
    Dean LETO and Rhonda J. Leto, Plaintiffs, v. RCA CORPORATION (now known as Thomson Inc.), Wal-Mart Stores, Inc., and Sears, Roebuck and Co., Defendants.
    No. 04 C 4514.
    United States District Court, N.D. Illinois, Eastern Division.
    Oct. 25, 2004.
    
      Donald L. Johnson, Johnson Law Firm, Joseph Thomas Gentleman, Attorney at Law, Chicago, IL, for Plaintiffs.
    Peter Charles McCabe, III, Danielle A.R. Coffman, Winston & Strawn LLP, Chicago, IL, for Defendants.
   MEMORANDUM OPINION AND ORDER

MORAN, Senior District Judge.

Defendants, RCA Corporation, Wal-Mart Stores, Inc., and Sears, Roebuck and Co., brought this motion to reconsider the court’s Memorandum Opinion and Order dated September 27, 2004, granting Dean and Rhonda Leto’s motion to remand. Defendants argue that the court made an error of law in remanding the case. This assertion appears to be based on a misreading of our opinion, and so we will further explain our ruling.

As stated in our prior opinion, under the well-pleaded complaint rule a state law action can only be removed to federal court if Congress expressly allows it or a federal statute entirely displaces the state law cause of action through complete preemption. See Beneficial National Bank v. Anderson, 539 U.S. 1, 8, 123 S.Ct. 2058, 156 L.Ed.2d 1 (2003). Defendants removed plaintiffs’ state law action, which alleged right of publicity claims, on the basis that the Copyright Act completely preempted plaintiffs’ claims. Neither the Supreme Court nor the Seventh Circuit has addressed the question of whether the Copyright Act completely preempts right of publicity claims. The Supreme Court has found only three categories of state law actions that are completely preempted by federal law — actions that fall under the Labor Management Relations Act, 29 U.S.C. § 185, the Employee Retirement Income Security Act of 1974, 29 U.S.C. § 1001 et seq., and the National Bank Act, 12 U.S.C. §§ 85, 86. See Avco Corp. v. Aero Lodge No. 735, Machinists, 390 U.S. 557, 88 S.Ct. 1235, 20 L.Ed.2d 126 (1968); Metropolitan Life Ins. Co. v. Taylor, 481 U.S. 58, 107 S.Ct. 1542, 95 L.Ed.2d 55 (1987); Beneficial National Bank, 539 U.S. at 10-11, 123 S.Ct. 2058.

The Supreme Court addressed complete preemption by federal law most recently in Beneficial National Bank. In that case the Court held the National Bank Act completely preempts state law usury claims against national banks. It based its decision on prior interpretation of the National Bank Act (“[T]he various provisions of §§ 85 and 86 ‘form a system of regulations ... [a]ll the parts [of which] are in harmony with each other and cover the entire subject,’ ”), the language of the Act (“ ‘[i]n any view that can be taken of [§ 86], the power to supplement it by State legislation is conferred neither expressly nor by implication’ ”), and the nature of federally-chartered banks (“Uniform rules limiting the liability of national banks and prescribing exclusive remedies for their overcharges are an integral part of a banking system that needed protection from ‘possible unfriendly State legislation.’ ”). Beneficial National Bank, 539 U.S. at 10-11, 123 S.Ct. 2058. Analogous circumstances do not support a finding that the Copyright Act completely preempts all state law right of publicity claims.

Courts have repeatedly stressed the extraordinary nature of complete preemption and its limited applicability. See e.g., Caterpillar Inc. v. Williams, 482 U.S. 386, 393, 399, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987)(“On occasion, the Court has concluded that the pre-emptive force of a statute is so ‘extraordinary’ that it ‘converts an ordinary state common-law complaint into one stating a federal claim .... ’ But a defendant cannot, merely by injecting a federal question into an action that asserts what is plainly a state-law claim, transform the action into one arising under federal law, thereby selecting the forum in which the claim shall be litigated.”); Adkins v. Illinois Central Railroad Co., 326 F.3d 828, 835 (7th Cir.2003)(“The discussions in our recent decisions ... and the Supreme Court’s latest word on the question ... underscore how narrow the ill-named ‘complete preemption’ doctrine is.”); Vorhees v. Naper Aero Club, Inc., 272 F.3d 398, 403 (7th Cir.2001)(“While these arguments set forth a strong case for federal preemption, they do not answer the more subtle question of whether we are dealing with so-called ‘complete preemption’ or its more ordinary cousin, ‘conflict preemption.” ’). Preemption is not complete preemption, and, therefore, rulings that establish federal preemption as a defense to certain state law claims do not establish federal preemption as a basis for removal from state court. See Adkins, 326 F.3d at 835.

