Laws v. Sony Music Entertainment, Inc.

• Decision Date: 24 May 2006
• Docket Number: No. 03-57102.,03-57102.
• Citation: 448 F.3d 1134
• Parties: Debra LAWS, Plaintiff-Appellant, v. SONY MUSIC ENTERTAINMENT, INC., d/b/a Epic Records, a Delaware corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

448 F.3d 1134

Debra LAWS, Plaintiff-Appellant, v. SONY MUSIC ENTERTAINMENT, INC., d/b/a Epic Records, a Delaware corporation, Defendant-Appellee.

No. 03-57102.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted September 12, 2005.

Filed May 24, 2006.

Rickey Ivie and Kendall E. James of Ivie, McNeill & Wyatt, Los Angeles, CA, for Plaintiff-Appellant.

Russell J. Frackman, David A. Steinberg, and Paul Guelpa of Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA, for Defendant-Appellee.

Appeal from the United States District Court for the Central District of California; Lourdes G. Baird, District Judge, Presiding. D.C. No. CV-03-02038-LGB.

Before FARRIS, FERNANDEZ, and BYBEE, Circuit Judges.

BYBEE, Circuit Judge.

Plaintiff Debra Laws ("Laws") brought suit against defendant Sony Music Entertainment, Inc. ("Sony") for misappropriating 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 recording of "Very Special" and held that Laws's claims for violation 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 recording 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 biographical material concerning the Artist . . . in connection with such master recordings." Notwithstanding these provisions, Elektra agreed that "we shall not, without your prior written consent, utilize or authorize others to utilize the Masters 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 premiums 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 Products, Inc., entered into an agreement with Sony Music Entertainment, 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 Jennifer 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 Special" 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 claims. The two claims relevant to this appeal were: (1) a common law claim for invasion of privacy for the misappropriation of Laws's name and voice and (2) a claim for misappropriation 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 Elektra 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

The Copyright Clause of the U.S. Constitution provides that "Congress shall have the Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective 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 display, 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.

Sections 301(a) and (b) of Title 17 describe when the Act preempts legal and equitable rights granted by state common 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 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 . . . 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 specified 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 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. GoodTimes 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 determine 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 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 California'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, 149 Cal.App.3d 409, 198 Cal.Rptr. 342, 347 (1983), superseded by statute on other grounds as stated in KNB Enters. v. Matthews, 78 Cal.App.4th 362, 92 Cal.Rptr.2d 713 (2000); see also Downing, 265 F.3d at 1001. Second, Laws asserts a statutory misappropriation or "right of publicity" claim under California 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 services, 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 elements 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...