                                                                             FOURTH DIVISION
                                                                             AUGUST 2, 2007




No. 1-06-0870


JAMES BROWN, THE NEW JAMES BROWN                             )       Appeal from the
ENTERPRISES, INC., and JESUS MUHAMMAD-ALI,                   )       Circuit Court of
                                                             )       Cook County.
       Plaintiffs-Appellees,                                 )
                                                             )
v.                                                           )
                                                             )
ACMI POP DIVISION, a Division of Conquest                    )
Operator Services Corporation,                               )
CONQUEST LONG DISTANCE, B&L LICENSE,                         )
INC., DOLLAR BILL WALLER, ZERO HOUR                          )
RECORDS, FRANK CICERO, d/b/a Globe Posters,                  )       Honorable
                                                             )       Allen S. Goldberg,
       Defendants-Appellants.                                )       Judge Presiding.


       PRESIDING JUSTICE CAMPBELL delivered the opinion of the court:

       This is an interlocutory appeal pursuant to Supreme Court Rule 308 (155 Ill. 2d R. 308).

Plaintiffs, singer and recording artist James Brown, The New James Brown Enterprises, Inc., and

Jesus Muhammad-Ali, filed a complaint against defendant, the Corbis Corporation (Corbis),1 a

company that licenses copyrights for stock photographs and images, seeking damages and other

relief in connection with Corbis's display of photographic images of James Brown on Corbis's

website. Corbis appeals from the trial court's denial of its motion to dismiss counts III and VI of

plaintiffs' amended complaint.




       1
           This appeal involves only Corbis.
1-06-0870


                  On March 22, the trial court certified the following questions for appeal pursuant

to Supreme Court Rule 308:

                  "1. Whether the circuit court erred in denying Corbis's motion to

                  dismiss counts III and VI under 735 ILCS 5/2-619 and in rejecting

                  Corbis's argument that the undisputed facts show that Corbis did

                  not use photographs of James Brown for an improper commercial

                  purpose under either the Illinois common law or the Illinois Right

                  of Publicity Act, 735 ILCS 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. Copyright Act does

                  not preempt the claims asserted by Plaintiffs in counts III and VI of

                  the amended complaint."

The Archive Council of America (ACA) filed an amicus curie brief in support of Corbis's

position.

       For the following reasons, we answer each of the certified questions in the negative,

affirm the judgement of the trial court, and remand this matter for further proceedings consistent

with this opinion.

                                              BACKGROUND

        The late James Brown was a professional singer and recording artist of international

renown.2 In October 2002, Brown filed a multicount complaint against, inter alia, Corbis,



       2
           Prior to oral arguments in this case, but after the filing of all parties' briefs, plaintiff

                                                       2
1-06-0870


alleging that Corbis infringed Brown's right of publicity through Corbis's unauthorized

commercial use of his image on the Internet. In counts III and VI, respectively, Brown alleged

that Corbis's Internet sale of photographs of Brown violates Brown's right of publicity under

common law and the Illinois Right of Publicity Act (735 ILCS 1075/1, et seq (West 2002))

(Publicity Act).3

       On January 13, 2003, Corbis filed a motion to dismiss counts III and VI of Brown's

complaint pursuant to sections 2-615 and 2-619 of the Illinois Code of Civil Procedure. (735

5/2-615, 619 (West 2002)). In support of its section 2-619 motion, Corbis submitted the affidavit

of its senior corporate counsel, Dave Green. Green testified that Corbis is in the business of

licensing copyrights for photographs and other artistic images. Corbis either owns the copyrights

to those images or is authorized to license the copyright to those images on behalf of

photographers and artists whom Corbis represents and to whom Corbis pays royalties. Corbis

displays a catalogue of over 2.1 million photographic images 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 are a very low resolution in order to prevent use of

the images by customers prior to the execution of copyright licenses.

       Green stated that Corbis's pricing for copyright licensing depends on the extent of the

customer's proposed use and that Corbis charges a newspaper with a greater circulation a higher




James Brown died.
       3
           Brown alleged that six other defendants used his voice and likeness for the sale or

promotion of merchandise such as phone cards and posters. No such allegations were made

against Corbis.

                                                   3
1-06-0870


fee for a copyright license than it charges a newspaper with a smaller circulation because of the

"more intensive" use of the copyrighted work.

       Green continued that Corbis never used images of Brown to sell or advertise any

"product, merchandise, goods, or services" as required for application of the Publicity Act nor

does Corbis sell images of Brown. Rather, Corbis only offers to license certain rights under

federal copyright law, subject to the terms and conditions stated in Corbis's site agreement and in

Corbis's licensing agreements.

