Laws v. Sony Music Entertainment, Inc. ( 2006 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DEBRA LAWS, 
Plaintiff-Appellant,
No. 03-57102
v.
SONY MUSIC ENTERTAINMENT, INC.,  D.C. No.
CV-03-02038-LGB
d/b/a EPIC RECORDS, a
OPINION
Delaware corporation,
Defendant-Appellee.

Appeal from the United States District Court
for the Central District of California
Lourdes G. Baird, District Judge, Presiding
Argued and Submitted
September 12, 2005—Pasadena, California
Filed May 24, 2006
Before: Jerome Farris, Ferdinand F. Fernandez, and
Jay S. Bybee, Circuit Judges.
Opinion by Judge Bybee
5707
5710 LAWS v. SONY MUSIC ENTERTAINMENT
COUNSEL
Rickey Ivie and Kendall E. James of Ivie, McNeill & Wyatt,
Los Angeles, California, for the appellant.
Russell J. Frackman, Matt J. Railo, and Paul Guelpa of Mitch-
ell, Silberberg & Knupp, LLP, Los Angeles, California, for
the appellee.
OPINION
BYBEE, Circuit Judge:
Plaintiff Debra Laws (“Laws”) brought suit against defen-
dant Sony Music Entertainment, Inc. (“Sony”) for misappro-
priating her voice and name in the song “All I Have” by
Jennifer Lopez and L.L. Cool J. The district court found that
Sony had obtained a license to use a sample of Laws’s record-
ing of “Very Special” and held that Laws’s claims for viola-
tion of her common law right to privacy and her statutory
right of publicity were preempted by the Copyright Act, 17
U.S.C. § 101-1332. We agree with the district court that the
Copyright Act preempts Laws’s claims, and we affirm.
I. FACTS AND PROCEEDINGS
In 1979, professional vocalist and recording artist Debra
Laws and Spirit Productions (“Spirit”) entered into a record-
ing agreement with Elektra/Asylum Records (“Elektra”) to
produce master recordings of Laws’s vocal performances for
Elektra. The agreement gave Elektra the “sole and exclusive
right to copyright such master recordings” and “the exclusive
worldwide right in perpetuity . . . to lease, license, convey or
otherwise use or dispose of such master recordings.” Elektra
also secured the right “to use and to permit others to use your
name, the Artist’s name . . . likeness, other identification, and
LAWS v. SONY MUSIC ENTERTAINMENT 5711
biographical material concerning the Artist . . . in connection
with such master recordings.” Notwithstanding these provi-
sions, Elektra agreed that “we shall not, without your prior
written consent, utilize or authorize others to utilize the Mas-
ters in any so-called ‘audio-visual’ or ‘sight and sound’
devices intended primarily for home use,” and “we or our
licensees shall not, without your prior written consent, sell
records embodying the Masters hereunder for use as premi-
ums or in connection with the sale, advertising or promotion
of any other product or service.” In 1981, Laws recorded the
song “Very Special,” which was released on Laws’s album on
the Elektra label. Elektra copyrighted the song that same year.
In November 2002, Elektra’s agent, Warner Special Prod-
ucts, Inc., entered into an agreement with Sony Music Enter-
tainment, Inc. (“Sony”) to grant Sony a non-exclusive license
to use a sample of Debra Laws’s recording of “Very Special”
in the song “All I Have,” performed by recording artists Jen-
nifer Lopez and L.L. Cool J. The agreement required Sony to
include a credit stating, “Featuring samples from the Debra
Laws recording ‘Very Special’ ” in any reproduction. Warner,
Elektra’s agent, did not seek permission from Laws or Spirit
before it released the disc and video, and neither Laws nor
Spirit was compensated.
Sony subsequently released a Jennifer Lopez compact disc
and music video incorporating brief samples of “Very Spe-
cial” into her recording of “All I Have.” The sampled portions
include a segment approximately ten seconds in length at the
beginning of “All I Have,” and shorter segments repeated in
the background throughout the song. Sony included the
required credit in the booklet accompanying the compact disc.
The song and Lopez’s album, “This is Me . . . Then,” became
a huge commercial success, netting over forty-million dollars.
At one time “All I Have” was the number one song in the
United States.
