                             In the
 United States Court of Appeals
               For the Seventh Circuit
                          ____________

No. 03-2184
JUNE TONEY,
                                               Plaintiff-Appellant,
                                 v.

L’OREAL U.S.A., INC., THE WELLA
CORPORATION, and WELLA PERSONAL
CARE OF NORTH AMERICA, INC.,
                                            Defendants-Appellees.

                          ____________
            Appeal from the United States District Court
       for the Northern District of Illinois, Eastern Division.
            No. 02 C 3002—Ronald A. Guzman, Judge.
                          ____________
   ARGUED APRIL 8, 2004—DECIDED SEPTEMBER 21, 2004
                     ____________



 Before KANNE, EVANS, and WILLIAMS, Circuit Judges.
 KANNE, Circuit Judge.


                        I. Background
  In November 1995, June Toney, a model who has ap-
peared in print advertisements, commercials, and runway
shows, authorized Johnson Products Company to use her
likeness on the packaging of a hair-relaxer product called
2                                                No. 03-2184

“Ultra Sheen Supreme” from November 1995 until November
2000. In addition, Toney authorized the use of her likeness
in national magazine advertisements for the relaxer from
November 1995 until November 1996. Additional uses (e.g.,
promotion of other products and/or for extended time
periods) were contemplated by the agreement, but, as spe-
cifically stated in the agreement, the particular terms for
any such uses were to be negotiated separately.
  In August 2000, L’Oreal U.S.A., Inc. acquired the Ultra
Sheen Supreme line of products from Carson Products com-
pany, which had previously acquired that same product line
from Johnson. Subsequently, in December 2000, The Wella
Corporation (“Wella”) purchased and assumed control of the
line and brand from L’Oreal.
  In her complaint filed in state court, Toney asserted that
L’Oreal, Wella, and Wella Personal Care of North America,
Inc. (collectively, “Defendants”) used her likeness in con-
nection with the packaging and promotion of the Ultra
Sheen Supreme relaxer product beyond the authorized time
period. Specifically, she claimed that the Defendants
thereby violated (1) her right to publicity in her likeness as
protected under the Illinois Right of Publicity Act, 765 Ill.
Comp. Stat. 1075/1, et seq. (2003) (“IRPA”), and (2) the
Lanham Trademark Act of 1946, 15 U.S.C. § 1125(a).
  The case was properly removed to federal district court on
the basis of federal question jurisdiction. Following the
Defendants’ motion to dismiss under Rule 12(b)(6) of the
Federal Rules of Civil Procedure, the district court found
that the IRPA-based claim met the conditions set out in
§ 301 of the Copyright Act (“Act”), 17 U.S.C. § 301, and was
therefore preempted. Toney later voluntarily dismissed her
Lanham Act claim with prejudice and the case was closed.
She now appeals the district court’s preemption determina-
tion. For the reasons stated herein, we affirm.
No. 03-2184                                                        3

                             II. Analysis
  The question presented by this appeal can be stated sim-
ply: is Toney’s claim, brought under the IRPA, preempted
by the Copyright Act? We review this legal question de novo,
as well as the district court’s ultimate decision to grant the
Defendants’ motion to dismiss. See Stevens v. Umsted, 131
F.3d 697, 700 (7th Cir. 1997).
  The IRPA allows an individual the “right to control and
to choose whether and how to use an individual’s identity
for commercial purposes.” 765 Ill. Comp. Stat. 1075/10.
Moreover, the IRPA 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 Ill. Comp. Stat. 1075/30.
  However, § 301 of the Copyright Act1 delineates two con-
ditions which, if met, require the preemption of a state-law
claim, such as one brought under the IRPA, in favor of the
rights and remedies available under the Act.2 First, “the


1
    Section 301(a) states:
      On and after January 1, 1978, all legal or equitable rights
      that are equivalent to any of the exclusive rights within the
      general scope of copyright as specified by section 106 in works
      of authorship that are fixed in tangible medium of expression
      and come within the subject matter of copyright as specified
      by sections 102 and 103 . . . are governed exclusively by this
      title. Thereafter, no person is entitled to any such right or
      equivalent right in any such work under the common law or
      statutes of any State.
2
  We note that even if a work is too minimal or lacking in orig-
inality to qualify for Federal copyright, so long as it meets the re-
quirements of § 301, states are nonetheless prevented from pro-
tecting the work. See Baltimore Orioles, Inc. v. Major League
                                                       (continued...)
4                                                      No. 03-2184

work in which the right is asserted must be fixed in tan-
gible form and come within the subject matter of copyright
as specified in § 102.” Baltimore Orioles, Inc. v. Major
League Baseball Players Ass’n, 805 F.2d 663, 674 (7th Cir.
1986). Second, “the right must be equivalent to any of the
rights specified in § 106.” Id.