       In addition, Corbis notifies users of its website that Corbis does not own or license rights

of publicity. The photographs of Brown at issue in this case are found in the "professional use"

section of Corbis's Web site and are designated as "rights managed" images, which contain

restrictions such as conditioning the licensee's right to use the images upon obtaining 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 III and VI

pursuant to section 2-615, but granted the motion pursuant to section 2-619. The trial court held

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 federal Copyright Act of 1976 (Copyright Act) (17

U.S.C.§ 101, et seq. (2000)), prevents any claim Brown might have based on his right of

publicity. The trial court held that Brown's right of publicity is equivalent to one of the rights

specified in section 106 of the Copyright Act and gives the copyright holder, Corbis, the sole

right to distribute images of Brown.



                                                  4
1-06-0870


       However, on July 23, 2004, upon Brown's motion for reconsideration, the trial court

completely reversed it's initial holding. The trial court, recognizing that it previously held that

Corbis was exempt from liability for violating Brown's right of publicity as a "vehicle of

information," determined that it had previously erred in applying the law, and reasoned that the

exception applied only if the images sold by Corbis are used for the purpose of disseminating

news or other public interest information. The trial court held that in light of the fact that Corbis

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

private or commercial users, Brown's right of publicity is at issue. The trial court further held

that Corbis may be liable either directly or indirectly of "turning a blind eye" to possible

copyright 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

reconsideration and certified the two questions noted above on appeal to this court.

                                             OPINION

                                       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, subsequent to the filing of the

parties' briefs but prior to oral arguments. This court queried the parties whether the plaintiffs

had filed or intended to file a suggestion of death with this court. Plaintiffs' attorneys indicated

that a suggestion-of-death filing would be made only in the trial court. Following oral

arguments, this court sua sponte invited the plaintiffs to provide information regarding the status

of the estate of James Brown and any change in representation that would impact our ability to

                                                  5
1-06-0870


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 of this court, along with the responses provided by the parties:

January 25, 2007:      At the outset of oral arguments, this court requests that plaintiffs file a

                       suggestion of death with this 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

                       personal representatives, Alfred H. Bradley, Albert H. Dallas and David

                       G. Cannon, as representatives of the Estate of James Brown. 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

                       suggestion of death; (3) any change in representation; and (4) any change

                       in the standing of the parties.

April 12, 2007:        This court issues a second order deeming plaintiff's motion filed Febru-

                       ary 2, 2007, insufficient 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) whether the designee or

                       representative desires leave to file an appeal brief; and (3) status as to the

                       party's authority to continue to prosecute the appeal or whether it is

                       necessary to substitute a party.

                                                  6
1-06-0870


May 15, 2007:           Plaintiffs file a status report. The report is signed by the three personal

                        representatives and indicates that all three representatives desire that the

                        appeal go forward. The representatives 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 report.

                        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 personal representatives.

June 1, 2007:           Defendant Corbis files a detailed response to plaintiffs' status report,

                        indicating that plaintiffs' omitted pertinent information from the report and

                        attaching several news articles from the Augusta (Georgia) Chronicle.4

June 27, 2007:          Plaintiffs file a motion to further supplement the May 15, 2007, status

                        report, including a document entitled "Authorization of Special Adminis-

                        trators," but without any caption indicating that it constitutes a formal

                        court filing, as well as a multiply-faxed copy of an attorney client

                        agreement purportedly signed by James Brown with the law firm of Gold

                        & Coulsen.




       4
           The Augusta Chronicle, Brown's hometown paper, continues to meticulously report on

the death of James Brown and the legal battles surrounding his estate.

                                                   7
1-06-0870


       The news articles from the Augusta (Georgia) Chronicle submitted by Corbis reported

that, in addition to three representatives, two additional individuals, Adele Pope and Bob

Buchman, were appointed as special 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. Bradley, Albert 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 representatives

and cotrustees of the James Brown Irrevocable Trust, later expressed their desire to substitute as

plaintiffs for James Brown, via an "Authorization of Special Administrators" authorizing Gold

& Coulson and Jay B. Ross to continue to represent 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 representatives provided the authorization of the personal administrators, it

remains unclear whether all of the necessary parties have filed appearances in this case. One of

the trusts created upon the death of James Brown, the "I Feel Good" Trust, reportedly has the

rights to Brown's music, likeness and image and is not named as a party plaintiff. The "I Feel

Good" Trust was apparently created by an irrevocable trust agreement signed August 1, 2000.