In February 2003, Laws brought an action in the Superior
Court of California, County of Los Angeles, alleging multiple
5712 LAWS v. SONY MUSIC ENTERTAINMENT
claims. The two claims relevant to this appeal were: (1) a
common law claim for invasion of privacy for the misappro-
priation of Laws’s name and voice and (2) a claim for misap-
propriation of Laws’s name and voice for a commercial
purpose under California Civil Code § 3344. The complaint
sought injunctive and monetary relief.
Sony removed the case to the United States District Court
for the Central District of California and sought to join Elek-
tra as a necessary party. The court denied the motion. Sony
filed a summary judgment motion, which the district court
granted, ruling that both of Laws’s misappropriation claims
were preempted by the Copyright Act. Laws filed a timely
appeal.
II. STANDARD OF REVIEW
A grant of summary judgment is reviewed de novo. See
Buono v. Norton, 371 F.3d 543, 545 (9th Cir. 2004). We must
view the evidence in the light most favorable to Laws and
determine whether there is any genuine issue of material fact
and whether the district court properly applied the relevant
substantive law. See Olsen v. Idaho State Bd. of Med., 363
F.3d 916, 922 (9th Cir. 2004). Summary judgment may be
affirmed on any ground supported by the record. Id.We review de novo whether a federal law preempts a state
law. See Radici v. Associated Ins. Cos., 217 F.3d 737, 740
(9th Cir. 2000). The district court’s interpretation of state law
is also reviewed de novo. See Rabkin v. Or. Health Scis.
Univ., 350 F.3d 967, 970 (9th Cir. 2003).
III. ANALYSIS
[1] The Copyright Clause of the U. S. Constitution provides
that “Congress shall have the Power . . . To promote the Prog-
ress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respec-
LAWS v. SONY MUSIC ENTERTAINMENT 5713
tive Writings and Discoveries . . . .” U.S. Const. art. I, § 8, cl.
8. Pursuant to this authority, Congress enacted the Copyright
Act, 17 U.S.C. § 101-1332, to define and protect the rights of
copyright holders. Under the Act, “the owner of copyright . . .
has the exclusive rights to do and to authorize” others to dis-
play, perform, reproduce or distribute copies of the work, and
to prepare derivative works. Id. § 106. The copyright is the
right to control the work, including the decision to make the
work available to or withhold it from the public.
[2] Sections 301(a) and (b) of Title 17 describe when the
Act preempts legal and equitable rights granted by state com-
mon law or statute. Section (a) states:
On and after January 1, 1978, all legal and equitable
rights that are equivalent to any of the exclusive
rights within the general scope of copyright as speci-
fied 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 . . . 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.
Id. § 301(a). Section (b) states:
Nothing in this title annuls or limits any rights or
remedies under the common law or statutes of any
State with respect to . . . subject matter that does not
come within the subject matter of copyright as speci-
fied by sections 102 and 103, including works of
authorship not fixed in any tangible medium of
expression . . . .
Id. § 301(b) (2000). Congress explained what the statute made
obvious: “[t]he intention of section 301 is to preempt and
abolish any rights under the common law or statutes of a State
5714 LAWS v. SONY MUSIC ENTERTAINMENT
that are equivalent to copyright and that extend to works,
within the scope of the Federal copyright law.” H.R. Rep. No.
94-1476, at 130 (1976); see also Maljack Prods. v. Good-
Times Home Video Corp., 81 F.3d 881, 888 (9th Cir. 1996).
We have adopted a two-part test to determine whether a
state law claim is preempted by the Act. We must first deter-
mine whether the “subject matter” of the state law claim falls
within the subject matter of copyright as described in 17
U.S.C. §§ 1021 and 103.2 Second, assuming that it does, we
1
§ 102. Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance with this title,
in original works of authorship fixed in any tangible medium of
expression, now known or later developed, from which they can
be perceived, reproduced, or otherwise communicated, either
directly or with the aid of a machine or device. Works of author-
ship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
2
§ 103. Subject matter of copyright: Compilations and derivative works
(a) The subject matter of copyright as specified by section 102
includes compilations and derivative works, but protection for a
work employing preexisting material in which copyright subsists
does not extend to any part of the work in which such material
has been used unlawfully.
