Midway Manufacturing Co., 948 F.Supp. 40, 42 (N.D. Ill, 1996).

Taking the Plaintiff's allegations as true, that is, that “Johnson Products and its
successors, Defendants L’Oreal and Wella, have used and continue to use Ms. Toney’s
likeness on Ultra Sheen relaxer packaging and in other media, including phone cards,
magazines, posters, point of purchase materials and the Internet, beyond the terms
outlined in Ms. Kriz’s letter,” it is still unclear at this stage of the litigation whether
Plaintiff is widely known or that her image has attained secondary meaning. Complaint
713. All that Plaintiff has established is that she has been in some print advertisements,
commercials, and runway shows.

Furthermore, and specifically in this case, in order to prevail on a claim under Section
43(a) Plaintiff must show that (1) Defendants made false representations about Plaintiff's
endorsement or association of the Ultra Sheen Supreme product; (2) the misrepresented
product travels in interstate commerce; (3) the misrepresentations are likely to deceive a
substantial segment of the intended audience as to the source or sponsorship of the
product; and (4) the misrepresentations are material, in that they are likely to cause injury.
McMahon, 1999 U.S. Dist. LEXIS 7964, at *6. See also. Sanfield, Inc. v. Finlay Fine
Jewelry Corp., 168 F.3d 967, 971 (7th Cir. 1999); American Broadcasting Co. v. Maljack
Prods., Inc,, 34 F, Supp 2d 665, 677 (N.D. IIL. 1998); Brandt Consolidated, Inc. v,
Agrimar Corp,, 801 F.Supp. 164, 174 (C.D, Tl. 1992).

It is also unclear whether Plaintiff has established that Defendants made false
Tepresentations about Plaintiff's endorsement or association of said products. In L.5.
Heath & Son, Inc. v. AT&T Information Sys., Inc., the court affirmed the district court's

holding that rejected the plaintiff's (Heath's) false endorsement claim on the ground that



—

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION .
JUNE TONEY, )
)
Plaintiff, )
)
v )
) No.02 C3002
L’OREAL USA, INC., THE WELLA, )
CORPORATION, and WELLA ) Honorable Ronald A. Guzman
PERSONAL CARE OF NORTH )
AMERICA, INC, ) Hon. fan H, Levin, Magistrate
)
Defendants. )
MQ! LW ION AND O g.

Plaintiff, June Toney, filed a complaint asserting two claims against Defendants,
Wella Corporation, Wella Personal Care of North America, and L’Oreal USA, Inc.
stemming fom their alleged use of her image on packaging and promotional materials for
a consumer product. Toney contends that defendants’ use of her image (1) violated her
publicity rights under the Illinois’ Right of Publicity Act, 765 ILCS 1075/1 et seq., and
(2) violated the Lanham Trademark Act of 1946, 15 U.S.C. § 1125(a). In response,
defendant, L’Oreal filed a motion to dismiss plaintiff's complaint, Defendants, the Wella
Corporation and Wella Personal Care of North America, Inc. substantially joined in
L’Oreal’s motion. For the reasons set forth in this opinion, defendants’ motion to dismiss

plaintiff s complaint is granted in part and denied in part,

Plaintiff, an Mlinois resident, is a model who has appeared in print advertisements,



: ‘ UNIT. STATES DISTRICT COURT
NORTHERN DISTRICT OF JLLINOIS

Michael W. Dobbins Office of the Clerk
CLERK

John Sheldon Letchinger
Wildman, Harrold, Allen & Dixon
2800

225 West Wacker Drive

Suite 2700

Chicago, IL 60606-1229

Case Number: 1:02-cv-03002 Other Court No: 02 L 003446

Title: ‘Yoney v. L’Oreal USA Inc

Assigned Judge: Honorable Ronald A. Guzman

MINUTE ORDER of 12/16/02 by Hon. Ronald A. Guzman :
Plaintiff's motion to reconsider its ruling of 10/30/02
[23-1] is denied for the reasons stated in open court.
Plaintiff's request for extension of discovery is granted.
All discovery Gloses 3/31/03. Status hearing set for
04/04/03 at 9:30 a.m. Defendants given leave to file
answers to count 2 by 12/17/02. (Entered Order). Mailed
notice

This docket entry was made by the Clerk on December 18, 2002

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which plaintiff was attempting to revive from previous adverse rulings. Plaintiff likewise did not
submit her Amended Complaint to the Court, which would have revealed that it includes new
factual allegations and Icgal theories, comprising over 58 new paragraphs that were not
contained in her original Complaint. To the contrary, Plaintiffs’ representations upon which the
Court relied in granting Plaintiff leave to amend suggested that she was going to narrow, rather
than expand, the scope of hcr Complaint. As in Dover, there is no rcasonable construction of the
scope of the leave granted by this Court that permits such sweeping amendments. Plaintiff's
Amended Complaint should be stricken in ils entirety.

i. Plaintiff's Amended Complaint ls Unduly Prejudicial Under Foman And Its
Progeny.

