Ninth Circuit Holds That Copyright Preempts Right Of Publicity In Sound Recordings

Laws v. Sony Music Entertainment, Inc. (9th Cir. May 24, 2006)

A musician, Debra Laws, recorded the song “Very Special” for Elektra Asylum Records in 1981. The recording agreement gave “sole and exclusive right to copyright such master recordings” and “the exclusive worldwide right in perpetuity . . . to lease, license, convey or otherwise use or dispose of such master recordings” to Elektra. Further, Elektra agreed with Laws that “we shall not, without your prior written consent, utilize or authorize others to utilize the Masters in any so-called ‘audio-visual’ or ‘sight and sound’ devices intended primarily for home use,” and “we or our licensees shall not, without your prior written consent, sell records embodying the Masters hereunder for use as premiums or in connection with the sale, advertising or promotion of any other product or service.” In addition, Electra secured the right “to use and to permit others to use your name, the Artist’s name . . . likeness, other identification and biographical material concerning the Artist . . . in connection with such master recordings.”

In 2002, Elektra’s agent provided Sony Music Entertainment, Inc. (“Sony”) a non-exclusive license to sample “Very Special” in the song “All I Have.” “Sony subsequently released a Jennifer Lopez compact disc and music video incorporating brief samples of ‘Very Special’ into her recording of ‘All I Have.’” The album and the song were commercially successful, netting over forty million dollars.

In 2003, Laws brought an action under California law essentially invoking right of publicity claims against Sony under California’s common law and Civil Code § 3344. Sony removed the case to the Central District of California and won a summary judgment ruling that the Copyright Act preempts Laws’s claims. The Ninth Circuit reviewed the issue of preemption on appeal.

The Copyright Act, according to the Ninth Circuit, preempts the Copyright Act when the state law claim falls within the subject matter of copyright as described in 17 U.S.C. § 102 and, whenever such occurs, that “the rights asserted under state law are equivalent to the rights contained in 17 U.S.C. § 106.” In terms of subject matter, the Ninth Circuit distinguished Laws’ claim against other right of publicity cases regarding sound recordings. First, the Ninth Circuit recognized Sony had not utilized an imitation of Laws’s singing, but rather obtained a licensed use of the actual sound recording. This was not a case “where the licensing party obtained only a license to the [composition of the song] and then imitated the artist’s voice, here Sony obtained a license to use Laws’s recording itself.” Further, the dispute was “exclusively” based on Laws claim that her vocal performance was duplicated without her authorization. Consequently, the Ninth Circuit held that “it is clear that federal copyright law preempts a claim alleging misappropriation of one’s voice when the entirety of the allegedly misappropriated vocal performance is contained within a copyrighted medium.”

The Ninth Circuit also rejected the plaintiff’s reliance on two right of publicity cases for her support. The first, Downing v. Abercrombie & Fitch, involved a retailer who published a purchased photograph in an advertising campaign. While the plaintiffs won that dispute, the Ninth Circuit noted that it was not due to the use of the copyrighted image. Rather, Abercrombie’s advertising campaign, which identified the surfers by name within the photograph and offered for sale the same t-shirts that they were wearing, was seen as a suggestion that the surfers had endorsed Abercrombie’s merchandise. Since “[a] person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. § 102[,]” the Ninth Circuit concluded that the surfers’ right of publicity claims were not pre-empted.

The other case, Toney v. L’Oreal USA, Inc., involved a model who had posed for photographs. The defendants in Toney owned the copyright to the photographs and had agreed to use them only from November 1995 to November 2000, but they continued to use them. The Seventh Circuit upheld Toney’s right of publicity claim, but the Ninth did not see the case as applicable to Laws’s claim:

Toney brought her right of publicity claim against [the defendants], which at each point held the copyright and had agreed not to use Toney’s likeness after 2000. The facts of this case would be analogous to Toney if Laws had brought her right of publicity claim against Elektra, which holds the copyright to the song and may have agreed to the licensing limitations. We express no views on the correctness of Toney or its application to any claims against Elektra.

In effect, the Ninth Circuit interpreted Laws’s contentions as arguing “that her contractual reservation gives her an interest in the copyright and, concomitantly, renders Elektra’s copyright partially subject to her control.” While the appeals court was suggestive that the Laws’s and Elektra’s “contract[] around the actual use of the copyright” may provide support for a breach of contract claim, it saw no reason why this should alter its copyright pre-emption analysis.

Finally, the Ninth Circuit did not agree with Laws that the “commercial purpose,” which was required by the California right of publicity law in question, was an extra element beyond the exclusive rights of the copyright holder as required by the second part of copyright preemption analysis:

The mere presence of an additional element (“commercial use”) in section 3344 is not enough to distinguish Laws’s right of publicity claim from a claim in copyright. The extra element must transform the nature of the action. Although the elements of Laws’s state law claims may not be identical to the elements in a copyright action, the underlying nature of Laws’s state law claims is part and parcel of a copyright claim.

Holding: The judgment of the district court was affirmed