(b) The copyright in a compilation or derivative work extends
only to the material contributed by the author of such work, as
distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting
material. The copyright in such work is independent of, and does
not affect or enlarge the scope, duration, ownership, or subsis-
tence of, any copyright protection in the preexisting material.
LAWS v. SONY MUSIC ENTERTAINMENT 5715
must determine whether the rights asserted under state law are
equivalent to the rights contained in 17 U.S.C. § 106, which
articulates the exclusive rights of copyright holders.3 See
Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003 (9th
Cir. 2001).
Laws alleges two causes of action. First, she asserts a claim
for protection of her voice, name and likeness under Califor-
nia’s common law right of privacy. To sustain this action,
Laws must prove: “(1) the defendant’s use of the plaintiff’s
identity; (2) the appropriation of plaintiff’s name or likeness
to defendant’s advantage, commercially or otherwise; (3) lack
of consent; and (4) resulting injury.” Eastwood v. Superior
Court, 198 Cal. Rptr. 342, 347 (Ct. App. 1983), superseded
by statute on other grounds as stated in KNB Enters. v. Mat-
thews, 92 Cal. Rptr. 2d 713 (Ct. App. 2000); see also Down-
ing, 265 F.3d at 1001. Second, Laws asserts a statutory
3
§ 106. Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright
under this title has the exclusive rights to do and to authorize any
of the following:
(1) to reproduce the copyrighted work in copies or phonore-
cords;
(2) to prepare derivative works based upon the copyrighted
work;
(3) to distribute copies or phonorecords of the copyrighted
work to the public by sale or other transfer of ownership, or by
rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and motion pictures and other audiovisual
works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other
audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted
work publicly by means of a digital audio transmission.
5716 LAWS v. SONY MUSIC ENTERTAINMENT
misappropriation or “right of publicity” claim under Califor-
nia Civil Code § 3344(a), which provides that:
Any person who knowingly uses another’s name,
voice, signature, photograph, or likeness, in any
manner, on or in products, merchandise, or goods, or
for purposes of advertising or selling, or soliciting
purchases of, products, merchandise, goods or ser-
vices, without such person’s prior consent . . . shall
be liable for any damages sustained by the person or
persons injured as a result thereof.
We have observed that “[t]he remedies provided for under
California Civil Code § 3344 complement the common law
cause of action; they do not replace or codify the common
law.” Downing, 265 F.3d at 1001. Nevertheless, for purposes
of our preemption analysis, section 3344 includes the ele-
ments of the common law cause of action. See id. (“Under
section 3344, a plaintiff must prove all the elements of the
common law cause of action” plus “knowing use” and “a
direct connection between the alleged use and the commercial
purpose.”). For convenience’s sake, we will refer to Laws’s
claims as “right of publicity” claims.
Sony does not argue that common law privacy actions and
statutory claims under section 3344 are preempted generally
by section 301; rather, it argues that they are preempted as
applied to the facts of this case. We thus turn to (1) whether
the subject matter of Laws’s right of publicity claims comes
within the subject matter of copyright, and (2) whether the
rights Laws asserts under California law are equivalent to
those created under the Copyright Act.
A. The “Subject Matter” of Copyright
[3] We first consider whether the subject matter of Laws’s
misappropriation claim is within the subject matter of the
Copyright Act. We conclude that it is. Sections 102 and 103
LAWS v. SONY MUSIC ENTERTAINMENT 5717
of the Act identify the works of authorship that constitute the
“subject matter” of copyright. Section 102 of the Act extends
copyright protection to “original works of authorship fixed in
any tangible medium of expression . . . from which they can
be . . . reproduced, . . . either directly or with the aid of a
machine or device.” 17 U.S.C. § 102(a). That section defines
a “work of authorship” to include “sound recordings.” Id.§ 102(a)(7). “A work is ‘fixed’ in a tangible medium of
expression when its embodiment in a copy or phonorecord, by
or under the authority of the author, is sufficiently permanent
or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration.”
Id. § 101. Laws’s master recordings held by Elektra are
plainly within these definitions.
Laws nevertheless contends that the subject matter of a
copyright claim and a right of publicity claim are substan-
tively different. She argues that a copyright claim protects
ownership rights to a work of art, while a right of publicity
claim concerns the right to protect one’s persona and likeness.
