State Publicity and Privacy Claims for Sample in J.Lo and LL Cool J Song Preempted by Copyright Law

Case: Laws v. Sony Music Entertainment, No. 03-57102 (9th Cir. 5/24/06)

The One Sentence Summary: Claims for violation of the rights of privacy and publicity for the use of a copyrighted sample were preempted by copyright law.

What They Were Fighting About: Recording artist Debra Laws entered into an agreement with Elektra/Asylum Records ("Elektra") conveying the copyrights in her song "Very Special," with certain limitations. Twenty-two years later, Elektra granted a non-exclusive license to Sony Music Entertainment, Inc. ("Sony") to use a sample of "Very Special" in the song "All I Have," performed by J.Lo and LL Cool J. Laws claimed that Sony's subsequent use amounted to (1) common law invasion of privacy for the misappropriation of her name and voice, and (2) statutory misappropriation of her name and voice for a commercial purpose in violation of Californi Civil Code § 3344.
Ninth Circuit Holdings:

• The Ninth Circuit applied a two-part test to determine whether the state law claims were preempted by the Copyright Act.
• First, the Court determined that the subject matter of Laws' state claims fell within the subject matter of the Copyright Act. It stated, "[a]lthough California law recognizes an assertable interest in the publicity associated with one's voice, we think 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."
• Second, the Court found that the rights asserted under state law were equivalent to the rights contained in the Copyright Act, stating: "To survive preemption, the state cause of action must protect rights which are qualitatively different from the copyright rights." Even though the statutory right of publicity claim required an additional element of use for a "commercial purpose," it was essentially a claim for the reproduction of Laws's song, a right protected by the Copyright Act. "The mere presence of an additional element in [C.C.] section 3344 is not enough to qualitatively distinguish Laws's right of publicity claim from a claim in copyright. The extra element must transform the nature of the action."
• The court found persuasive Fleet v. CBS, Inc., 58 Cal. Rptr. 2d 645 (Ct. App. 1996), where plaintiff actors brought a right of publicity claim for airing of a motion picture in which they performed. There, because the "use of plaintiffs' likenesses did not extend beyond the use of the copyrighted material . . . there was no right of publicity at issue. . . . Had the court held otherwise, each actor could claim that any showing of the film violated his right to control his image and persona."
• The court indicated that a proper claim might be a contract claim against Elektra, instead of tort claims against Sony.