Court Rules on Preemption of Publicity Rights Involving Copyrighted Works

On October 4, the U.S. Court of Appeals for the Second Circuit ruled that right of publicity claims brought by a plaintiff radio entertainer under state law are preempted by the Copyright Act because those claims focused upon copyrighted works involving the plaintiff rather than on his likeness or identity. 

The plaintiff in Melendez v. Sirius XM Radio, Inc. was a performer on a once-popular terrestrial broadcast radio program from 1988 to 2004. Thereafter, satellite radio provider Sirius XM licensed and airs new episodes of that program as well as past episodes that featured the plaintiff. The plaintiff filed a lawsuit against Sirius XM, alleging his right of publicity under California common law and statutory law were violated because his name and likeness were used for commercial gain without permission when Sirius XM aired promo ads and posted online ads for the program that used excerpts of the plaintiff's performances from archival episodes.

Section 301 of the Copyright Act contains a preemption clause: 

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. 

Free State Foundation President Randolph May and I have written about the national framework for copyrights established in the Copyright Act and Section 301's preemption of state laws in other contexts, including in our March 2022 Perspectives from FSF Scholars, "State Laws Forcing Publishers to License Ebooks to Libraries Are Unlawful."

In Melendez, the Second Circuit applied Section 301 using a two-part test to determine whether a state law claim is preempted by the Copyright Act. The first prong of the test is called the "subject matter" requirement, which applies when the claim applies to a worked fixed in a tangible medium and that is within the ambit of a category of copyrightable works. And the second prong is called the general scope or equivalence requirement, which applies when the claim involves a right that is equivalent to any of the exclusive rights that are within the general scope of Section 106 of the Copyright Act, such as the rights of reproduction and distribution.

The Second Circuit held that the state law claims raised by the plaintiff satisfied the two-part test for preemption. The court determined that the plaintiff’s statutory and common law publicity right claims applied to copyrighted works – the archival radio broadcast programs – and it also determined that his claims were not directed at the plaintiff's name, likeness, or identity separate from or beyond those copyrightable radio broadcasts.  

The Second Circuit's decision in Melendez applying Section 301 to the state publicity right claims is in accord with circuit precedent from 2020, and the court cited similar preemption decisions from the Eighth and Ninth Circuits. Apparently, there is a circuit split on this issue insofar as the Fifth, Seventh, and Tenth Circuits have rejected preemption when the state right of publicity claims involve commercial or advertising uses. 

Unless or until the Supreme Court takes up a case to resolve the circuit split, private parties who purchase or license copyrighted works should be alert to the possibility that state law claims, such as right of publicity, may be implicated by their prospective use of the copyrighted works. Those implications likely can be addressed through negotiated contract terms.