Plaintiff's gamesmanship deprived this Court of the opportunity to consider the proposed
changes and avoided the application of the /oman factors, which govern the determination of a
motion for leave to amend under Rule 15. Foman v. Davis, 371 U.S. 178, 182 (1962); Johnson
v. Methodist Medical Ctr., 10 F.3d 1300, 1303 (7 Cir, 1993) (affirming denial of leave to
amend). The Supreme Court held in Foman that amendments arc not permitted where there is
“undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure
deficiencies by amendments previously allowed, undue prejudice to the opposing party or futility
of amendment.” oman, 371 U.S. at 182; Johnson, 10 F.3d at 1303. Given the breadth of
Plaintiff's Amended Complaint, it is not surprising that she did not submit it to the Court for
consideration in connection with her motion for leave. As set forth below, Plaintiff's Amended
Complaint does not and could not withstand scrutiny under the Foman factors. Plaintiff's
Amended Complaint unduly prejudices the defendants and should be stricken as futile.

Courts have recognized that unduc prejudice may be present when the amendment brings

in new parties or new claims, would result in expensive and time-consuming new discovery, or



Heath consented to AT&T's association with Heath in an advertisement. L.S. Heath &

Son, Inc. 9 F.3d at 575, It appears that Plaintiff, through written authorization gave
Defendants permission to use her image in connection with the Ultra Sheen Supreme
Product and therefore, the Fepresentation cannot, as a matter of law, be false, Discovery
will reveal the extent of this authorization.

Plaintiff has not set forth facts to support the conclusion that a substantial segment of
the intended audience would believe that Plaintiff endorsed said product solely on the use
of her image either. In Pelion v. Rexall Sundown, dnc., the court held that “one
appearance in a Sports Illustrated Swimsuit Issue in 1984 and some advertising work for
well-known consumer products does not deliver celebrity status.” No. 99 Ciy, 4342
(ISM), 2001 U.S. Dist, LEXIS 3825, at *7-10 (S.D.N.Y. Apr. 2, 2001). Plaintiff must
show that she was a “celebrity” when the Defendants used her Persona, name, and
likeness; otherwise, her identity does not constitute an economic interest protectable
under the Lanham Act, Pesina, 948 F.Supp, at 43, ‘This Court questions whether
Plaintiff is of celebrity status but discovery will resolve this material fact also. Plaintiff
herself does not allege or establish that she is recognizable,

Despite such obvious deficiencies we take the allegations of Plaintiff's complaint
as true and concluded that sufficient facis support Plaintiffs Lanham Act claim.

Therefore, Defendants’ motion to dismiss Count II is denied.


EXHIBIT D


EXHIBIT B



distributing or preparing derivative works. Id. at *17-18. Likewise, this Court finds that

plaintiff's right to publicity in her photographed likeness is equivalent to one of the rights
in section 106 because it could be infringed by distributing or preparing distributive
works,

Accordingly, because both conditions mandated by the Copyright Act for
preemption have been satisfied, Count I of plaintiff's claim under the right of publicity is
preempted, and, therefore, dismissed. Plaintiff can not prove any set of facts in support of
her claim which would entitle her to relief. Conley v. Gibson, 355 US. 41, 45-46 (1957.

Alternatively, the Defendants argue that Plaintiff's claim under the Illinois Right
of Publicity Act should be dismissed because it is time barred by a one year statute of
limitations. This Court rejects such argument, Defendants, try to equate the Illinois
Right of Publicity Act with the right of privacy which has a one year statute of
limitations. However, these two rights are clearly different. “It is true that the rights of
publicity and of privacy evolved from similar origins; however, whereas the right of
Privacy protects against intrusions on seclusion, public disclosure of private facts, and
casting an individual in a false light in the public eye, the right of publicity protects
against the unauthorized exploitation of names, likenesses, personalities, and
performances that have acquired value for the very reason that they are known to the
public.” Baltimore Orioles, at 678. The Illinois Right of Publicity Act does not
explicitly, within the statutory provisions of the Act, provide for a statute of limitations.
Recause there is no statute of limitation explicitly specified within the confines of the
Act, this Court finds that the statute of limitations that applies in this instance is 735 ILCS

5/13-205, which provides a five-year period to commence civil actions related to, among



waived® any rights to those claims and this Court’s previous determinations of those claims must

stand. Counts LI and III of the Amended Complaint must be stricken for futility.

B. Plaintiff Failed to State a Claim for an Accounting.

Plaintiff's claim for an accounting likewise fails for futility and should be dismissed.
Generally, the lack of an adequate legal remedy is the esscntial prerequisite to an accounting
claim. 3Com Corp. v. Electronic Recovery Specialists, Inc., 104 F. Supp. 2d 932, 941 (N.D. IIL.
2000). The exception is where the accounting claim is based on a breach of a fiduciary duty.
Plaintiff's Amended Complaint demonstrates that she cannot state a claim for an accounting. It
is well-settled that the pleading of a breach of contract claim serves as a concession on plaintif{’s
part that an adequate legal remedy exists, 7d; see also Oil Express National, Inc. v. Latos, 966
F. Supp. 650, 652 (ND. TIl. 1997). Plaintiff also failed to plead the existence of a fiduciary duty.
Plaintiff alleges that the purported agreement between the partics gave rise to a fiduciary
obligation. (Amended Complaint | 86). Parties to a contract are not each other’s fiduciaries,
however. Original Great Am. Chocolate Chip Cookie Co. v. River Valley Cookies, Lid., 970 F.2d
273, 280 c7* Cir. 1992); see also Oil Express National, Inc., 966 F. Supp. at 652, Merely
characterizing the parties’ obligations under an alleged contract as “fiduciary” in nature docs not

suffice. 3Com Corp., 104 F, Supp. 2d at 941. Plaintiff's accounting claim must fail because she

