Marshall Thompson v. Getty Images: Determining a “Commercial Purpose”

etty Images successfully defeated a claim by Marshall Thompson, singer and sole living member of the “Chi-Lite”, alleging that the online posting of his photo for possible licensing, was a violation of his right of publicity under Illinois Right of Publicity Act (IRPA), despite a contrary ruling (in a factually similar case) in Illinois in 2007.

Right of publicity laws, unlike federal copyright law, vary from state to state. Some states publicity/privacy law is based on common law (cases) solely, others have enacted statutes. State laws are not consistently drafted, nor interpreted. IRPA “prohibits the use of an individual’s identity for commercial purposes without his written consent.” At issue is whether or not there has been a “commercial purpose” requiring consent. In general, uses which are considered “editorial” in nature, used to illustrate a subject of newsworthy or social interest, do not require consent of the subject depicted, or a model release. Images used for advertising or commercial purposes, however, require releases of the subjects depicted. This practice is consistent with the First Amendment which favors freedom of expression over privacy, and what is considered a commercial purpose under state law should be interpreted in a manner that avoids running afoul of the First amendment and chilling speech.

IRPA defines a commercial purpose as ‘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; or (iii) for the purpose of fundraising.” Thompson asserted that under IRPA Getty Images “used his photos to promote the sale of a product, i.e., his photos,” and “Getty [Images] conduct made his photos available for commercial use.”

The court examined the manner in which Getty Images offered images for licensing to determine if its practice violated Illinois law. It noted that Getty Images posts low-resolution, watermarked images online, to enable users to easily determine which images they may want to license. Getty Images then charges users a license fee. Images without model release are identified for “editorial use[s] only.”

The court held that the display of images is not a commercial purpose, as the “statute’s commercial purpose requirement does not prohibit the mere sale of someone’s photograph. Rather, the IRPA prohibits the use of an individual’s image to promote or entice the purchase of some other product than the photograph itself.” Here, there is no “other product” besides the photograph itself. “Getty Images does not use Thompson’s photographs in connection with an offer to sell or a sale of some other product, merchandise, good, or service as contemplated by the statute.” The only “product” being sold, is the license to use that particular photograph. In its discussion of IRPA, the Illinois House of Representatives provided some examples of the type of commercial uses that the IRPA was designed to cover, including “the unauthorized use of an individual’s picture on the back of a … bus indicating that he endorsed a particular kind of hair tonic and an ad by a food establishment stating that its cheeseburger was endorsed by the Speaker of the House.”

The court also rejected Thompson’s argument that Getty Images should be held liable for any unauthorized commercial use by its customers, “as it would extend liability too far and chill speech protected by the First Amendment.” The court noted that Getty had no knowledge of its customers’ impermissible uses. If Getty Images licenses a photo to Customer A for editorial use, and Customer A impermissibly licenses the image to be used on a coffee mug, Getty Images would not be held liable.

Importantly, the court declined to follow the state appellate court’s 2007 ruling in Brown v. ACMI Pop Div.,). In that case, James Brown sued Corbis alleging that the offering of images for license on the internet violated his rights of publicity under IRPA. The court initially found Corbis conduct noncommercial but later reversed itself and concluded that Corbis was using Brown’s image to sell a “product” (the photo) and that was sufficient under IRPA. Here, the district court believed that the reasoning used by the state court “contradicts the plain language and purpose of the statute as interpreted by this Circuit’s case law and informed by legislative history.” The broad reading of IRPA, under Brown, according to this court, would “extend liability too far.” In other words, the “product” must be something other than the photo itself.

Conclusion

This decision reverses one of the most troubling state court decisions involving an interpretation of state publicity law, and the difficulty state courts have in determining what is a “commercial purpose” under state right of publicity statutes. Although the Supreme Court of the US has said that a profit motive does not remove First Amendment protection, the fact that a license fee is earned from the sale of an image used for editorial purposes, continues to confuse some courts. As the business of licensing images today requires the display of images online, it is critical that courts understand the distinction between a commercial use by an end user and merely previewing images for possible image licensing and do not convert an entire business model into state law publicity violation. Otherwise, media outlets that depend on image licensing for content will ultimately be deprived of sources in such states.