Defendants rely on the Seventh Circuit’s recent decision in Toney v. L’Oreal, 384 F.3d 486 (7th Cir.2004), to justify the removal of plaintiffs’ actions. Yet, Toney does not hold that the Copyright Act completely preempts right of publicity claims. Complete preemption is not an issue in Toney because the case was removed to federal court on the basis of the plaintiffs Lanham Act claim, which provided federal question jurisdiction. Id. at 488. Toney merely reaffirms that, the Copyright Act serves as a defense to certain right of publicity claims. Id. at 492. The plaintiff in Toney acknowledged in her complaint that the defendants held a valid copyright in photographs of her because she had authorized the use of her likeness in an advertising campaign. Her claim was that defendants had used the photographs beyond the terms of their contract. Under these circumstances, the court found that plaintiffs right of publicity claim was preempted by the Copyright Act, noting that a proper claim would have been for breach of contract. Lacking any precedent from the Supreme Court or Seventh Circuit for the complete preemption of right of publicity claims by the Copyright Act, we declined to find that the Leto action was completely preempted and remanded their case to the state court.

Our prior opinion recognized that the Court of Appeals for the Second Circuit had reached a contrary conclusion regarding complete preemption by the Copyright Act. In Briarpatch Limited v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir.2004), the court found that “the district courts have jurisdiction over state law claims preempted by the Copyright Act.” 373 F.3d at 305. Under Bñarpatch Limited, preemption by the Copyright Act was no longer just a defense to state law claims to be determined by state courts, but was now equivalent to complete preemption, justifying removal of the action to federal courts. As we explained, even if we accepted the Second Circuit’s reasoning, the Leto action would still be remanded. According to Bñarpatch Limited, a state law claim is completely preempted by the Copyright Act when both conditions for preemption under the Act apply to the claim. Id. at 305. These conditions are: 1) the work giving rise to the claim falls within the subject matter of copyright, and 2) the rights protected by the state law claim are equivalent to one of the rights protected by the copyright law. 17 U.S.C. § 301.

Defendants argue that we erred in finding that the work giving rise to the Leto claims did not fall within the subject matter of copyright. When determining whether the Copyright Act preempts right of publicity claims, courts have applied the language of the Act to the concepts of state law right of publicity claims, leading to quasi-metaphysical analysis. Courts have repeatedly identified the “work” giving rise to a right of publicity claim as the plaintiffs persona. See e.g., Baltimore Orioles, Inc. v. Major League Baseball Players Association, 805 F.2d 663, 678 n. 26 (7th Cir.1986); Brown v. Ames, 201 F.3d 654, 658 (5th cir.2000). Persona appears to serve as a catch-all term encompassing various types of “work” plaintiffs seek to protect with right of publicity claims, from a performance, as in Baltimore Oñoles, to a likeness, as in Toney.

The Seventh Circuit has found that once a persona has been “fixed” in a tangible form, such as a photograph, it can fall within the scope of copyright. Baltimore Orioles, Inc., 805 F.2d at 678 n. 26. Other circuits disagree, holding that a persona does not become copyrightable even if it is depicted in a form which is copyrightable. See Brown v. Ames, 201 F.3d 654, 658 (5th Cir.2000); Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-04 (9th Cir.2001). Regardless, the Seventh Circuit has stated that a persona does not automatically fall within the scope of copyright just because it has been captured in a tangible form. In Baltimore Orioles, the Seventh Circuit explained that in order for the work at issue in a right-of-publicity claim to be fixed, the plaintiff must authorize its placement in tangible form. The court used the facts from Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977), to illustrate the point.

