Second Circuit Holds that Copyright Law Preempts Publicity Claims Against Sirius XM

By Jennifer E. Rothman
November 4, 2022

On October 4th, in Melendez v. Sirius XM Radio, Inc., the Second Circuit held that copyright law preempted a performer’s right of publicity claims arising out of Sirius XM’s rebroadcasting and promotion of past Howard Stern shows.

The plaintiff, John Edward Melendez, also known as Stuttering John, was a regular participant on The Howard Stern show from 1988 to 2004.  After he left the show, Sirius XM obtained a license to air new and past episodes of the show on its platform.  Melendez appears in many of these past shows, and Sirius XM used some excerpts of the shows, including ones with his voice to advertise the show. Melendez filed suit in the Southern District of New York, bringing both statutory and common law right of publicity claims under California law.

The Second Circuit agreed with the district court that Melendez’s claims were preempted by federal copyright law. Both courts observed that Melendez’s primary complaint was the reuse of the copyrighted recordings, rather than any distinct use of his identity. Given the copyright holder’s entitlement to rebroadcast such recordings, the publicity-based claims were barred by federal copyright law.

In so concluding, the court leaned heavily on its prior decision in In re Jackson, 972 F.3d 25 (2d Cir. 2020) (holding that right of publicity claims arising out of a mixtape were preempted by copyright law) . The panel in Melendez relied solely on Section 301, the Copyright Act’s express preemption provision, noting that the parties before it had not briefed implied or conflict preemption, in contrast to Jackson. Nevertheless, the analysis in the decision closely tracks the broader preemption analysis of the court in Jackson, and the approach that I have advocated for elsewhere. (See Jennifer E. Rothman, The Right of Publicity: Privacy Reimagined for a Public World 161-179 (Harvard Univ. Press 2018); Jennifer E. Rothman, Copyright Preemption and the Right of Publicity, 36 U.C. Davis L. Rev. 199 (2002).)

Section 301 of the Copyright Act provides for preemption of state laws if such laws provide “legal or equitable rights equivalent to any of the exclusive rights within the general scope of copyright” and that “come within the subject matter of copyright.” 17 U.S.C. Section 301.  While it is clear that Congress intended to preempt state copyright laws with this provision, it is not clear what else, if anything, was intended to be preempted by this provision.  It likely was intended to leave intact state privacy and publicity laws, and the provision itself does not seem styled for case-by-case analysis of whether the application of a right of publicity law should be barred by copyright law in a particular instance.

The Second Circuit applied the common two-part test for preemption under Section 301 and looked at whether the right of publicity claim fell within the subject matter of copyright and then whether it was equivalent to  rights extended by copyright law. As to the subject-matter requirement, the court considers a claim within the subject matter of copyright if it is “fixed in a tangible medium of expression” and “fall[s] within the ambit of one of the categories of copyrightable works.”  Applying this analysis to Melendez's claims, the court concluded that because the recordings at issue are copyrighted or copyrightable, the publicity claims arise out of the subject matter of copyright.  The problem with this analysis is that it would be true any time a publicity claim arose from a use of a person’s identity within a copyrighted or copyrightable work—which would be most of the time.   

As to the second prong of the analysis, the court concluded that a right of publicity claim is equivalent to a copyright claim if the infringing act “would, by itself infringe one of the exclusive rights provided by federal copyright law.”  The panel properly dismissed the extra element test in which many courts have found publicity claims not preempted because the state laws require commercial uses, or a plaintiff whose identity has commercial value.  Instead, the panel suggested that the publicity claims must differ “qualitatively from a copyright infringement claim” to avoid preemption.  Here, because the court concluded that the alleged infringement of the publicity rights stemmed from the reproduction of the underlying copyrighted work, the claims were not meaningfully distinct from copyright infringement claims.  Accordingly, the publicity claims were preempted.

The panel appropriately highlights—as the Jackson panel did using conflict preemption—that the key inquiry is whether the primary complaint is the use of the plaintiff’s identity or instead the use of the underlying copyrighted work itself.  Here, the court concluded it was the latter. Sirius XM was lawfully using archived shows and advertising those shows and did not take any additional steps to highlight or promote Melendez’s identity (either his name or voice).  Quoting Jackson, the Melendez panel emphasized that “the more the defendant has used a copyrighted work for its own value, as opposed to using it to exploit the depicted plaintiff’s identity, the more the right of publicity claim brought by someone depicted in the work can be considered a disguised effort to control the dissemination of the work.” The panel concluded that “Melendez’s right of publicity claims are based on Sirius XM’s use of the copyrightable works themselves,” not on the use of “his name or likeness in any way separate from, or beyond airing excerpts of existing archival episodes in which he appeared.”

Notably, the fact that Melendez’s voice was used in promotional spots for the shows and in advertisements did not alter the court’s analysis because what was promoted was the underlying works not Melendez. 

The court observed that the publicity claims might not have been preempted under two conditions.  First, if there was confusion as to Melendez’s personal sponsorship or endorsement or if Sirius XM had used “his identity to sell a product or service with which the plaintiff has no relevant connection.”  There was no evidence of either.   

Bottom line here is that courts are cohering around allowing the reuse of copyrighted works in which parties agreed (either implicitly or explicitly) to appear, at least when the use at issue is similar to the original reproduction or a clip show or sample. But courts still are struggling with what to do with merchandise cases, more significant uses in derivative works, and uses that exceed the boundaries of contractual agreements.  The implied preemption analysis provides greater guidance on how to address these challenging conflicts between the rights at issue.  But here, Melendez's claims were not a close call.