Plaintiffs file a status report. The report is signed by the three personal representatives and indicates that all three re presentatives desire that the appeal go forward. The r epresentatives do not ask for leave to file an appeal brief and seek only to substitute as personal representatives of the Estate of James Brown. May 21, 2007: Plaintiffs file a motion to supplement the previously filed status repor t. Attached to the motion to supplement is an order of the probate court of the State of South Carolina, County of Aiken, in the matter of James Brown, a/k/a James Joseph Brown, No. 2007-ES02-0056, appointing the three pe rsonal r eprese ntatives. June 1, 2007: Defend ant Corbis

files a de tailed re sponse to p laintiff s' statu s report , indicating that plaintiffs' omitted pertinent information from the report a nd attaching several news article s from the Augusta (Georgia ) Chronicle. 4 June 27, 2007: Plaintiffs file a motion to further supplement the May 15, 2007, status report, including

a docume

nt entitle d "Authorization of Special Administrators," but without any c aption indicating that it constitutes a formal court filing, as well as a multiply-faxed copy of a n attorney client agree ment purp ortedly

signed by Jame s Brown w ith the law

firm of G old & Coulsen.1-06-0870

8

The news articles from the Augusta (G eorgia) Chronicle submitted by Corbis reported that, in addition to three representatives, two additional individuals, Adele Pope and Bob Buchman, were appointed as specia l administrators of the Estate of James Brown. The special administrators were described as being charged with overseeing

the actions of the personal representatives. In their supplemental motion filed June 27, 2007, plaintiffs stated that Aiken County , South Carolina, probate judge, Sue H. Roe, appointed Alfred H. B radley, Albe rt H. Dallas and David G. Cannon personal representatives of the Estate of James Brown on January 18, 2007. These three individuals, who purportedly serve as both court-appointed personal repre sentatives and cotrustees of the James Brown I rrevocable Trust, later expressed their desire to substitute as plaintiff s for James

Brown, via an " Authoriza tion of Spe cial Admi

nistrators" authorizing Go ld & Coulson and Jay B. Ross to continue to repre sent the Estate of James Brown. The special administrators also authorize themselves to substitute as party plaintiffs in any existing litigation or future litigation related to the Estate of James Brown. While the r

eprese ntatives p rovided t he author ization of t

he personal admin

istrators, it remains unclear whether all of the nec essary pa rties have filed appearances in this case . One of the trusts created upon the death of James Brown, the " I Feel Good" Trust, reportedly ha s the rights to Brown's music, likeness and imag e and is not named as a party plaintiff. The "I F eel Good" Trust was apparently created by

an irrevocable trust agree ment signed August 1, 2000. The three personal administrators seek to substitute as plaintiffs in their capac ity as both personal representatives of the Estate and as cotrustee s of the James Brown Irre vocable Trust. However, plaintiff s failed t o submit to th

is court e ither the

trust ag reemen t or the or der of the South Carolina probate court appointing the special administrators.1-06-0870

9

Plaintiffs' responses, detailed above, while incomplete, do not appea r to alter the posture of the pa rties in te rms of this

court' s ability

to answe r the que stions ce

rtified t o this cour

t. This court is not a finde

r of fact. There fore, a

ny i ssue regarding

proper p laintiff

s or their representation is a matter that is best resolved in the trial court. II . Certified Questions This appe al is pursu

ant to I llinois Supr

eme Court

Rule 308, w

hich authorizes co

urts to certify questions

for inter locutory appeal. Section ( a) provi des in per tinent pa rt: "When the trial court, in making an interlocutory order not otherwise appealable, finds that the order involves a que stion of law as to which there is substantial ground for differ ence of opinion and that an immediate appeal from the order may materially adva

nce the ultimate termination of the litigation, the court shall so state in writing, identify ing the question of law involved. Such a statement may be made at the time of the entry of the order or thereafter on the c ourt's own motion or on motion of any party ." 155 Ill. 2d R. 308(a). The Supreme Court also authorizes the court to stay the proceedings pending re solution of the interlocutory appe al. 155 Ill. 2d R. 308(e). A. Initially , Corbis contends that the trial court erred in holding that its Web site display of copy righte d image s of James B rown con stitutes a commerc ial purpo se under the Public ity Act, which codifies the common law right of publicity . We review questions of statutory1-06-0870