    A. Section 102 condition
  Section 102 of the Act defines the subject matter of copy-
right as “original works of authorship fixed in any tangible
medium of expression,” such as “pictoral” works. 17 U.S.C.
§ 102(a). The Act’s definitional section, § 101, explains that
a work is “fixed” in a tangible medium of expression “when
its embodiment in a copy . . . is sufficiently permanent or
stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory dura-
tion.” 17 U.S.C. § 101. It cannot be disputed that Toney’s
likeness in photographic form is an original work and fixed
in tangible form (as no one photo of Toney is exactly like
another, aside from duplicates produced from negatives,
both of which are permanent and able to be perceived).
Section 101 also states that pictoral works include photo-
graphs. Id. Therefore, the photographs of Toney’s likeness
are the subject matter of copyright. See Baltimore Orioles,
805 F.3d at 674-76. The § 102 condition is met.
  Toney’s sole substantive argument on appeal is one never
previously offered: she asserts that her IRPA claim is ac-
tually directed at the Defendants’ use of her “identity,” as
compared to her likeness fixed in photographic form.



2
  (...continued)
Baseball Players Ass’n, 805 F.2d 663, 676 (7th Cir. 1986) (citing H.R.
Rep. No. 1476, 94th Cong., 2d Sess. 131, reprinted in U.S. Code
Cong. & Ad. News 5659, 5747) (“House Report”)).
No. 03-2184                                                    5

(Appellant’s Opening Br. at 19-21). But the word “identity”
appears nowhere in her complaint. See Harrell v. United
States, 13 F.3d 232, 236 (7th Cir. 1993) (“[A] plaintiff cannot
amend [her] complaint by a brief that [she] files in the . . .
court of appeals.”). Moreover, in her response to the Defen-
dants’ motion to dismiss before the district court, she
expressly stated that her claim “is narrowly directed to the
use of her likeness, captured in photograph or otherwise.”
(R. 13 at 4.) Because Toney did not argue in any pleading
before the district court that her “identity” could serve as a
basis for relief under the IRPA and/or to avoid preemption
under § 301 of the Copyright Act, she is barred from making
such an assertion now. Bell v. Duperrault, 367 F.3d 703,
708 n.1 (7th Cir. 2004) (citing Williams v. REP Corp., 302
F.3d 660, 666 (7th Cir. 2002) (“A party waives any argu-
ment that it does not raise before the district court . . . .”)).
   Since Toney’s appellate argument with respect to the
§ 102 condition has been waived, we will spend a brief
moment addressing the argument she advanced before the
district court (but omitted from her briefs to this court).
Specifically, in her memorandum opposing the Defendants’
motion to dismiss, she emphasized that her IRPA claim is
based upon her right of publicity in her likeness, as dis-
tinguished from her likeness in photographic form. (R.13 at
4.) However, this is contrary to our earlier Baltimore Orioles
decision, which held that the content of the right of pub-
licity (here, Toney’s likeness, in that case, the plaintiff-base-
ball players’ likenesses and performances in baseball
games) is within the subject matter of copyright. Baltimore
Orioles, 805 F.2d at 669 n.7, 674-76, cited generally in ProCD,
Inc. v. Zeidenberg, 86 F.3d 1447, 1453 (7th Cir. 1996); Nat’l
Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 848-49 (2d
Cir. 1997); 1 Melville B. Nimmer & David Nimmer, Nimmer
on Copyright § 2.09[F] (1999). For the purposes of a § 301
preemption analysis, Baltimore Orioles in essence obviated
the distinction between the content of publicity rights and
6                                                No. 03-2184

