By: Alec Winshel
Fans of radio personality Howard Stern and legendary rapper 50 Cent had reason to rejoice in 2013 when the two sat down for an interview on The Howard Stern Show. After discussing rap feuds and the joys of meeting Oprah, the celebrities parted ways for nearly a decade. However, last month brought the stars together once again in a starkly different context: central figures in a burgeoning legal conundrum concerning the power of the federal Copyright Act. The issue of copyright preemption poses questions of fairness for artists and consistency for the federal court system. Don’t hold your breath, though. A combination spoken word and hip hop project by the duo has not yet been announced.
The US Copyright Act of 1976 affords protection against infringement for creators of artistic works. Unauthorized reproduction, distribution, and creation of derivate work is prohibited under §106 of the federal law. State law – developed through both statutes and judicial decisions – has established a similar, but distinct, protection: the right of publicity. The right of publicity protects the use of a person’s name, image, and likeness from appropriation without consent. Each state has a unique approach. A state may protect different dimensions of identity, extend protections only during life or for a fixed postmortem period, and assign different elements of proof for a lawsuit. Copyright and publicity work in tandem for artists: the Copyright Act imposes a national rule for permissive use of creative work and the right of publicity creates a state-by-state safeguard against the misappropriation of identity. The rights, however, can clash with each other. In the event of conflict, federal laws are given priority over state laws. The Copyright Act includes a specific provision about its supremacy: §301 of the Act declares that no person is entitled to an equivalent right under the laws of any state. When a court finds that a federal law is equivalent to a state law, the state law is “preempted.”
The issue of preemption in copyright arose last month, when a Second Circuit court adjudicated a lawsuit about the right of publicity in California. Melendez v. Sirius XM Radio, Inc. concerned longtime radio personality John Melendez, who appeared frequently on The Howard Stern show under his stage name “Stuttering John.” In 2006, Sirius XM contracted with the show to re-air archival episodes and to release new content. That contract also transferred the copyright to all existing episodes of the program to Sirius XM. Sirius then used recordings of Melendez from his previous appearances in its advertising for new episodes. California protects the right of publicity in both common law and its Civil Code Section 3344, which states that a company may not knowingly using a person’s “name, voice, signature, photograph, or likeness” for purposes of advertising without consent. Melendez brought a lawsuit claiming that his right of publicity had been exploited by the radio company in its promotional material.
The lawsuit was dismissed because the court found that Melendez’s publicity claim was preempted by the federal Copyright Act. The Second Circuit court applied a two-part test to determine if the right of publicity claim was equivalent to the rights within the Copyright Act: it evaluated (1) a subject matter requirement and (2) a general scope requirement. The first element considers whether the work in question is also subject to copyright protections. In this case, a voice recording falls within copyright’s list of protected materials. The second part of the test asks if the state law includes additional elements that make it distinguishable from the areas covered by the Copyright Act. There is an additional requirement in CA’s right of publicity statute: a commercial purpose for the derivate use. However, the court explained that copyright has traditionally involved commercial interests and, therefore, the claims are not qualitatively distinct. Melendez’s claim was preempted by the Copyright Act and dismissed.
The ruling left Melendez with few legal options because Sirius XM owns the copyright to the shows that contain his voice recordings. This is the first problem of copyright preemption. It’s not uncommon that an artist no longer controls the underlying copyright for a particular work. The artist may have waived their claim to copyright when contracting with a company or have sold the right. Without a right of publicity claim, the artist may then be unable to defend against derivative use. The same problem appeared in Jackson v. Roberts, which the Melendez court relied on heavily in its recent decision.
Jackson v. Roberts concerned a claim brought by Curtis James Jackson III, known to most as 50 Cent, against fellow rapper Rick Ross. Ross used a sample of 50 Cent’s famous song “In Da Club” for a promotional mixtape ahead of his album release. Jackson claimed that the use of his recording and stage name in the track’s title constituted a violation of his right of publicity under Connecticut’s common law. His claim was dismissed under the preemption doctrine. As in the Melendez case, Jackson didn’t own the copyright to the underlying work. The copyright was owned by the record label that published “In Da Club.” Jackson’s right of publicity claim stalled, and the Copyright Act left him no recourse.
The other problem with copyright preemption is in its inconsistent application. The aforementioned cases are only part of a sprawling preemption web that reaches across the US federal courts. In the Ninth Circuit, a court declined to apply the preemption doctrine when a famous surfer alleged a publicity violation after Abercrombie & Fitch used their licensed image in a marketing campaign. The Fifth Circuit similarly allowed a publicity claim to proceed after a musician’s name and likeness were used in connection with marketing for a CD containing their songs. The Third Circuit court allowed a publicity claim to be heard when an NFL broadcaster’s voice was used in an advertisement for a video game. The Seventh Circuit, however, chose to apply the preemption doctrine when baseball players brought a lawsuit for the rebroadcast of their games, but declined to do the same in a case involving a model’s photograph in a marketing campaign. Courts have taken inconsistent approaches when choosing whether the use of copyrighted material invokes the relevant person’s identity, rather than just their copyrighted work. Questions of implied endorsement and commercial exploitation have shaped the two-factor test in respective jurisdictions and left competing frameworks across the court system.
The Melendez and Jackson cases may have seen opposite results if the Second Circuit court found that the use of their voices was an appropriation of their identity, rather than solely a reproduced recording. That determination may have depended on which Circuit heard their claims. This unequal administration of federal law based on geographic jurisdiction is called a “circuit split.” These splits are ripe for the Supreme Court, which grants certiorari to create a consistent legal approach that all federal courts must adopt.
The Copyright Act and the right of publicity are fundamentally concerned with fairness: allowing artists to benefit fully from their creative work and to protect themselves from misappropriation. Yet, the two laws have now clashed in such a way that leaves artists powerless to pursue legal action depending on which Circuit hears the case. The time has come for the Supreme Court to establish a consistent framework that all federal courts can apply. Artists should be able to know where they stand when it comes to their right of publicity.