• Caveat Preemptor: Laws v. Sony Music Entertainment, Inc.
  • August 7, 2006 | Authors: Susan E. Hollander; Jonathan M. Eisenberg
  • Law Firms: Manatt, Phelps & Phillips, LLP - Palo Alto Office; Manatt, Phelps & Phillips, LLP - Los Angeles Office
  • The “right of publicity” is a state law doctrine which protects a person’s name, likeness, or other aspects of his or her “identity” from commercial exploitation. “Copyright” is a federal law which protects a work of authorship that has been reduced to a tangible medium of expression.

    So far, so good. The problem is that specific expressions of an individual’s “identity” are almost always contained in copyrightable works. Copyright law contains a preemption clause. Does this mean that copyright law preempts right-of-publicity claims whenever an alleged infringement of the right of publicity involves a copyrighted work?

    For years, the answer to that question was, clearly, “no.” Aside from one idiosyncratic and heavily criticized decision, Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n., 805 F.2d 663 (7th Cir. 1986), criticized in, inter alia, Melville B. Nimmer and David Nimmer, Nimmer on Copyright, § 2.09[F] at 2-166-2-170.1 (Matthew Bender 1999), virtually every court to consider the question held that right-of-publicity claims are not preempted, because the “identity” which was infringed is not a work of authorship and is separate from the specific expression of that identity contained within copyrighted works. See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 567 (1977); Toney v. L’Oreal U.S.A., Inc., 406 F.3d 905, 908 (7th Cir. 2005); Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-1005 (9th Cir. 2001); Landham v. Louis Golub Toys, Inc., 227 F.3d 619, 624 (6th Cir. 2000); Brown v. Ames, 201 F.3d 654, 658 (5th Cir. 2000); TNB Enters. v. Matthews, 78 Cal. App. 4th 362, 374 (2000).

    Two courts nonetheless found preemption where a right-of-publicity claim arose from an authorized recording of an individual’s performance. See Baltimore Orioles, supra; Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (1996).

    The U.S. Court of Appeals for the Ninth Circuit recently accepted a preemption argument in Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006). Laws involved a singer, Debra Laws, whose contract granted copyright in her master recordings to her record company, but provided that the recordings could not be used in subsequent audiovisual works, or to promote other artists, without her permission.

    The record company later licensed “samples” of the master recording in another artist’s compact disc and music video without Laws’s permission. Laws filed a right-of-publicity suit, a federal trial court in Los Angeles, CA granted summary judgment against her on copyright preemption grounds, and she appealed.

    On appeal, the Ninth Circuit evaluated the copyright preemption argument by examining whether Laws’s right-of-publicity claim fell within the “subject matter” of and was “equivalent” to copyright. 448 F.3d at 1137-38. It concluded that Laws’s claim did fall within copyright subject matter because “the entirety of the allegedly misappropriated vocal performance is contained within a copyrighted medium.” Id. at 1141. It also found that Laws’s right-of-publicity claim was “equivalent” to copyright law because the publicity claim’s requirement of “commercial use” did not “transform the nature of the action.” Id. at 1144.

    The decision is noteworthy because it is the first new federal circuit court to accept a copyright preemption argument to a right-of-publicity claim in 20 years. It also is, to a large extent, at war with itself. The Laws Court was careful to “recognize that not every right of publicity claim is preempted by the Copyright Act,” 448 F.3d at 1145, and it attempted to distinguish some of the contrary authority cited above. Id. at 1141-42.

    However, the logic of Laws would wipe out most right-of-publicity claims if it were applied consistently, and its distinctions arguably are not persuasive. Virtually all right-of-publicity claims involve an aspect of an individual’s identity that “is contained within a copyrighted medium,” whether it be an image in a photograph, name on a poster, likeness in a drawing, or voice in an audio recording. Evoking a person’s identity, not the particular expression of that identity embodied in a copyrighted work, is the essence of a right-of-publicity claim, and is the reason why most courts reject copyright preemption defenses. The Laws Court found copyright preemption because it accepted an argument that virtually all other courts, including another panel of the Ninth Circuit, rejected.

    The Laws Court attempted to distinguish Downing and Toney by pointing out that they involved “photographs” rather than audio recordings, and were used for “advertising purposes,” which implied an “endorsement.” 448 F.3d at 1141-42. However, it is difficult to see why copyright preemption should apply differently to copyrighted photographs than to copyrighted sound recordings. Endorsement is irrelevant to right-of-publicity claims, and, in any event, the Laws sample was used in another artist’s music video, which is arguably an “advertisement” for the other artist’s music.

    The Laws Court’s underlying concern appears to be its belief that “the developing right of publicity could easily supplant the copyright scheme.” 448 F.3d at 1145. However, the feared result is impossible. No publicity case rejecting copyright preemption has eliminated copyright protection for the work in which a person’s identity is expressed. Given the U.S. Constitution’s Supremacy Clause, no court could do so. Any person who seeks to use a copyrighted work in a prohibited way will have to obtain the copyright owner’s permission regardless of any right-of-publicity protection that might be afforded the person depicted in the copyrighted work.

    If anything, the opposite concern is more realistic. Acceptance of the doctrine of the Laws Court will, “left to creative legal arguments,” risk supplanting the right of publicity with copyright law, eviscerating the right of publicity in the process.

    The Laws decision has thus injected considerable uncertainty into copyright preemption analysis involving right-of-publicity claims. At a practical level, it is likely to encourage more copyright preemption disputes, and more varying decisions, as litigants and courts struggle to understand Laws’s proper application.