Legal conflicts can arise at various levels of the American legal system, including federal, state, or local jurisdiction. It is not unheard of for the same conduct to be subject to statutes or common law across these jurisdictions. Complications can arise, however, when both federal and state or local laws address the same subject matter, sparking the need for analysis over which law takes precedence and which claims fall by the wayside.

With the focus on right of publicity on the one hand and copyright law on the other, a recent Second Circuit case, Melendez v. Sirius XM Radio, Inc. (2d Cir. 2022), delves into the delicate balance between individual rights and federal preemption.

This article discusses the court's decision and highlights a key consideration for plaintiffs seeking redress for right of publicity claims: whether the claims are qualitatively different and distinguishable from infringement of a copyright. Understanding the court’s decision regarding the possibility of preemption in right of publicity cases can help navigate the complexities of such IP disputes.

Federal Preemption

Preemption refers to the principle that certain state or local laws or claims may be preempted, i.e., overridden, by federal law. This concept aims to maintain a consistent and uniform body of law at the national level, preventing conflicting state or local regulations that could hinder the objectives of federal law.

Determining when federal preemption applies, however, is not always a straightforward inquiry. While the tests are well established, application to the specific facts of a matter can constitute a challenge.

In the context of right of publicity claims, preemption can occur when the subject matter of the claim is within the scope of copyright protection. Right of publicity generally pertains to an individual's right under state or local law to control the commercial use of their name, image, likeness, or other aspects of their identity. Copyright law, on the other hand, protects original works of authorship fixed in a tangible medium of expression, which often include some form of identity.

If a right of publicity claim is based on the use of material that is subject to copyright protection, there may be preemption. In this case, federal copyright law takes precedence over state law claims that attempt to regulate the same subject matter, and a plaintiff could be barred from bringing their state law claims.

Melendez v. Sirius XM Radio, Inc.

Plaintiff John Edward Melendez, known as “Stuttering John” from The Howard Stern Show, brought claims against Sirius XM Radio, Inc. for alleged violations of his right of publicity under California law. Melendez claimed that Sirius XM placed advertisements for archived episodes of The Howard Stern Show featuring Melendez's name and voice without his consent.

The district court dismissed Melendez's claims, stating that the Copyright Act preempted his right of publicity claims. On appeal, the Court of Appeals for the Second Circuit agreed. It held that Melendez's right of publicity claims were preempted by the Copyright Act because he did not plausibly allege any use of his name or likeness separate from how it originally aired in the episodes other than rebroadcasting of copyrightable material from The Howard Stern Show. The court emphasized that Melendez's appearances in promotional materials were directly connected to the product (The Howard Stern Show) to which he had a relevant connection, and not an exploitation of the plaintiff’s identity.

The court referred to the two-prong test for preemption under the Copyright Act, which consists of (i) a subject matter requirement, i.e., discerning whether the claim applies to a copyrightable work, and (ii) a general scope requirement, i.e., examining whether the state law claim is equivalent to one of the exclusive rights under federal copyright law. Melendez's claims satisfied both requirements, as they involved acts falling within the exclusive rights specified by the Copyright Act — the reproduction of copyrighted materials — and lacked any extra element  making them qualitatively different from copyright infringement that would have weighed against preemption.

The court also cited a prior case, In re Jackson, 972 F.3d 254 (2d Cir. 2020), involving rapper 50 Cent, where fellow rapper Rick Ross allegedly misappropriated 50 Cent’s identity with the unauthorized commercial use of samples from 50 Cent’s song, “In Da Club.” 50 Cent claimed that this use of his voice was in violation of his right to publicity, while Rick Ross argued that 50 Cent’s claim was not based on his likeness, but rather on the copyrighted works embodying his likeness — the song “In Da Club” and 50 Cent’s performance of it.

The focus of the court's prior decision revolved around whether the claim was directed on the sound of 50 Cent’s voice (not within the subject matter of copyright) or the work in which the voice was embodied (within the subject matter of copyright).

The court there sided with Rick Ross, stating that the focus of 50 Cent’s claim was the musical composition and sound recording of his performance — i.e., the copyrighted works themselves — and not his identity, adding that the mere use, without more, of a sample from a well-known song, with acknowledgment of the identity of the sampled artist, does not communicate to the relevant audience that the sampled artist has endorsed or sponsored the sampling artist's work.

The court in Melendez found this analysis instructive, and ultimately held that Melendez's right of publicity claims were properly dismissed on preemption grounds, as they failed to establish a plausible claim outside the subject matter of copyright.

Conclusion

Melendez's experience underscores the importance of approaching right of publicity cases with a nuanced understanding of federal preemption, and understanding when a court might dismiss state law claims to align with the broader framework of copyright law.

The decision points out that if a state law right of publicity claim is based on the use of a copyrightable work to promote the work itself, without anything else, it will be preempted under federal law. However, if the use of the plaintiff’s name, voice, or likeness is used to promote a product beyond that in which the plaintiff appeared in the copyrighted work, preemption may not necessarily be applicable. At its core, this ultimately comes down to a fact-specific inquiry.

Intellectual property can be a challenging legal field, and understanding the principles clarified in this Second Circuit case may help navigate the complexities of certain intellectual property disputes.