* Even if Plaintiff had not waived her claims, the law of the case doctrine dictates that she cannot maintain
them. Under the law of the case doctrine, courts will not reopen issues decided in earlier stages of ihe
same litigation. Hinkle Eng’g, Inc. v. 175 Jackson L.L.C., 2002 U.S. Dist. LEXIS 19420 (N.D. Ill. 2002);
LP. Crigler v. Axia Inc., 735 F. Supp. 868 (N.D. Il. 1990)(complaint dismissed where cause of action
was identical to one previously dismissed); see also Disimone v. Browner, 121 F.3d 1262 (9th Cir,
1997)(“the doctrine is grounded in the need for litigation to come to an end . . . No litigant deserves an
opportunity to go over the same ground twice, hoping the passage of time or changes in the composition
of the court will provide a more favorable result a second time”). Plaintiff's attempts to pursue Lanham
Act and breach of contract claims previously failed, The remand by the Seventh Circuit docs not give her
a second bite at the apple when she failed to appeal the adverse rulings on her Lanham Act and breach of
contract claims,

10


will vary, at a minimum, the application of the applicable statutes of limitation. Plaintiff's

Amended Complaint converts what was a straightforward right of publicity suit into a
complicated and far-reaching dispute seeking to recover under four separate causes of action.

Clearly, the Amended Complaint makes more complicated the factual and legal issues
involved in the case. L’Oreal should not have to accompany Plaintiff on a fishing expedition for
the claim that will provide her with relicf and incur the expense of doing so. Johnson, 10 F.3d at
1304 (“There must be a point at which a plaintiff makes a commitment to the thcory of its
case.”). Plaintiff has had over three ycars to develop her theory of the case and the benefit of a
ruling by the Seventh Circuit Court of Appeals to clarify the issucs. It is simply too late to
expand the scope of the litigation so drastically.

Because of the prejudice that results, courts routinely refuse amendments that change the
scope of the litigation after remand from the appellate court. See, ¢.g., Llealth Care Serv. Corp.
v, Brown & Williamson Tobacco Corp., 208 F.3d 579 (7 Cir. 2000) (affirming denial of leave to
amend after remand); Fhret-Krohn Corp. v. Consolidated Bearings Co., 1991 U.S. Dist. LEXIS
1303 at *4-5 (NLD. Ill. 1991); Vibrant Sales, Inc. v. New Body Boutique, Inc., 105 F.R.D. 553,
(S.D.N.Y. 1985)(denying leave to amend complaint after remand from appellate court ); see also
RE.B., Inc. v. Ralston Purina Co., 525 F.2d 749 752 (10TM Cir. 1975)(permitting amendment
after remand only where the “effect of the amendments was to refine the demands”). In Zhret-
Krohn, for example, the plaintiff sought to amend its complaint to “clean up the pleadings.”
1991 U.S. Dist. LEXIS 1303 at *2. The proposed amendment, however, placed significance on a
matter irrelevant to the two claims that were remanded to the trial court. /d. The court ruled that
it would be unfair to allow the plaintiff to change the basis of his action after years of litigation.

Td. at *5.


when the amendment would cause undue delay in the final disposition of the case. A. Cherney

Disposal Co. v. Chicago and Suburban Refuse Disposal Corp., 68 F.R.D. 383, 385 (N.D. ii.
1976). The presence of any one of these factors provides a sufficient basis upon which to deny
leave to amend. /d. Together, they require it.

There can be no doubt that the addition of new allegations, causes of action, and fourtecn
new parties will cause delay in the disposition of the case and will require time-consuming and
expensive discovery. Merit Ins. Co. v. Colao, 1986 U.S, Dist. LEXIS 17363 at *16 (NLD. Il.
Nov. 24, 1986) (noting that the amendment sought to add an entirely new claim that would result
in expensive and time-consuming new discovery). By way of example only, Plaintiff's
Amended Complaint alleges additional uses of her image. While the Complaint made no
mention of such uses, the Amended Complaint alleges that her image was used in print-ads and
on at least one semi-truck. (Cf Amended Complaint ¥ 8 wich Complaint § 13). Moreover,
Plaintiff named nine “product retailers” and onc “product distributor” in the Amended
Complaint, whereas the original Complaint was directed only to “product line owners.”
(Amended Complaint J 22-75). The addition of product retailers will requite discovery into the
gcographic reach of their businesses to determine whether allegedly infringing uses of Plaintiff's
image took place in those markets and, if so, when. This could prove a significant task, as the
new defendants are national retailers with their principal places of business located throughout
the country. (Amended Complaint {fj 36-75 (identifying Arkansas, Connecticut, Idaho, Illinois,
Kansas, Minnesota, Ohio, Pennsylvania and Rhode Island)). Plaintiff's delay in filing her
Amended Complaint might serve to complicate the task even further, as witnesses and
documents may have been lost in the three years since Plaintiff first filed her Complaint.