10

interpretation de novo , as they pre sent pure questions of law. Knauerhaze v. Nelson , 361 I ll. App. 3d 538, 563-64, 836 N.E.2d 640 (2005). In counts III

and VI of his complaint, Brown se eks damages and other relief f or the Web site d ispl ay of his i mages o n the C orbis Web s ite wi thou t his conse nt, ev en when Corbi s's custo mers d o not use th e phot ograph s for a c ommer cial p urpos e. Cor bis ar gues th at Brow n's allegations are premised on an unprec edented legal theory that a copyrig

ht for a photograph of an individual cannot be licensed unless the publicity r ights are obtained by

the licensor, not the end user, without regard to the ultimate use of the photogr aph. Count III alleges infringement on Br own's common law right and statutory right of publicity. The Publicity

Act, effective January

1, 1999, essentially codifies the c ommon law right of publicity and provides in pe

rtinent pa rt: "The ri ght to control and

to choose

whether and how to

use an individual's identity for c ommercial purposes is recognized as each ind ividual' s right o f publicit

y." 765 I LCS 107 5/10 (West 2002). Corbis expla

ins that the

common la

w right o f publicit

y is derived from the r

ight to pr ivacy . This court fir st recog nized that t

he common

law rig ht to priva

cy extended t

o a righ t of public ity i

n Eick v. Perk Dog Food Co. , 347 I ll. App. 29 3, 106 N.E .2d 742 (1 952). The right of publicity is "designed to protect a person fr om having his name or image used for c ommercial purposes without co nsent." Dwyer v. A merican Express Co. , 273 Ill. App. 3d 742, 748, 652 N.E.2d 1351, 1355 (1995). Citing cases decided prior to the enactment of the Publicity Act, Corbis argues that Illinois courts have narrowly construed the right of publicity , however, to avoid infringing upon1-06-0870

11

first amendment rights and other important public interests. For example, in Leop old v. L evin , 45 Ill. 2d 434, 441, 259 N.E.2d 250, 254 (1970), our supreme c ourt held that convicted murderer Nathan Leopold of the infamous duo " Leopold and L oeb" failed to establish a violation of right of publicity in a fictionalized acc ount of his life in book and movie because his crime and prosecution in 1924 "remain an American cause ce lèbre ," and because of his "conse quent and continui ng status as a p ublic figure. " Leop old , 45 Ill. 2d at 441. T he court explained: " '[The fact] [t]hat books, newspapers, and magazines are published and sold for profit does not pre vent them f rom be ing a

form of express ion whose li

bert y i s saf eguarde d by

the F irst A

mend ment. We fail to see why ope

ration for profit should have any different effect in the case of motion pictures.'" Leop old , 45 Ill. 2d at 4 41-42 , quot ing Joseph Burstyn, I nc. v. Wilson , 343 U.S. 495, 501-02, 9 6 L. E d. 1098, 11 06, 72 S. Ct. 7 77, 780 (1 952). Cor bis furthe r cites Berkos v. National Broadcasting Co. , 161 Ill. App. 3d 476, 495, 515 N.E.2d 668, 679 (1987), as a ca se similar to the present case. There, the plaintiff, a Cook County circuit court judge, filed claims for libel and commercial appropriation and intentional infliction of emotional distress against NB C based on a television news segment that reported on a fede ral criminal investigation known as "Operation Grey lord." T he news r eporters refer

red to the plaintiff in his judic ial capa

city and showe d his likeness on the program. The trial court dismissed the plaintiff' s entire complaint and subsequent motions to reconsider and amend the complaint. This court reversed the tria l court's finding regarding the plaintiff' s libel claim (Judge Jiganti dissenting), but affirmed the dismissal of plain tiff's compl aint f

or imp roper c ommer cial u se of h is li kenes s. Ci ting Leopold, the court found that Berkos' photograph in the br oadcast was "part of a ' vehicle of information' such as the news media." Berkos , 161 Ill . App. 3d at 4 95, ci ting Leop old , 45 Ill. 2d 434.1-06-0870

5 In its complaint, Brown notes that Corbis has licensing agreements with the register ed owners/estates of Marily

n Monroe and James Dean.