Take the ease of Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977), in which Hugo Zacchini sued a television station for violating his right of publicity by broadcasting the entirety of his human cannonball act. Zacchini was decided before § 301(a) became effective, but let us suppose that the same case arises again today. Assuming that Zac-chini did not videotape or otherwise record his performance, his human cannonball act would not be fixed in tangible form and could not be copyrighted. Nonetheless, because the work in which he asserts rights would not be fixed in a tangible medium of expression, his right of publicity in his performance would not be subject to preemption. Thus, if a television station were to broadcast his act, he still could sue successfully for violation of his right of publicity in his performance. Merely that the television station might videotape its telecast would not grant the station a copyright in the broadcast of Zacchini’s performance or preempt Zacchini’s right of publicity. To be “fixed” in tangible form, a work must be recorded “by or under the authority of the author,” here Zacchini. See 17 U.S.C. § 101 (definition of “fixed”). Because Zacchini did not consent to the telecast, the broadcast could not be “fixed” for the purpose of copy-rightability and Zacchini’s right of publicity would not be subject to preemption.

Baltimore Orioles, 805 F.2d at 675-76 n. 22.

Thus, for Zacchini’s work — his cannonball act — to be fixed, he needed to give authority for it to be recorded. The Seventh Circuit is not concerned with the authority of the cameraman who recorded the act on videotape or the television station that aired the tape. The court is focused on the authority of Zacchini, the author of the cannonball act.

The district court opinion in Toney v. L’Oreal USA, Inc., 2002 WL 31455975 (N.D.Ill.2002) aff'd 384 F.3d 486 (7th Cir.2004), a case heavily relied upon by defendants, also addressed this issue. As with the Letos, the plaintiff in Toney complained'of her likeness, as captured in a photograph, being used for purposes beyond her consent. 2002 WL 31455975 at *1. In its analysis of whether the plaintiffs right-of-publicity claim was preempted by the Copyright Act, the court determined that the plaintiffs likeness was fixed for purposes of copyright because she “was photographed under her authority.” Id. at *2. In Toney, the plaintiff was a model who authorized the embodiment of her likeness in the photograph; her complaint alleged that the photograph was later used beyond the terms of her agreement. Id. at *1. The Toney court’s analysis of whether the relevant work was fixed for purposes of copyright had nothing to do with the authority of the photographer who took the pictures of the plaintiff. Rather, it hinged on whether the plaintiff gave her consent to be photographed. As noted in our prior opinion, the Seventh Circuit’s decision did not address this issue because the parties did not raise an argument on appeal regarding the lower court’s finding. Toney, 384 F.3d at 489.

Just as Zacchini’s act would not be fixed without his authority to record it (regardless of whether the television station videotaped it without authority), the Letos’ personas are not fixed for the purpose of copyright preemption unless they gave the authority for their likenesses to be recorded in tangible form. Unlike To-ney, there is no evidence the Letos were photographed with their authority. Moreover, they do not claim any ownership rights in the photograph. Thus, even under the reasoning of Briarpatch Limited, plaintiffs’ claims are not completely preempted, leaving it for the state court to determine whether defendants’ preemption defense applies. See Kings Choice Neckwear, Inc. v. DHL Airways, Inc., 2003 WL 22283814 at *2 (S.D.N.Y.2003)(“[A]s a general matter, where there is no diversity jurisdiction, it is for a state court to decide whether federal law provides a defenfee to state-law claims by preempting those claims.”).

CONCLUSION

For the foregoing reasons, defendants’ motion to reconsider is denied. We will defer ruling on plaintiffs’ alternative motion for § 1292(b) certification until plaintiffs have had an opportunity to respond, which they should do by November 3, 2004. 
      
      . Even if the plaintiff in Toney had not pleaded a Lanham Act claim and the Seventh Circuit had allowed removal on the basis of copyright preemption, it is not clear that the ruling would justify removal in the Leto case. In Toney, the plaintiff states in her complaint that she consented to the photographs and, thus, there is a valid copyright. Plaintiff’s own pleading establishes that the Copyright Act applies. Unlike the complaint in Toney, the Leto complaint alleges that they did not consent to be photographed and, therefore, under the allegation of the complaint the defendants could not hold a valid copyright.
     
      
      . It is important to note that even if defendants were correct, this would not call into question our holding, which is based on the finding that the Copyright Act does not completely preempt state law right of publicity claims.
     