Likewise, the addition of new parties which sold different products at different points in time


other things, injury done to real or personal property and also, civil actions not otherwise

provided for. Plaintiff alleges that Wella purchased the Ultra Sheen Supreme line and
brand from L’Oreal on or about December 2000. Plaintiff filed her complaint on March
20, 2002; which is clearly within the time frame mandated by the five year statute of
limitations applicable here,

B. COUNT II

Plaintiff argues that Defendants unfairly competed with “her right to control the use
of her likeness for commercial purposes in violation of the Lanham Trademark Act of
1946, 15 U.S.C, § 1125(a).” Section 43(a) of the Lanham Act “is an appropriate vehicle
for the assertion of claims of falsely implying the endorsement of a product or service by
areal person.” Waits v, Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992). Under Section
43(a) of the Lanham Act, a defendant may be liable for unfair competition if he makes
false representations concerning the origin, association or endorsement of goods or
services through the wrongful use of another’s distinctive mark, name, trade dress, or
other device (otherwise known as ‘false association’ or ‘false endorsement’), L.S. Heath
& Son, Inc. v. AT &T Information Sys., Inc., 9 F.3d 561, 575 (7th Cir. 1993). To prevail
on a claim under Section 43(a), Plaintiff must establish that the item for which she seeks
protection, namely her image, “has either acquired secondary meaning or is inherently
distinctive.” Door-Oliver, Inc. v, Fluid-Quip, Inc., 94 F.3d 376, 380 (7th Cir. 1996), See
also. Production Contractors, Inc. v. WGN Continental Broadcasting Co., 622 F.Supp.
1500, 1504 (N.D. Ill. 1985); McMahon v. City of Chicago, No. 98 C 8026, 1999 U.S.
Dist. LEXIS 7964, at *4, 8-9 (NLD. ILL. May 14, 1999). Moreover, the plaintiff alleging

unauthorized use of her likeness must show that her likeness was recognizable. Pesina v.



file her breach of contract claim. (See Minute Order dated April 21, 2003). These claims

“[c]annot be suddenly transformed into a proper claim for relief by simply restating [them].”
Merit Ins. Co., 1986 U.S. Dist. LEXIS 17363 at *14 (denying motion to amend count that was
substantially similar to count in original complaint, which was previously dismissed and not
challenged on appeal); Hester v. International Union of Operating Engineers, 941 F.2d 1574,
1578 (11 Cir. 1991) (affirming denial of amendment that attempted to resurrect previously
dismissed claim).

Plaintiff did not appeal the dismissal with prejudice of her Lanham Act claim,” or the
district court’s denial of leave to file her breach of contract claim, By failing to appeal these
rulings of the district court, Plaintiff has waived her claims, United States v. Husband, 312 F.3d
247, 250 (7 Cir, 2002) (“any issue that could have been but was not raised on appeal is waived
and thus not remanded”); International Marketing, Ltd. v. Archer-Daniels-Midland Co., 192
F.3d 724, 733 (7° Cir. 1999) (finding waiver of claims and noting “litigants gamble when they
ask a district court to dismiss live claims”); Robin v. ESPO Engineering Corp., 200 F.3d 1081,
1088 (7 Cir, 2000)(plaintiff’s “claim that he pursued before the district court was not raised in
his briefs submitted on appeal and, is thus abandoned”); Pelfresne v. Village of Williams Bay,
917 F.2d 1017, 1023 (7" Cir. 1991) (failure of a litigant to support an argument on appeal
“forfeits the point”); Lin v. Trustees of Indiana University, 297 F.3d $75, 581 (7" Cir. 2002)
(failure to argue claim on appeal waives that claim or series of claims), Beauchamp v. City of
Noblesville, Indiana, 320 F.3d 733, 742 (7th Cir. 2003) (by not advancing arguments in its

appeal, appellant abandons “all issucs” that may have been asserted below). Plaintiff has

2 It is of no moment that Plaintiff does not assert her Lanham Act claim against L’Oreal.
(Amended Complaint at p. 11). L’Oreal will nevertheless have to incur significant cost and expense
associated with discovery on Plaintiff's Lanham Act claim with respect to the other defendants.