Sony, by contrast, contends that the subject matter of a right
of publicity in one’s voice is not different from a copyright
claim when the voice is embodied within a copyrighted sound
recording. Sony argues that once a voice becomes part of a
sound recording in a fixed tangible medium it comes within
the subject matter of copyright law.
Our jurisprudence provides strong guidance to the resolu-
tion of this question. In Sinatra v. Goodyear Tire & Rubber
Co., 435 F.2d 711 (9th Cir. 1970), Nancy Sinatra filed suit
against Goodyear Tire on the basis of an advertising cam-
paign that featured “These Boots Are Made for Walkin’,” a
song that Sinatra made famous. Goodyear Tire had obtained
a license from the copyright proprietor for the use of music,
lyrics, and arrangement of the composition. Goodyear Tire
subsequently used the music and lyrics in its ads, which were
sung by unknown vocalists. She alleged the song had taken on
5718 LAWS v. SONY MUSIC ENTERTAINMENT
a “secondary meaning” that was uniquely injurious to her. We
rejected her claim:
[A]ppellant’s complaint is not that her sound is
uniquely personal; it is that the sound in connection
with the music, lyrics and arrangement, which made
her the subject of popular identification, ought to be
protected. But as to these latter copyrightable items
she had no rights. Presumably, she was required to
obtain permission of the copyright owner to sing
“Boots”, and to make an arrangement of the song to
suit her own tastes and talents. Had she desired to
exclude all others from use of the song so that her
“secondary meaning” with the song could not be
imitated she could have purchased those rights from
the copyright proprietor. One wonders whether her
voice . . . would have been identifiable if another
song had been presented, and not “her song,” which
unfortunately for her was owned by others and
licensed to the defendants.
Id. at 716. Although Sinatra was decided prior to passage of
the modern-day preemption provision in section 301, we
nonetheless ruled that the Copyright Act impliedly preempted
Sinatra’s state law claim. Id. at 717-18. We later confirmed
this holding in Midler v. Ford Motor Co., 849 F.2d 460, 462
(9th Cir. 1988), when we observed that “[t]o give Sinatra
damages for [defendants’] use of the song would clash with
federal copyright law.”
In Midler, recording and performing artist Bette Midler
filed suit against an advertising agency and its client when a
professional “sound alike” was used to imitate Midler’s voice
from her hit song “Do You Want to Dance.” The agency did
not acquire a license to use Midler’s recording; instead, it had
obtained a license from the song’s copyright holder and then
attempted to get Midler to do the commercial. When Midler’s
agent advised the agency that she was not interested, the
LAWS v. SONY MUSIC ENTERTAINMENT 5719
agency hired someone who had been a backup singer for
Midler and could imitate her voice and style. Indeed, the
singer was instructed to sound as much like Bette Midler as
possible. We held that Midler’s common law misappropria-
tion claim was not preempted by copyright law because the
“thing” misappropriated, her voice, was not copyrightable in
that instance. We explained:
Midler does not seek damages for [the defendant’s]
use of “Do You Want To Dance,” and thus her claim
is not preempted by federal copyright law. Copyright
protects “original works of authorship fixed in any
tangible medium of expression.” A voice is not
copyrightable. The sounds are not “fixed.” What is
put forward as protectible here is more personal than
any work of authorship.
Id. at 462 (citation omitted). What Midler sought was relief
from an unauthorized vocal imitation for advertising pur-
poses, and that was not the subject of copyright.
[4] We subsequently applied Midler in Waits v. Frito-Lay,
Inc., 978 F.2d 1093 (9th Cir. 1992). The voice of Tom Waits,
a professional singer, songwriter, and actor, was imitated and
then broadcast in a commercial for Frito-Lay. Waits filed a
right of publicity claim under California law. We held that the
claim was not preempted by copyright law because it was “for
infringement of voice, not for infringement of a copyrightable
subject such as sound recording or musical composition.” Id.
at 1100. Thus, the issues in Waits were “whether the defen-
dants had deliberately imitated Waits’ voice rather than sim-
ply his style and whether Waits’ voice was sufficiently
distinctive and widely known to give him a protectible right
in its use. These elements are ‘different in kind’ from those
in a copyright infringement case challenging the unauthorized
use of a song or recording.” Id.[5] In this case, Laws’s voice misappropriation claim is
plainly different from the claims in Midler and Waits and falls
5720 LAWS v. SONY MUSIC ENTERTAINMENT
within the subject matter of copyright. In contrast to Midler
and Waits, where the licensing party obtained only a license
to the song and then imitated the artist’s voice, here Sony
obtained a license to use Laws’s recording itself. Sony was
not imitating “Very Special” as Laws might have sung it.