The three personal administrators seek to substitute as plaintiffs in their capacity as both personal

representatives of the Estate and as cotrustees of the James Brown Irrevocable Trust. However,

plaintiffs failed to submit to this court either the trust agreement or the order of the South

Carolina probate court appointing the special administrators.

                                                  8
1-06-0870


        Plaintiffs' responses, detailed above, while incomplete, do not appear to alter the posture

of the parties in terms of this court's ability to answer the questions certified to this court. This

court is not a finder of fact. Therefore, any issue regarding proper plaintiffs or their

representation is a matter that is best resolved in the trial court.

                                        II. Certified Questions

        This appeal is pursuant to Illinois Supreme Court Rule 308, which authorizes courts to

certify questions for interlocutory appeal. Section (a) provides in pertinent part:

                        "When the trial court, in making an interlocutory order not

                otherwise appealable, finds that the order involves a question of

                law as to which there is substantial ground for difference of

                opinion and that an immediate appeal from the order may

                materially advance the ultimate termination of the litigation, the

                court shall so state in writing, identifying the question of law

                involved. Such a statement may be made at the time of the entry of

                the order or thereafter on the court'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 resolution of the

interlocutory appeal. 155 Ill. 2d R. 308(e).

                                                   A.

        Initially, Corbis contends that the trial court erred in holding that its Web site display of

copyrighted images of James Brown constitutes a commercial purpose under the Publicity Act,

which codifies the common law right of publicity. We review questions of statutory



                                                    9
1-06-0870


interpretation de novo, as they present pure questions of law. Knauerhaze v. Nelson, 361 Ill.

App. 3d 538, 563-64, 836 N.E.2d 640 (2005).

       In counts III and VI of his complaint, Brown seeks damages and other relief for the Web

site display of his images on the Corbis Web site without his consent, even when Corbis's

customers do not use the photographs for a commercial purpose. Corbis argues that Brown's

allegations are premised on an unprecedented legal theory that a copyright for a photograph of an

individual cannot be licensed unless the publicity rights are obtained by the licensor, not the end

user, without regard to the ultimate use of the photograph.

       Count III alleges infringement on Brown's common law right and statutory right of

publicity. The Publicity Act, effective January 1, 1999, essentially codifies the common law

right of publicity and provides in pertinent part:

                        "The right to control and to choose whether and how to use

               an individual's identity for commercial purposes is recognized as

               each individual's right of publicity." 765 ILCS 1075/10 (West

               2002).

Corbis explains that the common law right of publicity is derived from the right to privacy. This

court first recognized that the common law right to privacy extended to a right of publicity in

Eick v. Perk Dog Food Co., 347 Ill. App. 293, 106 N.E.2d 742 (1952). The right of publicity is

"designed to protect a person from having his name or image used for commercial purposes

without consent." Dwyer v. American 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 upon

                                                 10
1-06-0870


first amendment rights and other important public interests. For example, in Leopold v. Levin,

45 Ill. 2d 434, 441, 259 N.E.2d 250, 254 (1970), our supreme court held that convicted murderer

Nathan Leopold of the infamous duo "Leopold and Loeb" failed to establish a violation of right

of publicity in a fictionalized account of his life in book and movie because his crime and

prosecution in 1924 "remain an American cause celèbre," and because of his "consequent and

continuing status as a public figure." Leopold, 45 Ill. 2d at 441. The court explained: " '[The

fact] [t]hat books, newspapers, and magazines are published and sold for profit does not prevent

them from being a form of expression whose liberty is safeguarded by the First Amendment. We

fail to see why operation for profit should have any different effect in the case of motion

pictures.'" Leopold, 45 Ill. 2d at 441-42, quoting Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495,

501-02, 96 L. Ed. 1098, 1106, 72 S. Ct. 777, 780 (1952). Corbis further cites Berkos v. National

Broadcasting Co., 161 Ill. App. 3d 476, 495, 515 N.E.2d 668, 679 (1987), as a case 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 NBC based on a

television news segment that reported on a federal criminal investigation known as "Operation

Greylord." The news reporters referred to the plaintiff in his judicial capacity and showed 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 trial court's finding

regarding the plaintiff's libel claim (Judge Jiganti dissenting), but affirmed the dismissal of

plaintiff's complaint for improper commercial use of his likeness. Citing Leopold, the court

found that Berkos' photograph in the broadcast was "part of a 'vehicle of information' such as the

news media." Berkos, 161 Ill. App. 3d at 495, citing Leopold, 45 Ill. 2d 434.