EXHIBIT C



IN THE UNITED STATES DISTRICT COURT _
FOR THE NORTHERN DISTRICT OF ILLINOIS % 4 aw

EASTERN DIVISION
JUNE TONEY, } 4) y
Plaintiff, )
) No. 02 C 3002
v. ) “4,
) Hon. Ronald A. Guzman
L’OREAL USA, INC., THE WELLA ) is
CORPORATION, and WELLA PERSONAL | ) Magistrate Judge Tan H. Levin
CARE OF NORTH AMERICA, INC., i)
)
Defendants, )

DEFENDANT L’OREAL USA, INC.°8 MEMORANDUM IN SUPPORT OF ITS
MOTION TO STRIKE PLAINTIFF'S AMENDED COMPLAINT

The Amended Complaint filed by Ms. Toney far exceeds the scope of the amendment
Plaintiff proposed to this Court. Contrary to the representations of Plaintiff's counsel, the
Amended Complaint expands, rather than streamlines, the scope of the litigation. The Amended
Complaint asserts three new causes of action, one of which was previously dismissed with
prejudice and one of which Plaintiff was previously denied leave to file. The Amended
Complaint also asserts 58 new paragraphs of allegations against fourteen new defendants,
including two European corporations. Plaintilfs amendments convert a simple case asserting a
single cause of action against three defendants into a multifaceted dispute with numerous
defendants located across the country and around the globe. Yet, Plaintiff has alleged no new
evidence or explained any reason for the three-year delay in filing such a far-reaching

Complaint. Plaintiffs Amended Complaint should be stricken! as far beyond the scope of

' L’Oreal requests leave to file a responsive pleading to Plaintiffs Amended Complaint in the

event that its Motion to Strike is denied.



EXHIBIT A


cannot plead either the absence of an adcquate legal remedy, or the existence of a fiduciary

relationship between the parties.
CONCLUSION
Plaintiff's Amended Complaint should be stricken in its entirety because it goes well
beyond the leave to amend granted by this Court. The Amended Complaint must also be
stricken because of the undue prejudice to the defendants that would result and the futility of
permitting Plaintiff's “new” claims to proceed. Plaintiff waived two of the three “new” causes of
action, and failed to state a claim under the third. The Amended Complaint cannot survive.

DATED: September 19, 2005

Respectfully submitted,

L’OREAL USA, INC.

1

One of the Attorneys for Defendant,
L’Orcal USA, Inc.

John S. Letchinger (No. 6207361)

Joshua L. Smith (No. 6238128)

Melissa S. Skilken (No. 6270626)

WILDMAN, HARROLD, ALLEN & DLXON LLP
225 West Wacker Drive

Chicago, IL 60606-1229

(312) 201-2000

Facsimile: (312) 201-2555

11



Similarly, it would be unfair to permit Plaintiff in this matter to change the scope of the

litigation after years of litigation. Where, as here, a considerable amount of time has passed
between the filing of the complaint and the motion to amend, the burden is on the movant to
show “some valid reason for [her] neglect and delay.” Merit Ins. Co., 1986 U.S. Dist, LEXTS
17363 at *16 (denying leave to amend complaint on remand after appeal because plaintiff failed
to justify delay). Plaintiff can offer no reason for her delay in asserting claims that could have
been pled in the original complaint. For cxample, Plaintiff could have named Sprint as a
defendant in her original Complaint when she alleged the improper use of her image on a phone
card and attached a copy. (Complaint § 13, and Ex. 2), There is no justification for such a delay
where the facts were in plaintiff's possession long before she chose to amend. Plaintiffs
unexplained delay in filing her Amended Complaint provides another basis on which to strike the
Amended Complaint. Johnson, 10 F.3d at 1303; Villa v. City of Chicago, 924 F. 2d 629, 632 7
Cir. 1991). Plaintiff's Amended Complaint would unduly prejudice the defendants because of
the delay in filing, the addition of new parties and claims, and the expense and time that would
be required in discovery on those claims. Plaintiff's Amended Complaint should be stricken,

II. Plaintiffs Amended Complaint Is Futile.

Even if Plaintiff's Amended Complaint were timely filed and did not significantly expand
the scope of the litigation, it should be stricken for its fulility. Plaintiff has waived her nghts to
pursue claims based on breach of contract and under the Lanham Act and failed to state a claim
for an accounting in Count IV that could withstand a motion to dismiss.

A. Plaintiff Waived her Breach of Contract and Lanham Act Claims.

When this case was remanded by the Seventh Circuit, the only claim pending was

Plaintiff's claim under the Illinois Right of Publicity Act. Plaintiff's Lanham Act claim was

previously dismissed with prejudice by this Court, and Plaintiff was previously denied leave to


‘ONC 10

For the reasons set forth above, Defendants’ motion to dismiss is granted in part

and denied in part (#7-1, #9-1).

SO ORDERED. ENTERED: /of 3, Ga

Honorable Ronald A. Guzman
U.S. District Judge



Gase 1:02-cv-03002 Document 52 Filed 08/12/2005 Page 1 of 1

UNITED STATES DISTRICT COURT
FOR THE Northern District of Mlinois - CM/ECF LIVE, Ver 2.4
Eastern Division

June Toney
Plaintiff,

v. Case No.; 1:02-cv—03002
Hon. Ronald A. Guzman

L'Oreal USA, Inc., et al.
Defendant.

