A recent decision of the Ninth Circuit should provide a zone of comfort to owners of sound recordings and motion pictures who worry that their performers and actors may attempt to circumscribe their legitimate rights to exploit their copyrighted works based upon an asserted state law right of publicity. Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006).

In 1981, Debra Laws recorded the song "Very Special" and her record label retained ownership of the rights to the copyright among other rights. In 2002, Sony received a non-exclusive right to use a sample of "Very Special" in the song and video "All I Have" performed by Jennifer Lopez and L.L. Cool J. Laws sued for violation of her statutory right of publicity under California Civil Code § 3344 and her common law right of privacy in her voice. Sony did not argue that the Copyright Act preempts all right of publicity or right of privacy claims, just those in this case.

Applying the two part test to determine whether the state law claims are preempted by the Copyright Act —

1) Whether the "subject matter" of the state law claims fall within the subject matter of copyright as described in 17 U.S.C. §§102 and 103; and

2) If so, whether the rights asserted under state law are equivalent to the exclusive rights of copyright holders under 17 U.S.C. §106 —

the Ninth Circuit determined Laws’s state law claims were preempted by the Copyright Act in this particular case. Though the panel clearly acknowledged that not every right of publicity claim is preempted by the Copyright Act, Judge Bybee reasoned that "[w]ere we to conclude that Laws’s voice misappropriation claim was not preempted by the Copyright Act, then virtually every use of a copyrighted sound recording would infringe upon the original performer’s right of publicity." 

Such cases are very fact-specific and can result in seemingly conflicting opinions, even within the Ninth Circuit itself. For example, Nancy Sinatra unsuccessfully claimed "secondary meaning" for her famous rendition of "These Boots Were Made for Walking" later used in an ad campaign.[1] Like Debra Laws, she was not the copyright holder and her claim was preempted by the Copyright Act. By contrast, Bette Midler successfully sued for common law misappropriation when a professional "sound alike" was used to imitate her voice. In that case, her claim was not preempted by copyright law because the "thing" that was misappropriated was her voice (not copyrightable), not the song or performance of it.[2] In a case involving derivative works based upon the underlying television series Cheers, however, the Ninth Circuit reversed the grant of summary judgment, allowing a right of publicity claim to move forward when an advertisement used two robots that vaguely resembled the physical likeness of the actors who played the featured supporting characters Norm and Cliff.[3] This latter case has been the subject of some criticism and debate and may represent the outer limits of the publicity right.

The Laws/Sony case may have a calming effect even beyond the field of music and sound recordings. The case supports the proposition that performers have no further rights in the sound recording once their copyrighted performances are fixed with their permission and either assigned to the record label or created for the label as a work for hire. Likewise under this rationale, actors would have no separable rights of publicity as might interfere with the normal exploitation of a film or television production itself. The rights of actors and other performers in their rights of publicity, however, would seemingly require further reconciliation with the Cheers case when considering the right of the film or television producer to create new derivative works.

[1] Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970).

[2] Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

[3] Wendt v. Host International Inc., 125 F.3d 806 (9th Cir. 1997) cert. denied 121 S.Ct. 33 (2000).