Debra Laws v. Sony Music Entertainment, Inc., D/B/A Epic Records, a Delaware Corporation

Citations: 448 F.3d 1134; 78 U.S.P.Q. 2d (BNA) 1910; 2006 U.S. App. LEXIS 12813; 6 Cal. Daily Op. Serv. 4308Docket: 03-57102

Court: Court of Appeals for the Ninth Circuit; May 24, 2006; Federal Appellate Court

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Debra Laws sued Sony Music Entertainment for misappropriating her voice and name in the song "All I Have," performed by Jennifer Lopez and L.L. Cool J. The district court determined that Sony had acquired a license to use a sample of Laws's song "Very Special" and ruled that Laws's claims for violation of her common law right to privacy and statutory right of publicity were preempted by the Copyright Act. The Ninth Circuit upheld this decision, agreeing that the Copyright Act preempted Laws's claims. 

Key facts include Laws's 1979 recording agreement with Elektra/Asylum Records, which granted Elektra exclusive rights to her recordings and allowed for the use of her name and likeness. In 2002, Elektra's agent licensed a sample of Laws's work to Sony without her consent, resulting in the commercial release of "All I Have," which became highly successful. Laws's 2003 lawsuit included claims for invasion of privacy and misappropriation of her name and voice for commercial purposes, seeking both injunctive and monetary relief.

Sony removed the case to the United States District Court for the Central District of California and attempted to join Elektra as a necessary party, but the court denied this motion. Subsequently, Sony filed for summary judgment, which the district court granted, ruling that Laws's misappropriation claims were preempted by the Copyright Act. Laws appealed this decision.

The standard of review for a summary judgment grant is de novo, meaning the appellate court will re-examine the evidence favorably towards Laws to identify any genuine material fact issues and assess the proper application of substantive law. Summary judgment can be affirmed on any grounds supported by the record.

Federal law preemption over state law is also reviewed de novo, as is the district court's interpretation of state law. The Copyright Clause of the U.S. Constitution empowers Congress to promote science and useful arts by securing exclusive rights to authors. The Copyright Act delineates the exclusive rights of copyright holders to display, perform, reproduce, distribute, and create derivative works of their copyrighted materials.

Sections 301(a) and (b) of Title 17 specify the conditions under which the Copyright Act preempts state legal and equitable rights. Section 301(a) establishes that, since January 1, 1978, all equivalent legal rights to copyright within the scope of the Act are exclusively governed by it, thereby nullifying any such rights under state law. Section 301(b) preserves state rights concerning subject matter outside the scope of copyright.

Congress's intent with Section 301 is to abolish state law rights equivalent to copyright for works covered by federal copyright law. A two-part test is used to determine preemption: first, whether the state law claim's subject matter falls within federal copyright, and second, whether the rights asserted under state law are equivalent to the exclusive rights specified in 17 U.S.C. § 106.

Laws asserts two causes of action: a common law right of privacy claim and a statutory misappropriation claim under California Civil Code § 3344(a). To succeed in the right of privacy claim, Laws must establish four elements: the defendant's use of her identity, appropriation of her name or likeness for the defendant's advantage, lack of consent, and resulting injury. The statutory claim under § 3344(a) requires proving the same elements as the common law claim, plus the defendant's "knowing use" and a direct connection to a commercial purpose. 

The remedies under § 3344 complement the common law cause of action rather than replace it. Sony does not argue that these claims are generally preempted by federal copyright law but contends they are preempted in this case. The discussion turns to whether Laws's claims fall within copyright subject matter and whether her rights under California law are equivalent to those under the Copyright Act. The analysis concludes that Laws's misappropriation claim is indeed within the subject matter of copyright, as defined by Sections 102 and 103 of the Copyright Act, which protect original works fixed in a tangible medium, including sound recordings. Laws argues that copyright pertains to ownership of artistic works, while her claim focuses on protecting her persona and likeness. In contrast, Sony maintains that once her voice is part of a sound recording, it is subject to copyright law.