Rather, it used a portion of “Very Special” as sung by Debra
Laws. See also Brown v. Ames, 201 F.3d 654, 658 (5th Cir.
2000) (“The crucial difference between [this case and Daboub
v. Gibbons, 42 F.3d 285 (5th Cir. 1995)] is that in Daboub the
basis of the misappropriation claim . . . was the song itself,
bringing it within section 301’s ambit, whereas here the basis
of the misappropriation claim was defendants’ use of plain-
tiffs’ names and/or likenesses.”).
[6] Laws does not dispute Sony’s contention that the
recording of “Very Special” was a copyrighted sound record-
ing fixed in a tangible medium of expression. Laws’s right of
publicity claim is based exclusively on what she claims is an
unauthorized duplication of her vocal performance of the song
“Very Special.” Although California law recognizes an assert-
able interest in the publicity associated with one’s voice, we
think it is clear that federal copyright law preempts a claim
alleging misappropriation of one’s voice when the entirety of
the allegedly misappropriated vocal performance is contained
within a copyrighted medium. Our conclusion is consistent
with our holdings in Midler and Waits, where we concluded
that the voice misappropriation claim was not preempted,
because the alleged misappropriation was the imitation of the
plaintiffs’ voices. Neither of those imitations was contained in
a copyrighted vocal performance. Moreover, the fact that the
vocal performance was copyrighted demonstrates that what is
put forth here as protectible is not “more personal than any
work of authorship.” Midler, 849 F.2d at 462.
Laws points to two cases for support. Both cases, however,
involve photographs used in advertising, and are distinguish-
able from this case. In Downing, 265 F.3d 994, we held that
a claim based on the right of publicity was not preempted by
LAWS v. SONY MUSIC ENTERTAINMENT 5721
the Copyright Act. In Downing, retailer Abercrombie & Fitch
was developing a surfing theme—“Surf Nekkid”—for its sub-
scription catalog. Abercrombie published a photo of the plain-
tiffs, who were participants in a surf championship in Hawaii
in 1965. Abercrombie ran the photo, which it had purchased
from the photographer (who held the copyright), and it identi-
fied the plaintiffs by name. Abercrombie went well beyond
mere republication of the photograph. Without obtaining
plaintiffs’ consent to use their names and images, it also
offered t-shirts exactly like those worn by the plaintiffs in the
photo. We noted that the photograph itself was within the sub-
ject matter protected by the Copyright Act. But Abercrombie
had not merely published the photograph. Rather, it published
the photo in connection with a broad surf-themed advertising
campaign, identified the plaintiffs-surfers by name, and
offered for sale the same t-shirts worn by the plaintiffs in the
photo. By doing so, it had suggested that the surfers had
endorsed Abercrombie’s t-shirts. Accordingly, we concluded
that “it is not the publication of the photograph itself, as a cre-
ative work of authorship, that is the basis for [plaintiffs’]
claims, but rather, it is the use of the [plaintiffs’] likenesses
and their names pictured in the published photograph.” Id. at
1003; see also Brown, 201 F.3d at 656-57 (no preemption
where the record company used the names and likenesses of
musicians, song writers, and producers on compact disks,
tapes, catalogs and posters). We thus concluded that the claim
was not within the subject matter of copyright because “[a]
person’s name or likeness is not a work of authorship within
the meaning of 17 U.S.C. § 102.” Downing, 265 F.3d at 1004.
