The U.S. Court of Appeals for the Ninth Circuit ruled that a vocalist’s state law claims, based on protection of a performer’s voice, were pre-empted by the Copyright Act in Debra Laws v. Sony Music Entertainment, Case No. 03-57102 (9th Cir. May 24, 2006) (Bybee, J.).
Debra Laws entered into a recording agreement with Elektra/Asylum Records in 1979. This agreement gave Elektra numerous rights in Laws’ recordings, including the exclusive rights to the song "Very Special," which Laws recorded and released in 1981. In turn, Elektra granted Sony a non-exclusive license to sample Laws’ "Very Special" in the 2002 hit single, "All I Have," performed by Jennifer Lopez and LL Cool J.
In February 2003, Laws brought an action in California state court claiming violations of her common law right to privacy and statutory right of publicity based on Sony’s alleged misappropriation of her name and voice. The case was removed to federal district court, which found that the Copyright Act pre-empted both of Laws’ state claims.
On appeal the Ninth Circuit used a two-part test to determine whether the Copyright Act pre-empted Laws’ state law claims. In the first part of the test, the Court assessed whether the subject matter of Laws’ state law claims fell within the subject matter of the Copyright Act. The court found this first prong was satisfied because "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."
Second, the court found that the rights Laws asserted under California law were equivalent to the rights protected under the Copyright Act. In its analysis, the court used the test set forth in Del Madera: "[t]o 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." Although Laws tried to argue that her right of publicity claim required proof of use for a "commercial purpose," the court found that "the mere presence of an additional element…is not enough to qualitatively distinguish Laws’ right of publicity claim from a claim in copyright. The extra element must transform the nature of the action." Because the court found that the "underlying nature of Laws’ state law claims is part and parcel of a copyright claim," the second prong of the test was satisfied.
The court also noted that "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." Were this the case, "virtually every use of a copyrighted sound recording would infringe upon the original performer’s right of publicity."
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