In a clash between a radio personality’s right of publicity claim and a satellite radio’s copyright claim, the Southern District of New York recently dismissed John Melendez’s complaint against Sirius XM Radio alleging violation of California statutory and common law rights of publicity, holding that the promotion and rebroadcasting of his radio shows was preempted by federal copyright law. This case is a win for content owners who face claims by personalities trying to make an end run around improbable copyright claims and instead assert rights of publicity claims for use of their “attributes.”
Plaintiff Melendez is popularly known for his humorous “Stuttering John” radio interviews that aired for 16 years on the Howard Stern Show beginning in 1988 where he asked politicians, celebrities, and athletes outrageous questions. In 2004, Melendez left the show to become the announcer for Jay Leno’s The Tonight Show. Two years later, Howard Stern signed a deal with Sirius XM to move his show from terrestrial radio to the subscription-based satellite radio service. As a part of the deal, Sirius acquired a license to air current episodes of the show and to air full or partial episodes from the Howard Stern Show archives that feature Melendez as Stuttering John. According to the complaint, Melendez alleged that Sirius continuously aired old shows featuring Melendez and used his likeness to promote Sirius radio. Melendez sued in the Southern District of New York claiming Sirius violated his California statutory and common law rights of publicity.
The court dismissed the complaint with prejudice, finding that Melendez was attempting to prevent the airing of radio broadcasts, works that could be subject to copyright and that are governed by federal copyright law. The federal preemption provision, 17 U.S.C. § 301(a) establishes a two-pronged test to be applied in preemption cases. Under this test, states are precluded from enforcing penalties for state law violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law.
Under the first prong, courts look at whether the subject matter at issue (here, sound recordings) pertain to subject matter covered by copyright. Even though the recordings of Melendez were not copyrighted (and may not even have been eligible for copyright protection), this did not preclude preemption because it was sufficient that the claim was subject to the possibility of statutory preemption. In short, Sirius did not actually need to be a copyright holder to prevail.
In addressing Melendez’s right of publicity claim, the court looked at whether his claim aimed to vindicate the misuse of Melendez’s likeness by implying a false endorsement or to exploit a work that could be subject to copyright protection, or if Melendez was attempting to control the dissemination of the work under copyright. Since Sirius was using the recordings to advertise the Howard Stern episodes featuring Melendez, and not Sirius itself, the court rejected Melendez’s argument of implied endorsement under California right of publicity. Melendez failed to plead any plausible facts that suggest Sirius’ intended audience could reasonably construe the advertisements as an endorsement of Sirius. The court noted that the only commercial advantage Sirius gains from playing the old clips of Melendez flows from the sound recordings themselves, not from Melendez’s identity.
Under the second prong of the copyright preemption test, the court must decide if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law. In order to decide this factor, the court’s analysis focuses on whether the nature of the state law action is qualitatively different from a copyright infringement claim.
The court held that Melendez’s claims are not qualitatively different from copyright infringement claims because they are effectively claims for wrongful rebroadcasting of copyrightable sound recordings. Additionally, Melendez’s request for the court to permanently enjoin Sirius from “continuing the improper acts” made it clear to the court that Melendez was attempting to control the broadcasting of sound recordings—a right that is exclusive to the copyright holder—under the guise of protecting his right of publicity. As a result, the court dismissed the complaint with prejudice, ending Stuttering Johns’ action against Sirius from the onset.
This case is consistent with other court decisions refusing to enjoin the sale or distribution of a product based on state right of publicity laws where the product itself is a work subject to copyright (such as a photograph) and the celebrity’s attributes are not being used to endorse or sell a different commercial product, protecting the copyright holder of the works from questionable publicity claims.