Laws also relies on a second case, Toney v. L’Oreal USA,
Inc., 406 F.3d 905 (7th Cir. 2005), in which the Seventh Cir-
cuit held that a claim under the Illinois Right of Publicity Act
was not preempted by the Copyright Act. Toney was a model
who had posed for photographs used to promote hair-care
products on packaging and in national advertisements. Defen-
dants owned the copyright for the photograph of Toney that
was used, and had a right to use it from November 1995 to
5722 LAWS v. SONY MUSIC ENTERTAINMENT
November 2000; any other use would be negotiated sepa-
rately. In apparent violation of their understanding, defen-
dants continued to use the photographs in their advertising
beyond 2000. Toney alleged that this use violated her right of
publicity under Illinois law. The Seventh Circuit concluded
that
Toney’s identity is not fixed in a tangible medium of
expression. There is no “work of authorship” at issue
in Toney’s right of publicity claim. A person’s
likeness—her persona—is not authored and it is not
fixed. The fact that an image of the person might be
fixed in a copyrightable photograph does not change
this. . . . The fact that the photograph itself could be
copyrighted, and that defendants owned the copy-
right to the photograph that was used, is irrelevant to
the [right of publicity] claim. . . . The defendants did
not have her consent to continue to use the photo-
graph . . . .
Id. at 910. The fact that the photograph was copyrighted could
not negate the fact that Toney had reserved artistic control
over her image for any period beyond the contractual time
frame. The Seventh Circuit concluded that Toney’s claim was
not preempted.4
In contrast, Jennifer Lopez’s song “All I Have” incorpo-
rated samples of Deborah Laws’s “Very Special” and gave
her the attribution negotiated by Elektra and Sony. Sony did
4
Toney differs from this case in a significant way: Toney brought her
right of publicity claim against L’Oreal U.S.A., Inc., the Wella Corp., and
Wella Personal Care of North America, Inc., which each at some point
held the copyright and had agreed not to use Toney’s likeness after 2000.
The facts of this case would be analogous to Toney if Laws had brought
her right of publicity claim against Elektra, which holds the copyright to
the song and may have agreed to licensing limitations. We express no
views on the correctness of Toney or its application to any claims against
Elektra.
LAWS v. SONY MUSIC ENTERTAINMENT 5723
not use Laws’s image, name, or the voice recording in any
promotional materials. Her state tort action challenges control
of the artistic work itself and could hardly be more closely
related to the subject matter of the Copyright Act.
We find more to the point, and quite persuasive, the Cali-
fornia Court of Appeal’s decision in Fleet v. CBS, Inc., 58
Cal. Rptr. 2d 645 (Ct. App. 1996). There, defendant CBS
owned the exclusive rights to distribute a motion picture in
which plaintiffs performed. A third party who financed the
operation of the movie refused to pay plaintiffs their previ-
ously agreed-to salaries. Plaintiffs brought suit against CBS
alleging, inter alia, that by airing the motion picture using
their names, pictures, and likenesses without their consent,
CBS had violated their statutory right of publicity. The Court
of Appeal held that the Copyright Act preempted the action.
As the court observed, “it was not merely [plaintiffs’] like-
nesses which were captured on film—it was their dramatic
performances which are . . . copyrightable.” Id. at 651.
“[O]nce [plaintiffs’] performances were put on film, they
became ‘dramatic work[s]’ ‘fixed in [a] tangible medium of
expression . . . .’ At that point, the performances came within
the scope or subject matter of copyright law protection,” and
the claims were preempted. Id. at 650; see also Downing, 265
F.3d at 1005 n.4 (“In Fleet, the plaintiffs were actors in a
copyrighted film. The claims of the plaintiffs were based on
their dramatic performance in a film CBS sought to distribute.
. . . This is clearly distinguishable from this case where the
Appellants’ claim is based on the use of their names and like-
nesses, which are not copyrightable.”). In effect, the plain-
tiffs’ right of publicity claim was a question of control over
the distribution, display or performance of a movie CBS
owned. Since CBS’s use of plaintiffs’ likenesses did not
extend beyond the use of the copyrighted material it held,
there was no right of publicity at issue, aside from the actors’
performances. Had the court held otherwise, each actor could
claim that any showing of the film violated his right to control
his image and persona.
5724 LAWS v. SONY MUSIC ENTERTAINMENT
Laws makes much of the fact that she possessed a right of
first refusal in all future uses of “Very Special” under the
original production agreement with Elektra. She contends that
this right expressly gives her control over the use of her name
and voice in connection with any use of “Very Special.” She
also contends that “[i]f the copyright holder itself, Elektra/
Asylum, was not ceded such rights, then as a matter of law its
licensee does not possess those rights.” In effect, Laws con-
tends that her contractual reservation gives her an interest in
the copyright and, concomitantly, renders Elektra’s copyright
partially subject to her control.