12 Brown responds that the trial court properly concluded that Corbis's display of his photos on its Web site did not constitute a part of a "vehicle of information" similar to a news re port because Corbis sel ls the phot

os for commercia

l purpose s as a mer

chandise or good , which is prohibite d by

the Public ity Act: " 'Commercial purpose' mea ns the public use or holding out of an individual's identity (i) on or in connection with the offering for sale or sale o f a produ

ct, merc handise, goods or

service s; (ii) for purposes of advertising or promoting produc ts, merchandise, goods, or services *** ." 765 I LCS 1075/5 (West 2002). In su pport, B rown cite s Comedy I II Productions, Inc. v. Gary Saderup, Inc. , 25 Cal. 4th 387, 21 P.3d 797, 106 Cal. Rptr. 2d 130 (2001). There, the registered owne r of all rights to the Three Stoo ges sou ght dam ages and inju nctiv e reli ef again st an a rtis t for v iolat ion o f Cali forni a's publicity rights act based on the artist's sale of lithographs and T- shirts bearing the likenesses of Moe, Curly and Larry r

eproduced from a charcoa l drawing. The court held that the artist was prohibite d from de

picting the Thre e Stooge s "on or i n produc ts, merchandise, or goods " within the meaning of the publicity rights statute without the consent of the registered ow ner. Comedy III , 25 Cal. 4th at 395, 21 P.3d at 802, 106 Cal. Rptr. at 132 . 5 Corbis dist

inguishe s Co med y III , arguing that that case dea lt with tangible property , i.e. , the display of the Thre e Stooges on T-shirts and lithographs. Corbis argue s that it is not selling tangibl e proper

ty b ut is only transfe rring a legal r ight cr eated by the Copy right Ac t. Corbis1-06-0870

13

quotes Co med y III : "[W]e agree with the Court of Appeal that Saderup sold more than just the incorporeal likeness of The Three Stooge s. Saderup's lithographic prints *** are themselve s tangible personal property, consisting of paper and ink, made as products to be sold and displayed on walls like simi lar graphic art." Co med y III , 25 Cal. 4th at 395, 21 P.3d at 802, 106 Cal. Rptr. at 132. Corbis responds that the licenses it grants for Brown' s "incorporeal image" are purely intangible. Corbis concludes that the trial court's ruling conflicts with the first ame ndment: Brown cannot r equire p ay

ment for t he news media's

use of his

image. The Public ity Act speci fically exempts "u se of an i

ndividual 's ident

ity f or non-c ommercia

l purpose s, includi

ng any news, pub lic affairs, or sports broadcast or acc ount, or any political campa ign." 765 IL

CS 1075/35(b)(2) (West 2002). By wa

y of example, Corbis notes that it recently licensed several images of B rown to Rolling Stone Magazine, which published a lengthy biographical news article about B rown. Jonathan Lethem, Being James Brown , Rolling S tone, June 2 9, 2006, a t 5, 55-64, 80-81. Cor

bis argues that had it not been able to license these images of Brown, the news media would ha ve been impermissibly censore d. The parties' arguments ar e all compelling. However, whether the facts as alleged support Brown's action for a violation of the Publicity Act depends on how Corbis's actions are define d. In this case of "a

pples v. oranges," Corbis arg ues that in displaying photog raphs of James Brown on its Web sit

e, it is not selling a product but rather offering to

license the copy rights it holds on the photographs. Corbis argues that any action by Br

own for improper use of the photos by the end user licensee lies against that end user and not Corbis. The amicus party , the industry gr oup Archive Council of America (ACA), opines that neither the Publicity Act nor the c ommon law prohibits stock photo libraries and copyr ight1-06-0870

14

owners from offering unrele ased images to commercial users and c annot be liable for the action of the end us ers: t he fail ure of e nd use rs to o btain subs equen t clea rances in th e use o f an im age does not convert the licensor into an infringer. See Medic Alert Foundation United States, Inc