Jurisprudence provides clarity on the intersection of copyright law and rights of publicity in cases involving unauthorized use of a person's voice or likeness. In *Sinatra v. Goodyear Tire & Rubber Co.*, Nancy Sinatra argued that her iconic song, featured in Goodyear's advertisement, had a "secondary meaning" that caused her harm. The court rejected her claim, noting she lacked rights to the copyrightable elements of the song since Goodyear had a valid license. Sinatra could have acquired exclusive rights from the copyright owner if she wished to protect her distinct association with the song. Though *Sinatra* predates the modern preemption provisions of the Copyright Act, the court implied that her state law claim was preempted by federal copyright law.

In *Midler v. Ford Motor Co.*, Bette Midler sued for the unauthorized use of a sound-alike singer in an advertisement. The court found that her common law misappropriation claim was not preempted by copyright law as she did not seek damages for the song itself but for the unauthorized imitation of her voice, which is not copyrightable. The court clarified that voices are personal and not considered fixed works of authorship.

The principles established in *Midler* were further applied in *Waits v. Frito-Lay, Inc.*, where Tom Waits alleged a right of publicity violation due to the imitation of his voice in a commercial. The court ruled this claim was not preempted by copyright law, focusing on whether the imitation was deliberate and if Waits’ voice was distinctive enough to warrant protection. The distinctions made in these cases highlight the different legal frameworks governing copyright infringement and rights of publicity.

Laws's voice misappropriation claim is distinct from those in Midler and Waits, as it pertains to copyright issues rather than mere imitation. Unlike in Midler and Waits, where the defendant only licensed the song and imitated the artists' voices, Sony obtained a license to use Laws's actual recording of "Very Special," thereby using her performance rather than imitating it. The claim differs from Daboub v. Gibbons since Daboub involved misappropriation of the song itself, while Laws's claim focuses on the unauthorized use of her vocal performance. Laws concedes that the recording is a copyrighted sound recording, and her right of publicity claim is based solely on her vocal performance's unauthorized duplication. California law acknowledges an interest in voice publicity; however, federal copyright law preempts claims alleging voice misappropriation when the performance is contained within a copyrighted work. This aligns with the conclusions in Midler and Waits, where imitation claims were not preempted as they did not involve copyrighted performances. Laws cites two cases for support, but both are distinguishable. In Downing, the use of photographs in advertising without consent involved more than mere republication, as it suggested endorsement by the plaintiffs. Thus, the claims were based on the use of the plaintiffs' likenesses rather than the photographs themselves. This principle was reiterated in Brown, where the use of names and likenesses on promotional materials did not fall under copyright protection, as a name or likeness does not qualify as a work of authorship under copyright law.

Laws references Toney v. L'Oreal USA, Inc., where the Seventh Circuit ruled that a claim under the Illinois Right of Publicity Act was not preempted by the Copyright Act. In this case, model Toney alleged unauthorized continued use of her photographs in advertisements after the expiration of the defendants' copyright, which they held from November 1995 to November 2000. The court determined that Toney's identity is not a tangible work of authorship, and the copyright of the photograph does not negate her right of publicity. Toney retained artistic control over her likeness beyond the contractual period, leading to the conclusion that her claim was not preempted. 

In contrast, the court examined Fleet v. CBS, Inc., where CBS was found to have preemptive rights regarding the actors' performances captured in a copyrighted film. The California Court of Appeal held that the actors' right of publicity claims, based on their likenesses and performances in the film, were preempted by the Copyright Act because the performances were fixed in a tangible medium and thus copyrightable. The distinction lies in that Toney’s claim focused on her likeness, which is not copyrightable, while the claims in Fleet related to the actors' performances, which are copyrightable. If the court had ruled otherwise in Fleet, it could have allowed actors to claim rights over any film showing, undermining copyright protections.