[7] We express no view as to the effect of Laws’s reserva-
tion in the production agreement and no view as to any reme-
dies that Laws may have against Elektra. Whether or not the
two parties contracted around the actual use of a copyright
does not affect our preemption analysis. To the extent that
Laws has enforceable, contractual rights regarding the use of
Elektra’s copyright, her remedy may lie in a breach of con-
tract claim against Elektra for licensing “Very Special” with-
out her authorization. See Grosso v. Miramax Film Corp., 383
F.3d 965, 968 (9th Cir. 2004).5
[8] In sum, we hold that Laws’s cause of action is within
the subject matter of copyright.
B. Equivalent Rights
[9] We must next determine whether the rights she asserts
under California law are equivalent to the rights protected
under the Copyright Act. We conclude that they are. In Del
Madera Props. v. Rhodes & Gardner, 820 F.2d 973 (9th Cir.
1987), overruled on other grounds, Fogerty v. Fantasy, Inc.,
510 U.S. 517 (1994), we outlined the test for determining
5
Counsel represented to this Court during oral argument that it had in
fact filed a breach of contract claim in state court.
LAWS v. SONY MUSIC ENTERTAINMENT 5725
whether state rights were “equivalent” to those under the
Copyright Act:
To satisfy the “equivalent rights” part of the preemp-
tion test . . . the . . . alleged misappropriation . . .
must be equivalent to rights within the general scope
of copyright as specified by section 106 of the Copy-
right Act. Section 106 provides a copyright owner
with the exclusive rights of reproduction, preparation
of derivative works, distribution, and display. To
survive preemption, the state cause of action must
protect rights which are qualitatively different from
the copyright rights. The state claim must have an
extra element which changes the nature of the action.
Id. at 977 (quotations and citations omitted). In Del Madera
Properties, the plaintiff alleged that the defendants had alleg-
edly misappropriated a copyrighted land map to plan a new
development. Plaintiff advanced an unfair competition claim
and argued that it was qualitatively different from copyright
because the unfair competition claim required the breach of a
fiduciary duty, an element not required under copyright. We
squarely rejected Del Madera’s argument:
This argument . . . does not add any “extra element”
which changes the nature of the action. The argu-
ment is constructed upon the premise that the docu-
ments and information . . . belonged to Del Madera
and were misappropriated by the defendants. Del
Madera’s ownership of this material, and the alleged
misappropriation by the defendants, are part and par-
cel of the copyright claim.
Id.; see also Harper & Row, Publishers, Inc. v. Nation
Enters., 501 F. Supp. 848, 853-54 (S.D.N.Y. 1980) (“[T]he
contract claim is redundant because the additional elements
. . . do not afford plaintiff rights that are ‘different in kind’
5726 LAWS v. SONY MUSIC ENTERTAINMENT
from those protected by the copyright laws.”), rev’d on other
grounds, 471 U.S. 539 (1985).
[10] Laws contends that her right of publicity claim under
California Civil Code § 3344 requires proof of a use for a
“commercial purpose,” which is not an element of a copyright
infringement claim. She concedes that a right which is the
“equivalent to copyright” is one that is infringed by the mere
act of reproduction; however, she argues that her claim is not
based on Sony’s mere act of reproduction, but “is for the use
of . . . Laws’[s] voice, the combination of her voice with
another artist, and the commercial exploitation of her voice
and name in a different product without her consent.”
Sony argues that Laws’s claims are based exclusively on
the reproduction of “Very Special” in “All I Have.” It asserts
that the rights protected under Laws’s voice misappropriation
claim are not qualitatively different from the rights protected
under copyright law because the sole basis for her voice mis-
appropriation claim is the unauthorized reproduction of her
copyrighted vocal performance.
[11] The essence of Laws’s claim is, simply, that she
objects to having a sample of “Very Special” used in the Jen-
nifer Lopez-L.L. Cool J recording. But Laws gave up the right
to reproduce her voice—at least insofar as it is incorporated
in a recording of “Very Special”—when she contracted with
Elektra in 1981 and acknowledged that Elektra held the “sole
and exclusive right to copyright such master recordings,”
including the right “to lease, license, convey or otherwise use
or dispose of such master recordings.” At that point, Laws
could have either retained the copyright, or reserved contrac-
tual rights in Elektra’s use of the recording. Indeed, Laws
claims that the latter is precisely what she did. But if Elektra
licensed “Very Special” to Sony in violation of its contract
with Laws, her remedy sounds in contract against Elektra, not
in tort against Sony.