                                                 11
1-06-0870


       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 report

because Corbis sells the photos for commercial purposes as a merchandise or good, which is

prohibited by the Publicity Act:

                         " 'Commercial purpose' means the public use or holding out

                 of an individual's identity (i) on or in connection with the offering

                 for sale or sale of a product, merchandise, goods or services; (ii)

                 for purposes of advertising or promoting products, merchandise,

                 goods, or services *** ." 765 ILCS 1075/5 (West 2002).

In support, Brown cites Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 21

P.3d 797, 106 Cal. Rptr. 2d 130 (2001). There, the registered owner of all rights to the Three

Stooges sought damages and injunctive relief against an artist for violation of California's

publicity rights act based on the artist's sale of lithographs and T-shirts bearing the likenesses of

Moe, Curly and Larry reproduced from a charcoal drawing. The court held that the artist was

prohibited from depicting the Three Stooges "on or in products, merchandise, or goods" within

the meaning of the publicity rights statute without the consent of the registered owner. Comedy

III, 25 Cal. 4th at 395, 21 P.3d at 802, 106 Cal. Rptr. at 132 .5

       Corbis distinguishes Comedy III, arguing that that case dealt with tangible property, i.e.,

the display of the Three Stooges on T-shirts and lithographs. Corbis argues that it is not selling

tangible property but is only transferring a legal right created by the Copyright Act. Corbis



       5
           In its complaint, Brown notes that Corbis has licensing agreements with the registered

owners/estates of Marilyn Monroe and James Dean.

                                                   12
1-06-0870


quotes Comedy III: "[W]e agree with the Court of Appeal that Saderup sold more than just the

incorporeal likeness of The Three Stooges. Saderup's lithographic prints *** are themselves

tangible personal property, consisting of paper and ink, made as products to be sold and

displayed on walls like similar graphic art." Comedy 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 amendment: Brown

cannot require payment for the news media's use of his image. The Publicity Act specifically

exempts "use of an individual's identity for non-commercial purposes, including any news, public

affairs, or sports broadcast or account, or any political campaign." 765 ILCS 1075/35(b)(2)

(West 2002). By way of example, Corbis notes that it recently licensed several images of Brown

to Rolling Stone Magazine, which published a lengthy biographical news article about Brown.

Jonathan Lethem, Being James Brown, Rolling Stone, June 29, 2006, at 5, 55-64, 80-81. Corbis

argues that had it not been able to license these images of Brown, the news media would have

been impermissibly censored.

       The parties' arguments are 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 defined.

In this case of "apples v. oranges," Corbis argues that in displaying photographs of James Brown

on its Web site, it is not selling a product but rather offering to license the copyrights it holds on

the photographs. Corbis argues that any action by Brown for improper use of the photos by the

end user licensee lies against that end user and not Corbis.

       The amicus party, the industry group Archive Council of America (ACA), opines that

neither the Publicity Act nor the common law prohibits stock photo libraries and copyright

                                                  13
1-06-0870


owners from offering unreleased images to commercial users and cannot be liable for the action

of the end users: the failure of end users to obtain subsequent clearances in the use of an image

does not convert the licensor into an infringer. See Medic Alert Foundation United States, Inc.

v. Corel Corp., 43 F. Supp. 2d 933, 940 (N.D. Ill. 1999). ACA argues that 19 states have right-

of-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 copyrights violates a right of

publicity in and of itself: "Overprotecting 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 legitimate interests of other states." White v. Samsung Electronics America, Inc., 989

F.2d 1513, 1519 (9th Cir. 1993) (Kozinski, O' Scannlain, and Kleinfeld, J.J., dissenting from

denial of rehearing en banc); J. Thomas McCarthy, The Rights of Publicity and Privacy, §§6:3,

6:6 (2d ed. 2005). The ACA warns of the evanescence of public access to historic photographs.

       The trial court initially concluded that Corbis's "sale" of the licenses was noncommercial

and constituted a "service." However, in reversing itself, it concluded that Corbis was, in fact,

selling a "product" for profit and that since Brown received no compensation from any potential

unauthorized commercial use, his rights of publicity are violated.

       When proceeding under a section 2-619 motion, the movant concedes 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 refutes critical conclusions of law or conclusions of material, but unsupported fact.

The court must deny the motion if there is a material and genuine disputed question of fact. 735



                                                 14
1-06-0870


ILCS 5/2-619(c) (West 2002); Samansky v. Rush-Presbyterian-St. Luke's Medical Center, 208

Ill. App. 3d 377, 383, 567 N.E.2d 386 (1990).

