By: April Hiroshima Gatling
Last Wednesday, the Ninth Circuit issued an opinion addressing the interplay between the state statutory right of publicity and the Copyright Act, 17 U.S.C. �� 101-1332. In Laws v. Sony Music Entertainment, Inc., the Ninth Circuit ruled that the state law “right of publicity” claim of a recording artist who gave her record company the sole and exclusive copyright to a song recording, was preempted by the Copyright Act.
Plaintiff Debra Laws is a composer and recording artist. She had a contract with Elektra/Asylum Records in which she transferred many rights including the right to use and to permit others to use her name, likeness, etc. in connection with the master recordings of her original song, “Very Special.” In November 2002, Elektra’s agent entered into an agreement with Sony Music Entertainment to grant Sony a non-exclusive license to use a sample of Laws’s “Very Special” recording in the song “All I Have,” performed by recording artists Jennifer Lopez and L.L. Cool J. “All I Have” was nationwide hit and at one time, was the number one song in the country.
In her lawsuit, Laws sought injunctive and monetary relief against Sony in response to its use of her recording without compensating her and without her authorization. The appellate court concluded that Laws’s state law claim of misappropriation as “right of publicity” of the master recordings of “Very Special” fell plainly within the subject matter of the Copyright Act and was thereby preempted by it. Under the Copyright Act, copyright protection is granted to “original works of authorship fixed in any tangible medium of expression . . . from which they can be . . . reproduced . . . either directly or with the aid of a machine or device.” 17 U.S.C. �� 102(a).
There is no question that appropriation of someone’s voice can give rise to a publicity claim. In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), an advertising agency hired a professional “sound alike” imitator of Bette Midler’s voice in a commercial when Midler rejected its offer. The Ninth Circuit held that Midler’s common law misappropriation claim was not preempted by copyright law because the “thing” misappropriated, her voice, was not copyrightable. However, the court ruled this case closer to Sinatra v. Goodyear Tire & Rubber Co., 978 F.2d 1093 (9th Cir. 1992). In Sinatra, Frank’s daughter’s claim for use of the song “These Boots are Made for Walking” in an advertisement with permission of the copyright owner, was rejected.
Like Sinatra, Sony obtained a license to use Laws’s recording itself. It was not imitating “Very Special” as Laws might have sung it, rather it used a portion of Debra Laws’s actual song. Although California law recognizes an assertable interest in the publicity associated with one’s voice, the court made it 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.
In essence, Law’s claim was that she objected to having a sample of her song used in the Jennifer Lopez-L.L. Cool J recording. However, Laws gave up the right to reproduce her voice when she contracted with Elektra and acknowledged that Elektra had the exclusive right to copyright the master recordings of “Very Special.” On the one hand, the court recognized that the holder of a copyright does not have a license to trample on other people’s rights. On the other hand, however, the right of publicity is not a license to limit the copyright holder’s rights merely because one disagrees with decisions to license the copyright.
At the end of the day, the Ninth Circuit was unconvinced that Laws maintained a valid voice misappropriation claim. The court was clear that not every right of publicity claim is preempted by the Copyright Act. In this case, the Copyright Act preempted state law claims as the alleged misappropriated vocal performance was contained within a copyrighted medium and was appropriately licensed away. Any other conclusion would render copyright law meaningless, allowing performers to claim an infringement of their right of publicity against licensees, anytime copyrighted material is used. The takeaway lesson from the Ninth Circuit: If performers want to prevent unauthorized use or sampling, these protections should be afforded through contract-right of publicity laws cannot be used as an end-run.
April Hiroshima Gatling is an associate in Weintraub Genshlea Chediak Tobin & Tobin’s Litigation and Labor and Employment sections. She represents clients in both state and federal court in complex business, trade secret, and employment related disputes. For more interesting articles on intellectual property, visit Weintraub’s law blog at www.theiplawblog.com.