LAWS v. SONY MUSIC ENTERTAINMENT 5727
[12] The mere presence of an additional element
(“commercial use”) in section 3344 is not enough to qualita-
tively distinguish Laws’s right of publicity claim from a claim
in copyright. The extra element must transform the nature of
the action. Although the elements of Laws’s state law claims
may not be identical to the elements in a copyright action, the
underlying nature of Laws’s state law claims is part and par-
cel of a copyright claim. See Fleet, 58 Cal. Rptr. 2d at 649.
Under the Act, a copyright owner has the exclusive right “to
reproduce the copyrighted work.” 17 U.S.C. § 106(1). Laws’s
claims are based on the premise that Sony reproduced a sam-
ple of “Very Special” for commercial purposes without her
permission. But Sony obtained a limited license from the
copyright holder to use the copyrighted work for the Lopez
album. The additional element of “commercial purpose” does
not change the underlying nature of the action. See Motown
Record Corp. v. George A. Hormel & Co., 657 F. Supp. 1236,
1239-40 (C.D. Cal. 1987).
IV. CONCLUSION
Both copyright and the right of publicity are means of pro-
tecting an individual’s investment in his or her artistic labors.
As the Court said of copyright:
The economic philosophy behind the clause empow-
ering Congress to grant patents and copyrights is the
conviction that encouragement of individual effort
by personal gain is the best way to advance public
welfare through the talents of authors and inventors
in “Science and useful Arts.” Sacrificial days
devoted to such creative activities deserve rewards
commensurate with the services rendered.
Mazer v. Stein, 347 U.S. 201, 219 (1954). Similarly, the
Supreme Court has said that the
right of publicity . . . rests on more than a desire to
compensate the performer for the time and effort
5728 LAWS v. SONY MUSIC ENTERTAINMENT
invested in his act; the protection provides an eco-
nomic incentive for him to make the investment
required to produce a performance of interest to the
public.
Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576
(1977). On the one hand, we recognize that the holder of a
copyright does not have “a license to trample on other peo-
ple’s rights.” See J. Thomas McCarthy, The Rights of Public-
ity and Privacy § 11:60, at 788 (2d ed. 2005). On the other
hand, however, the right of publicity is not a license to limit
the copyright holder’s rights merely because one disagrees
with decisions to license the copyright. We sense that, left to
creative legal arguments, the developing right of publicity
could easily supplant the copyright scheme. This, Congress
has expressly precluded in § 301. Were 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. We foresaw this distinct possibility in
Sinatra:
An added clash with the copyright laws is the poten-
tial restriction which recognition of performers’
“secondary meanings” places upon the potential
market of the copyright proprietor. If a proposed
licensee must pay each artist who has played or sung
the composition and who might therefore claim
unfair competition-performer’s protection, the
licensee may well be discouraged to the point of
complete loss of interest.
Sinatra, 435 F.2d at 718. It is hard to imagine how a copy-
right would remain meaningful if its licensees were poten-
tially subject to suit from any performer anytime the
copyrighted material was used.
To be clear, we recognize that not every right of publicity
claim is preempted by the Copyright Act. Our holding does
LAWS v. SONY MUSIC ENTERTAINMENT 5729
not extinguish common law or statutory rights of privacy,
publicity, and trade secrets, as well as the general law of defa-
mation and fraud (or any other similar causes of action), so
long as those causes of action do not concern the subject mat-
ter of copyright and contain qualitatively different elements
than those contained in a copyright infringement suit. Elektra
copyrighted Laws’s performance of “Very Special” and
licensed its use to Sony. If Laws wished to retain control of
her performance, she should (and may) have either retained
the copyright or contracted with the copyright holder, Elektra,
to give her control over its licensing. In any event, her rem-
edy, if any, lies in an action against Elektra, not Sony.
[13] We therefore agree with the district court’s conclusion
that Laws’s right of publicity claims are preempted by the
Copyright Act. The judgment is
AFFIRMED.