NOTIFICATION OF DOCKET ENTRY

This docket entry was made by the Clerk on Friday, August 12, 2005:

MINUTE entry before Judge Ronald A. Guzman :Status hearing held on
8/12/2005. Amended complaint to be filed on or before 9/2/2005. Defendants to answer or
otherwise plead on or before 9/19/05. Discovery ordered closed by 2/8/2006. Status
hearing set for 11/9/2005 at 09:30 AM.In court notice(cjg, )

ATTENTION: This notice is being sent pursuant to Rule 77(d) of the Federal Rules of
Civil Procedure or Rule 49(c) of the Federal Rules of Criminal Procedure. It was
generated by CM/ECF, the automated docketing system used to maintain the civil and
criminal dockets of this District, If a minute order or other document is enclosed, please
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For scheduled events, motion practices, recent opinions and other information, visit our
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her appeal. The Amended Complaint includes three additional claims for breach of contract

(Count ID), alleged violations of the Lanham Act (Count IL) and an action for an accounting
(Count LV).

ARGUMENT

1 Plaintiff's Amended Complaint Should Be Stricken Because It Exceeds The
Scope Of Plaintiff's Proposed Amendment.

Under the Federal Rules of Civil Procedure, failure to seck the required leave of court
when adding new allegations is grounds for striking the new allegations, Hellauer v. Nafco
Holding Co., LLC, 1998 U.S. Dist. LEXTS 12029 (E.D. Pa. July 28, 1998) (striking counterclaim
that was broader than proposed counterclaim and disapproving of such “overlitigation and legal
gamesmanship”). Indeed, sanctions may be entered against a plaintiff for filing an amended
complaint that goes beyond the scope of the leave originally sought by the plaintiff. Dover Steel
Co. v. Hartford Accident and Indemnity Co., 151 F.R.D. 570 (E.D. Pa. 1993) (imposing
sanctions against plaintiff for filing an amended complaint that went beyond the amendments the
court granted plaintiff leave to file). In the Dover case, the court held that “the addition of one
defendant, five new counts, and new legal theories far exceeded any reasonable construction of
the scope of such leave.” Jd. at 574. In finding plaintiff's conduct violative of Rule 11, the court
observed that “Dover’s counsel’s conduct in filing a complaint that was substantially different
than the one it proposed when it moved for leave to amend is objectively unreasonable.” Jd. at
375,

Here, Plaintiff represented to the Court that her changes were intended merely to clarify
the issues in her Complaint. (Trans. of Proceedings, to be provided). Plaintiff did not mention to
this Court that fourteen new defendants would be named, including two European corporations.

Nor did Plaintiff inform this Court that she would be filing three additional claims—two of


commercials, and runway shows, Complaint 42. A picture of Plaintiff appeared on the
package of a hair relaxer product called “Ultra Sheen Supreme.” Complaint 13, Exhs. 2-
5. Plaintiff authorized Johnson Products to use her likeness on the Uitra Sheen Supreme
relaxer product from November 1995 until November of 2000. /d at 2. In August
2000, L’Oreal acquired the Ultra Sheen Supreme ling of products from Carson Products
Company, which had previously acquired the Ultra Sheen Supreme line from Johnson
Products. Complaint 5. On or about December 2000, Wella purchased and assumed
control of the Ultra Sheen Supreme line and brand from L’Oreal. Complaint 410. As
alleged in the complaint, L’Oreal has not controlled the Ultra Sheen Supreme product
since the line and brand were sold in December 2000. fa. 410.

Plaintiff approved the use of her likeness in connection with the packaging and
promotion of the Ultra Sheen Supreme relaxer product through written authorization.
Complaint 411-12. The Purported agreement authorized a five year exclusive period
whereby Plaintiff would not allow her likeness to be used on any other relaxer product
packaging, and a similar one year period for national magazines. id Other uses of
Plaintiff's likeness were allowed and cnvisioned by the purported agreement, but the fee

payable to plaintiff was to be negotiated separately. fd. Plaintiff now alleges that

Defendants used her likeness in connection with the packaging and promotion of the

Ultra Sheen Supreme relaxer product beyond the period of time she gave authorization

for.

In ruling on a motion to dismiss, a court must presume ail of the well-pleaded

allegations of the complaint to be true. Mariee v. DeKalb County, 433 U.S. 25, 27 0.2


matter of copyright pursuant to Section 102. According to Section 101 of the Copyright

Act,a

work is “fixed” in a tangible medium of expression when its embodiment

in a copy or phonorecord, by or under the authority of the author, is

sufficiently permanent or stable to permit it to be perceived, reproduced or

otherwise communicated for a period of more than transitory duration.

A work is “fixed” ifa plaintiff has consented to it, Ahn v. Midway Manufacturing Co,
965 F.Supp. 1134, 1138 (N.D. Ill, 1997). In Baltimore Ortoles, Inc. v. Major League
Baseball Players Ass'n, the court held that the performances of baseball players were
“fixed” in tangible form because the performances were embodied in a Videotape copy
which could be communicated indefinitely, Glovarama, inc. v. The Zappa Family Trust,
No, 96 C 3985, 1998 U.S. Dist. LEXIS 2399, at *16 (N.D. Ill, Feb. 25, 1998), Likewise,
this Court also finds that plaintiff's likeness was “fixed” in tangible form, Plaintiff's
likeness was photographed under her authority. Plaintiff's likeness was embodied in a
photograph copy. Pilaintiff’s likeness was sufficiently permanent or stable to permit it to
be perceived, reproduced, or otherwise communicated indefinitely.