the artistic—and thus obviously copyrightable—product
resulting from the photographic (or filmic) recording of some-
one’s likeness (or performance). See Baltimore Orioles, 805
F.2d at 674-76; Nat’l Basketball Ass’n, 105 F.3d at 848-49
(“The Copyright Act should not be read to distinguish be-
tween [game broadcasts and the underlying games] when
analyzing the preemption of a misappropriation claim based
on copying or taking from the copyrightable work. . . .
Copyrightable material often contains uncopyrightable ele-
ments within it, but Section 301 preemption bars state law
misappropriation claims with respect to uncopyrightable as
well as copyrightable elements.”). But see 1 Nimmer,
§ 1.01[B][1][c] (criticizing Baltimore Orioles and stating that
just because a likeness is embodied in a copyrightable work,
such as a photograph or film, does not make the likeness itself
a work of authorship within the subject matter of copy-
right), quoted in Downing v. Abercrombie & Fitch, 265 F.3d
994, 1003-04 (9th Cir. 2001); Brown v. Ames, 201 F.3d 654,
658-59 (5th Cir. 2000).
  At this juncture, particularly given that Toney chose not
to bring a breach of contract action and did not anywhere
suggest that we should reconsider Baltimore Orioles (in fact,
as discussed below she quotes one particularly troublesome
passage of that decision and asks us to apply it), we decline
to do so. In light of Baltimore Orioles, we must treat Toney’s
IRPA claim as based upon her right to publicity in her like-
ness in photographic form, and, as we stated above, such is
within the subject matter of copyright and the § 102
condition is met.
  Avoiding the general holding of Baltimore Orioles we
summarized above, Toney narrowly focused on footnote 24
of the opinion. In it, the Baltimore Orioles court stated
(within the context of its broader discussion of the § 102
condition) that “[a] player’s right to publicity in his name or
likeness would not be preempted if a company, without the
consent of the player, used the player’s name to advertise
No. 03-2184                                                  7

its product.” Baltimore Orioles, 805 F.2d at 676 n.24.
Admittedly, a casual reading of that language does seem to
support Toney’s proposition that her likeness is not within
the subject matter of copyright, does not meet the § 102
condition, and that consequently, her IRPA claim should
not be preempted.
  Toney is mistaken. First, the very holding of Baltimore
Orioles belies Toney’s interpretation. As we explained above,
Baltimore Orioles held that the content of the right of
publicity (i.e., Toney’s likeness) is within the subject matter
of copyright. Second, the Baltimore Orioles court cited
Cepeda v. Swift & Co., 415 F.2d 1205, 1206 (8th Cir. 1969),
in support of the aforementioned proposition. Cepeda was
decided in 1969 and § 301 of the Copyright Act did not take
effect until January 1, 1978. Hence, only implied pre-
emption could have possibly been at issue in that case. But
Cepeda did not consider any preemption issue at all, im-
plied or otherwise. In fact, the Cepeda court construed the
right to publicity/privacy claims as a run-of-the-mill contract
dispute. Id. at 1206-07 (expressly stating that the sole issue
presented on appeal was whether the defendants breached
the terms of contract which authorized only limited use of the
plaintiff-athlete’s name and likeness). Therefore (and also
given that Toney does not advocate revisiting the overall
holding in Baltimore Orioles), we understand the Baltimore
Orioles court’s reading of Cepeda to mean only that a
common law contract action may or may not be preempted
(under § 301 or otherwise), and that a case-by-case preemp-
tion analysis is necessary. This interpretation is consistent
with our conclusions in the instant case.


  B. Section 106 condition
  Section 301 also requires a showing that the right to be
enforced (here, Toney’s right to publicity in her likeness in
photographic form) is “equivalent to any of the rights spe-
cified in § 106.” Baltimore Orioles, 805 F.2d at 674. The
8                                                     No. 03-2184

notes and commentary accompanying § 106 make it clear
that the section gives copyright holders five exclusive and
fundamental rights: reproduction, adaptation, publication,
performance, and display.3 17 U.S.C. § 106. A copyright is
violated or infringed when a party, other than the copyright
holder, exercises, without permission, one of these funda-
mental rights. A right defined under state law is equivalent
to one of the “bundle of rights” listed in § 106 if it is violated
by an act which, in and of itself, would also amount to
copyright infringement. Baltimore Orioles, 805 F.2d at 677.
Put differently, to avoid preemption, a state law must
regulate conduct qualitatively distinguishable from that
governed by federal copyright law—i.e., conduct other than


