Illinois Federal Court Disagrees With Illinois State Court In Right Of Publicity Dispute
by Jerry Glover
August 27, 2013
An Illinois federal district court recently disagreed with an Illinois appellate court interpretation of the phrase “commercial use” as used in the Illinois Right of Publicity statute. Thompson v. Getty Images (US), Inc., 2013 WL 3321612 (N.D. Ill. July 1, 2013) (“Thompson”) rejecting Brown v. ACMI Pop Div., 735 Ill. App. 3d 276, 873 N.E.2d 954 (1st App. Dist. 2007) (“Brown”). In both cases, an individual complained about an online photo licensing service using his picture as part of the service’s catalog and claimed the photo’s use violated his right of publicity under Illinois law. 765 ILCS 1075/30.
Getty Images is a stock photo agency which for many years has sold licenses for images of people, places and things that are found on Getty’s website. Some images are labeled “for editorial use only” which means that anyone licensing those images cannot use of them for commercial purposes unless specific permission is obtained from the owner of the photograph’s copyright and from the person or people appearing in the photo. Getty makes this limitation known on its website.
Thompson, an Illinois resident, is the last surviving member of the R&B group, the Chi-Lites. He filed suit against Getty after discovering that Getty offered six images of Thompson on its website for editorial use only. Thompson filed a lawsuit in an Illinois trial court claiming this use violated the Illinois right of publicity statute. Getty transferred the case to federal court under that court’s diversity jurisdiction (i.e., the parties to the suit are residents of different states). Getty moved to dismiss the lawsuit claiming that Thompson had failed to state of cause of action under the statute.
The Illinois right of publicity statute prohibits the use of a person’s name, likeness and other identify for commercial purposes without that person’s written consent. The statute defines “commercial purpose” as the public use of someone’s identify “(i) on or in connection with the offering for sale or sales of a product, merchandise, goods or services; (ii) for purposes of advertising or promoting products, merchandise, goods or services or (iii) for the purpose of fundraising. 765t ILCS 1075/5. Thompson argued that the commercial purpose in this case was Getty’s offer to sell photos of Thompson. He also argued that Getty’s offering of Thompson’s photos might lead to the photos being used for commercial purposes by licensees who breached Getty’s editorial use only license agreement.
The district court disagreed with Thompson. The court noted that the statute’s commercial purpose clause does not prohibit the simple sale of photographs; the statute prohibits the use of a photograph of a person to promote a product other than the photograph itself. In essence, the court ruled that the sale of a photo was not promoting Getty’s business. The court also disagreed that his photos were made available by Getty for commercial purposes. The court noted that Thompson’s argument could lead to the absurd result of Getty being liable if a Getty licensee violated the editorial use limitation and licensed the photo to a third party for a commercial purpose. Getty cannot be liable, the court noted, if a licensee violates Getty’s license.
Finally, Thompson argued that this case was controlled by Brown, an Illinois appellate court decision, which held that photos of singer James Brown which were offered for license on a stock photo agency web site violated Brown’s right of publicity under Illinois law. The appellate court held that the display of Brown’s photo on the web site constituted an improper commercial use. Since the Thompson federal court was sitting in diversity it must apply the law of the state in which the federal court is located. It must determine what the state law is based on decisions of that state’s Supreme Court. In this case, the Illinois Supreme Court had not issued any ruling construing the “commercial purpose” provision of the Illinois statute. The court noted that intermediate appellate court decisions are not binding precedent for a federal court in diversity especially if the federal court believes the state appellate court had decided the issue pending before the federal court incorrectly.
The federal court stated that the Illinois appellate court decision was not persuasive since the state court had held that Corbis’ use of James Brown’s image was being used to sell the image and the photo agency’s business and was, therefore, sufficient to meet the commercial purpose provision. The federal court also believed that acceptance of the Brown holding would mean that Getty could not license any photo of a person without violating the right of publicity of that person even if the licensee merely kept the photo for personal use. That type of far reaching effect would chill Getty’s First Amendment right to sell photos.
NOTE: The Brown decision was considered controversial when it was decided. Although this federal court decision calls Brown into question, the state appellate court decision remains the law at least of Illinois’s First Appellate District. Whether that court’s construction of the Illinois right of publicity statute will remain “good law” will have to wait for another case to arise posing the same question which makes its all the way up to the Illinois Supreme Court.