Plaintiff's publicity rights are equivalent to one of the tights specified in §106 of
the Copyright Act. Section 106 of the Copyright Act grants the owner of a copyright the
exclusive right to reproduce, distribute, display, perform and prepare derivatives of the
copyrighted work, 17 U.S.C. 106. The tight of publicity is equivalent to one of the tights
in section 106 because it is infringed by distributing or preparing distributive works.
Zappa, 1998 U.S, Dist. LEXIS 2399 at 17. See also, Ahn, 965 F. Supp. at 1138.
Furthermore, in Glovaroma v. Zappa, the district court held that the plaintiff's right to

publicity was equivalent to one of the rights in section 106 because it was infringed by



to close, Plaintiff filed a Motion to Amend her Complaint to substitute a breach of contract claim

for the Lanham Act claim asserted in Count I of her Complaint. (See Plaintiff's Motion to
Amend Complaint, or Altcmatively to Dismiss Count II). Alternatively, Plaintiff requested that
Count II of her Complaint be dismissed. (/d.) This Court entered an Order denying Plaintiff's
motion for leave to amend to add the breach of contract claim, but granting her request for
alternative relief. (See Minute Order dated April 1, 2003, attached as Exhibit C hereto). The
Court dismissed Plaintiffs Lanham Act claim with prejudice and entered judgment in favor of
Defendants. (/d.)

Plaintiff appealed to the United States Court of Appeals for the Seventh Circuit. The
only issue that plaintiff raised on appeal was whether the Copyright Act preempted the Illinois
Right of Publicity Act. (See Brief of Appellant, Statement of Issues, p, 8). On appeal, plaintiff
made no mention of, and did not refer to, the dismissal of her Lanham Act claim or the denial of
leave to file her breach of contract claim, (/d.) The Seventh Circuit eventually vacated the
dismissal of Plaintiff's Right of Publicity claim and remanded the case for further proceedings in
this Court.

At a status hearing before this Court on August 12, 2005, Plaintiff made an oral motion
for leave to amend her Complaint in order to clarify and streamline the issues in her Complaint.
(Transcript of Proceedings on Aug. 12, 2005 was ordered but not received. L’Oreal will
supplement as soon as the transcript is made available). Afler hearing the representations of
Plaintiff's counsel, the Court granted Plaintiff Icave to amend and entered a short discovery
schedule. (See Minutc Order dated August 12, 2005, attached as Exhibit D hereto). On August
22, 2005, Plaimtiff filed hor Amended Complaint, asserting four claims against seventeen

defendants. Count I of Plaintiff's complaint asserts the Right of Publicity Act claim at issue in


. . UN..aD STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

Michael W. Dobbins Office of the Clerk
CLERK

John Sheldon Letchinger
Wildman, Harrold, Allen & Dixon
2300

225 West Wacker Drive

Suite 2800

Chicago, IL 606606.1229

1:02-¢v-03002 Other Court No: 02 L 003446

Case Number:

Title: Toney v. L’Oreal USA Ine

Assigned Judge: Honorable Ronald A. Guzman

MINUTE ORDER of 4/1/03 by Hon. Ronald A. Guzman :
Plaintiff‘s motion ta amend complaint is denied [35-1].
Plaintitt’s alternative motion to dismiss count [1 is
granted and dismissal is with prejudice [35-2]. This is a
final and appealable order, terminating case. Mailed
notice

This docket entry was made by the Clerk on April 7, 2003

ATTENTION: This notice is being sent pursuant to Rule 77(d) of the
Federal Rules of Civil Procedure or Rule 49(c} of the Federal
Rules of Criminal Procedur It was generated by ICMS,
the automated docketing system used to maintain the civil and
eriminal dockets of this District. If a minute order or
other document is enclosed, please refer to ih for
additional information.

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amendment permitted by this Court, as posing undue prejudice to the defendants, and as a futile

attempt to state claims that Plaintiff cannot support.
BACKGROUND

In March, 2002, Plaintiff filed a Complaint asserting two claims against Defendants,
L'Oreal USA, Inc. (“L’Orcal”), The Wella Corporation, and Wella Personal Care of North
America, Inc. stemming from their alleged usc of her image on packaging and promotional
materials for Ultra Sheen Supreme, a hair relaxer product. Plaintiff's Complaint alleged that her
image was used on phone cards, magazines, posters, point of purchase materials and the Internet
beyond the terms outlined in the parties’ agreement. (Complaint 13). The purported
agreement attached to Plainti(i’s Complaint provided compensation to Plaintiff for use of her
image in the amount of $5,000. (Complaint, Ex. 1). Plaintiff asserted that the three defendants
violated the Illinois Right of Publicity Act and the Lanham Trademark Act.