Laws asserts that her right of first refusal under the original production agreement with Elektra grants her control over the use of her name and voice in connection with "Very Special." She argues that if Elektra/Asylum, as the copyright holder, does not hold such rights, then its licensee lacks them as well. This claim implies that her contractual rights give her an interest in the copyright, thus partially subjecting Elektra's copyright to her control. The court refrains from commenting on the implications of Laws's reservation or any potential remedies against Elektra. Instead, it clarifies that whether the parties contracted regarding copyright use does not influence the preemption analysis. If Laws has enforceable rights, her recourse may lie in a breach of contract claim for unauthorized licensing of "Very Special."

The analysis then shifts to whether Laws's asserted rights under California law are equivalent to those protected by the Copyright Act. The court concludes they are equivalent, referencing the precedent set in Del Madera Properties v. Rhodes, Gardner, which established that for state rights to survive preemption, they must protect rights distinctly different from copyright rights and include an extra element changing the nature of the action. The court rejects Laws's argument that her right of publicity claim, requiring proof of a "commercial purpose," introduces an extra element because this claim ultimately hinges on the unauthorized use of her voice, which aligns with copyright infringement principles.

Sony contends that Laws's claims are solely rooted in the unauthorized reproduction of her vocal performance from "Very Special" in the Jennifer Lopez-L.L. Cool J recording. It argues that Laws's voice misappropriation claim does not differ significantly from copyright protections because it is based on the unauthorized use of her copyrighted work. Laws's fundamental objection is to the sampling of "Very Special," but she relinquished the right to control the reproduction of her voice when she entered into a contract with Elektra in 1981, which granted Elektra exclusive rights to the master recordings. Although Laws asserts she reserved certain rights, any breach of contract by Elektra would necessitate a remedy against Elektra rather than Sony.

The presence of commercial use in Laws's claim does not fundamentally alter its nature from a copyright action, as the essence of her claim remains tied to the unauthorized reproduction of "Very Special." Sony lawfully obtained a limited license from the copyright holder for commercial use, and thus the additional commercial element does not transform the nature of the claim. Both copyright and the right of publicity serve to protect an individual's investment in artistic work, emphasizing the necessity for economic incentives for creators. However, the right of publicity cannot undermine the copyright holder's rights simply due to disagreements over licensing decisions, as Congress has aimed to prevent the right of publicity from overshadowing the established copyright framework.

Laws's claim of voice misappropriation is not preempted by the Copyright Act, as this would risk infringing on the original performer's right of publicity for nearly all uses of copyrighted recordings. Recognizing performers' secondary meanings could significantly restrict the copyright owner's market, potentially deterring licensees due to the need to pay multiple performers for a single composition, which could lead to a disinterest in licensing altogether. While not every right of publicity claim is preempted, the court clarifies that common law or statutory rights related to privacy, publicity, and trade secrets remain intact, provided they do not overlap with copyright issues and have distinct elements. Elektra holds the copyright for Laws's performance of "Very Special" and licensed its use to Sony. If Laws intended to maintain control over her performance, she should have retained the copyright or negotiated terms with Elektra. Consequently, any potential remedy for Laws lies in an action against Elektra, not Sony.

Laws's right of publicity claims are preempted by the Copyright Act, leading to the affirmation of the district court's judgment. Under the Copyright Act, original works of authorship are protected when fixed in a tangible medium, covering various categories including literary, musical, dramatic, and audiovisual works. The Act also recognizes compilations and derivative works, but copyright protection does not extend to unlawfully used preexisting material. Exclusive rights under the Copyright Act include reproduction, preparation of derivative works, distribution, public performance, and display of copyrighted works. The case of Toney is distinguished from Laws's situation; Toney's claim involved parties that had agreed not to use her likeness, while Laws's claim would have been similar only if directed at Elektra, the copyright holder of the relevant song. No opinion was offered regarding the correctness of Toney's case or its relevance to claims against Elektra. Additionally, it was noted that counsel had filed a breach of contract claim in state court.