3
    Section 106 states:
      [T]he owner of copyright under this title has the exclu-
      sive rights to do and to authorize any of the following:
          (1) to reproduce the copyrighted work in copies or phon-
              orecords;
          (2) to prepare derivative works based upon the copy-
              righted work;
          (3) to distribute copies or phonorecords of the copyrighted
              work to the public by sale or other transfer of owner-
              ship, or by rental, lease, or lending;
          (4) in the case of literary, musical, dramatic, and choreo-
              graphic works, pantomimes, and motion pictures and
              other audiovisual works, to perform the copyrighted
              work publicly;
          (5) in the case of literary, musical, dramatic, and chore-
              ographic works, pantomimes, and pictorial, graphic,
              or sculptural works, including the individual images
              of a motion picture or other audiovisual work, to dis-
              play the copyrighted work publicly; and
          (6) in the case of sound recordings, to perform the copy-
              righted work publicly by means of a digital audio
              transmission.
No. 03-2184                                                9

reproduction, adaptation, publication, performance, and
display. Id. at 677-78 n.26; Trandes Corp. v. Guy F.
Atkinson Co., 996 F.2d 655, 659-60 (4th Cir. 1993) (citing
Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
195, 200-01 (2d Cir. 1983), rev’d on other grounds, 471 U.S.
539 (1985); 1 Nimmer § 1.01[B][1]).
  Some courts use an “elements test” to determine whether
the conduct regulated under the state law is different from
that specified in § 106—if the state law requires elements
beyond those necessary to prove copyright infringement,
then the state law is not preempted. Nat’l Basketball Ass’n,
105 F.3d at 850; Trandes, 996 F.2d at 659-60. But one
cannot simply call every word in a state statute (or other-
wise extracted from state common law) an “element” and
conclude that the statute includes “extra elements” and
should not be preempted. Rather, as we stated above, the
focus of a § 106 inquiry is whether the right protected under
the state law addresses conduct qualitatively different from
that which the Copyright Act speaks to. For example, both
contract law and the law of frauds address conduct—such
as breach and misrepresentation, respec-
tively—distinguishable from the conduct regulated under
the Copyright Act. Cf. House Report at 132, reprinted in
1976 U.S.C.C.A.N. at 5748 (unaffected by § 301 are causes
of action under common law, such as privacy, publicity,
trade secrets, and defamation and fraud, “that contain
elements such as invasion of privacy or a breach of trust or
confidentiality, that are different in kind from copyright
infringement.”).
  In this case, Toney’s right of publicity in her likeness in
photographic form protected under the IRPA is qualitatively
indistinguishable from the rights enumerated in § 106 of
the Copyright Act. Toney’s right to publicity prohibits the
unauthorized reproduction, adaptation, publication, or
display of her photos. But, Toney does not hold the copyright
10                                               No. 03-2184

in those photos—the photographer (and by agency law his
employer—here, the Carson Products Company) is the
copyright holder. See Baltimore Orioles, 805 F.2d at 667-73
(applying “works made for hire” doctrine of 17 U.S.C. §
201(b) to conclude that defendant baseball teams own the
copyright in telecasts of major league baseball games). And
because the exercise of the Carson Products Company’s
rights to reproduce, adapt, publish, or display the photos
would also infringe upon Toney’s right to publicity in her
likeness in photographic form, her publicity right is equiva-
lent to the rights encompassed by copyright listed in § 106.
See id. at 679. Regardless of who holds the copyright in her
photos, the bottom line is that no meaningful distinction
can be made between the publicity rights Toney seeks to
protect under the IRPA and the rights protected by copy-
right law.
  In closing, we emphasize that Toney has attempted to
obtain in this litigation that which could have been sought
through a breach of contract action. In light of our Baltimore
Orioles decision—which Toney does not challenge—we are
left only to speculate as to why such an action was not
brought against the Defendants, which would have most
likely avoided these copyright preemption issues.


                     III. Conclusion
  For the foregoing reasons we AFFIRM the district court’s
dismissal of Toney’s Illinois Right of Publicity Act claim.
No. 03-2184                                         11

A true Copy:
      Teste:

                    ________________________________
                    Clerk of the United States Court of
                      Appeals for the Seventh Circuit




               USCA-02-C-0072—9-21-04