L’Oreal moved to dismiss. The Court granted I.’Oreal’s motion with respect to the Right
of Publicity Act claim, but denicd the motion with respect to the Lanham Act claim, (See
October 30, 2002 Mem. Op. and Order, attached as Exhibit A hereto). Although the Court’s
opinion cast doubt on the viability of plaintiff's Lanham Act claim and observed the Complaint’s
“obvious deficiencies,” the Court nevertheless permitted Plaintiff to proceed with her claim,
reasoning that discovery would resolve the issue. (Jd. at 8-10).

Plaintiff filed a motion to reconsider the dismissal of her Right of Publicity Act claim,
which was denied. (See Plaintiff's Motion to Reconsider; Minute Order dated December 16,
2002, attached as Exhibit B hereto). The Court subsequently entered a discovery schedule and
the parties proceeded with discovery, including briefing on discovery motions. (See, e.g.,

Minute Order dated December 16, 2002). Roughly two weeks before discovery was scheduled



CERTIFICATE OF SERVICE

I, Melissa S. Skilken, an attorney, certify that on this 19" day of September, 2005, a true and
correct copy of the above and foregoing; Defendant L’Oreal USA Inc.’s Notice of Motion and Motion
to Strike Plaintiff's Amended Complaint and Memorandum in Support, was served upon the
following attorneys of record via Messenger delivery:

Thomas J. Westgard, Esq,
Attomey at Law

7009 North Glenwood Ave.
Chicago, TI. 60626

Daniel M. Feeney, Esq.
Miller Shakman & Hamilton
208 S. LaSalle St.

Suite 1100

Chicago, IL 60604

(Via U.S. Mail)

Robert H. Cohen
Beauty Enterprises, Inc.
150 Meadow Street
Hartford CT 06114

TY Ska

Melissa S. Skilken



‘Minute Order Poem (06/97)

7 United States District Court, Northern District of Llinois
‘Name of Assigned a ‘Stttlng Judge if Oth
vor Mapistrate jae Ronald A. Guzman nan uated Suage
CASE NUMBER 02 C 3002 DATE 10/30/2002
CASE JUNE TONEY vs. L'OREAL USA, INC. et al
TITLE
[athe following box (6) indicate the party filing the motion, e.g., plaintiff, detendawn, rd party plaintief, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
(1) o Filed motion of { use listing in “Motion” box above.]
(2) oO Brief in support of motion due :
Q) im Answer brief to motion duc + Reply to answer brief duc_
(4) Q Ruling/Hearing on set for at
(5) a Status hearing(held/continued to] (sct for/re-set for] on _ setfor at
(6) a Pretrial conference[held/continued ta] [set for/re-set forJon_____ set for ato.
{1) a Trial[set for/re-set for] on a.
(8) oOo [Bench/Jury trial} [Hcaring} held/continued to at
(9) a This case is dismissed [with/without] prejudice and without costs(by/agreement/pursuant to}
DFRCPA(m) Cl Local Rule 41.1 OFRCP41(a)1) O FRCP41{a)(2).
do @ [Other docket entry] ENTER MEMORANDUM OPINION AND ORDER: Defendants’ motion
to dismiss is granted in part and denied in part. {7-1 & 9-1).
(11) so {For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required.
Notices mailed by judge's staff.
Notified counsel by telephone.
a | Doeketing to mail notices. _
Mail AQ 450 form. Gana em ee C3
‘Copy to judgc/magistrate judge, a :
courtroom mui gy je eas
TOK deputy's QI ee
initials =
CoD‘. Dateline reetived in
central Clerk's Office



(1977). A court must view those allegations in the light most favorable to the plaintiff.
Gomez v. Illinois State Bd. Of Educ. 811 F.2d 1030, 1039 (7th Cir. 1987). Dismissal
under Federal Rules of Civil Procedure 12(b)(6) is proper only if it appears “beyond
doubt that the plaintiff can prove no set of facts in support of his claim which would
entitle him to relief.” Conley v. Gibson, 355 U.S. 41 » 45-46 (1957),
A, COUNT I

The Plaintiff argues that Defendants violated her publicity rights under the THiinois
Right of Publicity Act, 765 1LCS 1075/1 et seq. (“Publicity Act). The Publicity Act
allows an individual the “right to control and to choose whether and how to use an
individual's identity for commercial Purposes.” 765 ILCS 1075/L0. Furthermore, the
Publicity Act provides that “a person may not use an individual’s identity for commercial
purposes during the individual's lifetime without having obtained previous written
consent from the appropriate person. ..or their authorized representative.” 765 ILCS
1075/30, Section 301 of the Copyright Act expresses two conditions necessary to provide
copyright preemption of such publicity rights: (1)The work in which the right is asserted
must be fixed in tangible form and come within the subject matter of copyright as
specified in §102 of the Copyright Act; (2) The Tight must be equivalent to ane of the
rights specified in §106. Baltimore Orioles, Inc, v, Major League Baseball Players
Association, 805 F.2d 663, 674 (7th Cir, 1986); Brode, Jr. v. Tax Management, Inc., 14
U.S.P.Q.2d 1195, 1202 (N.D. lil. 1990). Defendants assert that both such conditions are
satisfied and therefore Plaintiff’ claim must be dismissed, This Court finds that the
Defendants are correct in their assertion.

Plaintiff's likeness was fixed ina tangible form and comes within the subject