        In light of the vast difference of opinion regarding the interpretation of the definition of

what Corbis sells and the legal effect of such sales, we cannot say that the facts are undisputed

that Corbis's display of the photos of James Brown on its Web site did not in some way constitute

an improper commercial use under either the Illinois common law or the Publicity Act. We

therefore cannot conclude that the trial court erred in denying Corbis's motion to dismiss.

        For this reason, we answer the first certified 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 copyright clause of the United States Constitution,

which provides that: "Congress shall have the Power * * * To promote the Progress of Science

and Useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to

their respective Writings and Discoveries." U.S. Const., art. I, §8, cl. 8. Corbis argues that it

merely exercises its rights to reproduce and publish Brown's images under the Copyright Act and

that any publicity rights held by Brown are preempted by the Copyright Act. Corbis explains that

the trial court's ruling allows Illinois to regulate the subject matter of copyright and to limit or

even eliminate the exclusive rights granted to copyright holders under section 106 of the

Copyright Act.

        Section 301 of the Copyright Act outlines two conditions which, if met, require the

preemption of a state-law claim in favor of the rights and remedies available under federal law.

Section 301(a) states:



                                                  15
1-06-0870


                       "On or 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 a tangible medium of expression and

               come within the subject matter of copyright as specified by

               section[] 102 *** are governed exclusively by the 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." 17

               U.S.C. § 301(a) (2000).

       In making its determination, the trial court framed this case as one of first impression and

relied on Toney v. L'Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005). There, a model consented to

the use of her photograph for a limited time in connection with the packaging of a hair care.

However, when a successor company later used her photograph without her permission, Toney

filed an action under the Publicity Act alleging that her right of publicity had been violated. The

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 but, rather, the "persona of the plaintiff as a human being." 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 rights protected by the Publicity Act are not "equivalent" to any of the exclusive rights within

the general scope of section 106 of the Copyright Act. Toney, 406 F.3d at 909. Thus, Toney's

identity was not protected by copyright law and the state law protecting her rights was not

preempted.



                                                 16
1-06-0870


       Corbis, however, asserts that the subject matter of Brown's Publicity Act claims--the

offering to license and the actual licensing of copyrights to photos of James Brown--does in fact

fall within the subject matter of copyright. In support, Corbis relies on Laws 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 compact disc (CD) and music video featuring another artist.

Sony earned substantial revenue from the sales of the CD and video without obtaining Laws'

consent to use the recording. Law brought the action alleging that Sony's use of the sample

recording violated her statutory and common law rights of publicity under California law. Laws,

448 F.3d at 1138. In response, Sony argued that Laws' specific claims could not be distinguished

because Laws' right of publicity was based solely on her voice "embodied within a copyrighted

sound recording." Laws, 448 F.3d at 1139.

       The Ninth Circuit found in favor of Sony, holding that the two rights, the copyright and

Laws' right of publicity, could not be separated. The Ninth Circuit distinguished Toney, noting

that in that case, the plaintiff claimed misappropriation of her identity separate and apart from

any copyrighted work. Laws, 448 F.3d at 1142.

       Corbis compares the present case to Laws and distinguishes it from Toney arguing that

Brown's likeness does not extend beyond the use of the copyrighted photos themselves. In

Toney, the defendant used a copyrighted photo to endorse a product. By contrast, Corbis is using

a copyrighted photo to distribute a license. Corbis argues that Brown has not asserted a right of

publicity claim separate from the enumerated rights under section 106 of the Copyright Act and

that his claim is a direct challenge to Corbis's right to control the distribution and display of the

copyrighted images.

                                                  17
1-06-0870


       Brown responds that Corbis argues a distinction without a difference. Brown argues that

the images of James Brown advertised for sale on Corbis's Web site do, in fact, constitute fixed

work on the Internet in that the "licenses" result in a tangible photograph to the end user. Brown

distinguishes Laws, noting that there, the plaintiff had contractually released control and

copyright of her recording to Sony. Laws, 448 F.3d at 1136. By contrast, Brown never

consented to any sale of his photographs and never possessed control of a copyright interest to

release.

       Under the circumstances, where it is possible that the photos as displayed on Corbis's

Internet Web page can be interpreted as tangible, the Publicity Act as applied here would not

preempt copyrights. As such, we answer the second question certified to this court in the

negative.

       In conclusion, we answer the trial court's certified questions in the negative and hold that

(1) the trial court did not err in denying Corbis's motion to dismiss counts III and VI of plaintiffs'

complaint under the Publicity Act; and (2) the United States Copyright Act does not preempt

plaintiffs' claims. We therefore affirm the orders of the trial court and remand this matter for

further proceedings consistent with this opinion.

       Affirmed.

       QUINN, P.J., and MURPHY, J., concur.




                                                  18