. v. Corel Corp ., 43 F. Su

pp. 2d 933, 940 (N.D . Ill. 1999). AC A argu es that 19states ha

ve rightof-publicity statutes, 18 have a recognized common law right of publicity and no state has ever held that the mere display of images for the purpose of licensing copyrig hts violates a right of publicity in and of itself: "Ove rprotecting intellectual property is as harmful as underprotecting it," and "[T]he broader and more ill-defined one state 's right of publicity , the more it interferes with the l egitimate in terests of o ther states ." White v. Samsung Electronics America, I nc. , 989 F.2d 1513, 1519 (9th Cir. 1993) (Kozinski, O' Scannlain, and Kleinfeld, J.J., dissenting from denia l of re hearin g en banc ); J. Thomas McCarthy, The Rights of Publicity and Privacy , §§6:3, 6:6 (2d ed . 2005). T

he ACA wa

rns of the evanesc ence of

public ac cess to hi storic photogra phs. The trial court initially conclude d that Corbis's "sale" of the licenses wa s noncommercial and cons tituted a " service ." Howe ver, in r eversin g itself , it concl uded that Corbis wa s, in fact, selling a "product" for prof it and that since Brown received no compensa tion from any potential unauthorized commercial use, his rights of publicity are violated. When proceeding under a section 2-619 motion, the movant conc edes all well-pleaded facts set forth in the complaint but does not admit conclusions of law. Employers Mutual Cos. v. Skilling , 256 Ill. App. 3d 567, 569, 629 N.E.2d 1145 (1994). A section 2-619 motion should be granted only

when it raises an affirmative matter, which negates the plaintiff's cause of action completely or re futes critical conclusions of law or conclusions of material, but unsupported fa ct. The court must deny the motion if there is a material and genuine disputed question of fact. 7351-06-0870

15

IL CS 5/2-619( c) (West 2 002); Samansky v. Rush-Presby terian-St. Luke's Medic al Center , 208 Ill. App. 3d 377, 383, 567 N.E.2d 386 (1990). In light of the vast differ

ence of opinion regarding the interpretation of the definition of what Corb is sells an

d the leg al effe ct of such sales, we canno t say that the f acts ar e undisput

e d that Corbis's display of the photos of James Br own on its Web site did not in some way constitute an imp rope r com merc ial us e under ei

ther the I llino is com

mon la w or t he Pub licit

y Act. We theref ore can not concl ude that t he trial c ourt err

ed in deny

ing Corb is's motion to dismiss. For this reason, we answer the first ce rtified question in the negative. B. Next, Corbis contends that the trial court's interpretation of the Publicity Act and the common law right of publicity violates the copyrig

ht clause of the United States Constitution, which provides that: "Congress shall have the Power * * * To pr omote the Progress of Science and Usef ul Arts, by

securin g for li mited Time s to Authors and I nventors the exclus ive Righ

t to their re spective

Writings a

nd Discov eries." U.S. Const. , art. I , §8, cl. 8 . Corbis ar gues tha t it merely exerc ises its rights to reproduce and publish Brown's imag es under the Copyr ight Act and that any publicity

rights held by B rown are preempted by the Copyright Ac

t. Corbis explains that the trial court's ruling allows Illinois to regulate the subject matter of copy right and to limit or even eliminate the exclusive rights granted to copy right holders under section 106 of the Copyright Act. Section 301 of the Copyrig ht Act outlines two conditions which, if met, require the preemption of a state-law claim in favor of the rig hts and remedies available under feder al law. Section 30 1(a) sta

tes:1-06-0870

16 "On or a fter Janua ry 1, 1978, a

ll lega l or equita

ble rig hts that are equivalent to any of the exclusive rights within the general scope of copy

right as specified by

section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copy right as specified by section[] 102 *** are governed exclusively by the title. Therea

fter, no person is entitled to any such rig ht or equivalent right in any such work under the common law or statutes of any State." 17 U.S.C. § 301(a) (2000). In making its determination, the trial cour t framed this case as one of first impression and relied on Toney v. L 'Oreal USA, I nc. , 406 F.3d

905 (7th Cir . 2005). T

here, a model con sented to the use of her photograph for a limited time in connection with the packaging of a hair c are. However, when a successor compa ny later used he

r photograph without her permission, Toney filed an action under the Publicity Act alleging that her rig

ht of publicity had been violated. T he Seventh Circuit held that Toney' s claim survived preemption by the Copyright Act. The court determined that the subject matter of a Publicity Act claim is not a particular picture or photograph bu t, rather, t he "persona of t he plainti ff as a human bei ng." Toney , 406 F.3d at 908. The court found that Toney 's identity was not " fixed in a tangible medium of expression" and that the rig hts prote cted by

the Public ity Act are not "equi valent" to any

of the exc lusive rig

hts within the general scope of section 106 of the Copyright Ac t. Toney , 406 F .3d at 909. T hus, T oney's identity was not protected by copyrig ht law and the state law protecting her rig hts was not preempted.1-06-0870

17

Corbis, however, asserts that the subject matter of Brown' s Publicity Act claims--the offering to license and the actua l licensing of copy

rights to photos of James Brown--does in fact fall within the subject matter of copy right. In support, Corbis relies on Law s v. Sony Music Entertainment, Inc. , 448 F.3d 1134 (9th Cir. 2006). There, the defendant, Sony Music, obtained a license to use a vocal recording of the song "Very

Special," as performed by Debra Laws. Sony used a sample of the recording in a c ompact disc (CD) and music video featuring another artist. Sony earned substantia

l revenu e from the

sales of the CD and

video without obtain

ing L aws' consent t o use the r

ecordin g. L aw broug

ht the action alleg

ing that Sony's use o f the samp le recording violated her statutory and common law rights of publicity under California law. Laws , 448 F.3d at 1138. In response, Sony argued that L aws' specific claims could not be distinguished because Law s' right of publicity was based solely on he

r voice "embodied within a copy righted sound record ing." Laws , 448 F.3d at 1139. The Ninth Circuit found in favor of Sony, holding that the two rights, the copy right and Laws' rig ht of publicity, could not be separa ted. The Ninth Circuit distinguished Toney , noting th at in th at ca se , t he pl ai nt if f c la im ed mi sa pp ro pr ia ti on of he r i de nt it y separate

and apart

from any copy righted work. Laws , 448 F.3d at 1142. Corbis compares the present case to Laws and distin guishes it from Toney

arguing that Bro wn' s l ik ene ss doe s no t ex ten d be yond th e us e of th e co pyri ght ed p hot os t hem sel ves . In Toney , the defendant used a copy righted photo to endorse a product. By contrast, Corbis is using a copyrig hted photo to distribute a license. Corbis argues that Brown has not asse rted a right of publicity claim separa

te from the enumerated rights under sec tion 106 of the Copyright Ac t and that his claim is a direct challenge to Corbis's rig ht to control the distribution and display of the copyrig hted images.1-06-0870

18

Brown responds that Corbis argues a distinction without a differ ence. Brown argue s that the images of James Brown advertised for sa le on Corbis's Web site do, in fact, constitute fixed work on the Internet in that the " licenses" result in a tangible photogra ph to the end user. Brown distingu ishes Laws , noting that there, the plaintiff had contractually released control and copyrig ht of her recording to Sony

. Laws , 448 F.3d at 1136. By contrast, Brown never consente d to any

sale of h is photog raphs an d never p ossessed

control o f a copy

right in terest to release. Under th e circu

mstance s, where

it is possibl e that the

photos as d

isplay ed on Corb is's Internet Web pag e can be interpreted as tangible, the Publicity Act as applied her e would not preempt copyr

ights. As such, we answer the second question ce rtified to this court in the negative. In conclusion, we answer the trial court's certified questions in the nega tive and hold that (1) the tr ial cour t did not er

r in deny ing Corb is's motion to dismiss c ounts III and VI of plainti ffs' complaint under the Publicity Act; and (2) the United States Copyright Ac t does not preempt plaintiffs' claims. We therefore affirm the or ders of the trial court and remand this matter for further proceedings consistent with this opinion. Affirmed. QUINN, P.J., and MURPHY, J., concur.