Melendez v. Sirius XM Radio, Inc.

• Docket Number: 21-1769-cv,August Term 2021
• Decision Date: 04 October 2022
• Citation: 50 F.4th 294
• Parties: John Edward MELENDEZ, Plaintiff-Appellant, v. SIRIUS XM RADIO, INC., A Delaware Corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

50 F.4th 294

John Edward MELENDEZ, Plaintiff-Appellant,

v.SIRIUS XM RADIO, INC., A Delaware Corporation, Defendant-Appellee.

No. 21-1769-cv

August Term 2021

United States Court of Appeals, Second Circuit.

Argued: March 8, 2022

Decided: October 4, 2022

Michael S. Popok, Zumpano Patricios & Popok, PLLC, New York, NY, for Plaintiff-Appellant.

Mark A. Baghdassarian, Kramer Levin Naftalis & Frankel LLP, New York, NY, for Defendant-Appellee.

Before: Lohier, Bianco, and Robinson, Circuit Judges.

Joseph F. Bianco, Circuit Judge:

Plaintiff John Edward Melendez ("Melendez" or "plaintiff") appeals from the judgment of the United States District Court for the Southern District of New York (Crotty, J .), which granted the motion to dismiss the claims with prejudice that he brought against Sirius XM Radio, Inc. ("Sirius XM"), a satellite and streaming radio provider, for alleged violations of his right of publicity under both California common and statutory law.

The claims at issue arise from Melendez's performance under the moniker "Stuttering John" on The Howard Stern Show (the "HS Show") from 1988 until 2004. Two years after Melendez left the HS Show, Sirius XM reached an agreement through which it obtained a license to air current, newly-released episodes, as well as full and partial past episodes from the HS Show's archives. Melendez appears in many of these archival episodes, excerpts of which Sirius XM uses in its online and on-air advertisements to promote the HS Show. Melendez claims that these advertisements violate his right of publicity under California common and statutory law because his identity, persona, name, and image have been exploited for Sirius XM's commercial gain without his permission.

We agree with the district court that Melendez failed to plausibly allege any use of his name or likeness that is separate from, or beyond, the rebroadcasting, in whole or in part, of the copyrightable material from the HS Show's archives and, thus, his right of publicity claims are preempted by the federal Copyright Act, 17 U.S.C. § 301. Moreover, because Melendez has failed to articulate any allegations that he could add in a second amended complaint that overcome preemption in this case, we conclude that the district court correctly determined that any leave to re-plead would be futile and properly dismissed the claims with prejudice.

Accordingly, for the reasons set forth below, we AFFIRM the judgment of the district court.

BACKGROUND

I. Factual Summary¹

Melendez describes himself as a "well-known celebrity admired by tens of millions of fans" for over thirty years. Joint App'x at 10. He began his career in the entertainment industry as an unpaid college intern for the HS Show in 1988. Soon thereafter, Howard Stern ("Stern"), the HS Show's creator and host, learned that Melendez suffered from a speech impediment and sought to exploit his stutter on-air for comedic effect. Branded "Stuttering John," Melendez contributed regularly to the HS Show, becoming well-known for the interviews he conducted with politicians and celebrities that featured "impertinent, confrontational, and intentionally clueless questions in the street, at red carpet events and during promotional appearances and press conferences to shock his targets and elicit laughs." Joint App'x at 13. Melendez remained a writer and on-air contributor on the HS Show until February 2004, when he departed to become an announcer and performer on The Tonight Show with Jay Leno.

Two years after Melendez left the HS Show, Stern reached a five-year, $500 million agreement with Sirius XM through which Sirius XM acquired a license to air the HS Show on two Stern-centric channels. The agreement stipulated that one channel would air current, newly released episodes of the HS Show, while the other would air full and partial past episodes from the HS Show's archives. Melendez alleges that every episode in which he participated throughout his fifteen years on the HS Show was digitally recorded and stored in the archives licensed to Sirius XM. In total, Melendez estimates that the archives contain approximately 13,000 hours of episodes where his voice, name, and identity are featured.

Since entering the licensing agreement with Stern, Sirius XM has used audio and visual segments of archival episodes to advertise the HS Show, both online and on-air. Certain of these advertisements feature Melendez. According to Melendez, Sirius XM never obtained his consent before using his name or likeness.² Melendez claims that these advertisements have enhanced Sirius XM's subscription base and attracted and retained subscribers to Sirius XM and its Stern-centric channels, all at his expense.

II. Procedural History

On August 19, 2020, Melendez filed a complaint against Sirius XM in the Southern District of New York, which he then amended on January 6, 2021. His amended complaint contains two claims, both alleging that Sirius XM breached his right of publicity under California law—one claim under California common law and the other claim under California statutory law, California Civil Code § 3344.

Sirius XM subsequently moved to dismiss Melendez's amended complaint, and the district court granted the motion on June 24, 2021. Judgment was entered the following day. In dismissing the amended complaint with prejudice, the district court reasoned that the federal Copyright Act preempted Melendez's claims. Specifically, the district court explained, Melendez failed to "plead any facts plausibly suggesting that Sirius [XM's] intended audience could reasonably construe advertisements of the HS Show featuring Melendez as Stuttering John as Melendez's endorsement of Sirius XM or any of its non-HS Show channels." Melendez v. Sirius XM Radio, Inc. , No. 1:20-CV-6620-PAC, 2021 WL 2593471, at *5 (S.D.N.Y. June 24, 2021). Moreover, the district court found that Melendez's right of publicity claims were "effectively claims for the wrongful rebroadcasting of copyrightable sound recordings." Id. at 6. Thus, his allegations were "not qualitatively different from copyright infringement claims" and were therefore subject to preemption. Id . The district court also denied Melendez leave to file a second amended complaint, reasoning that "[r]epleading would be futile, because Plaintiff's claims have a substantive problem rather than an issue of inartful pleading." Id . This appeal followed.

DISCUSSION

I. Standard of Review

We review the district court's grant of Sirius XM's motion to dismiss de novo , "accepting all factual allegations in the complaint as true and drawing all reasonable inferences in favor of the plaintiff." Olson v. Major League Baseball , 29 F.4th 59, 71 (2d Cir. 2022). For the amended complaint to survive a motion to dismiss brought under Federal Rule of Civil Procedure 12(b)(6), it "must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." Iqbal , 556 U.S. at 678, 129 S.Ct. 1937 (internal quotation marks omitted). A claim is plausible on its face "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id . Accordingly, "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id .

II. The Right of Publicity Under California Law

Melendez brings his right of publicity claims under California law.³ California law contains both a common law and a statutory basis for such claims. Melendez alleges that Sirius XM violated his rights under both bases of liability.

A. California Common Law

California common law recognizes a "right of privacy for protection of a person's name and likeness against appropriation by others for their advantage." Downing v. Abercrombie & Fitch , 265 F.3d 994, 1001 (9th Cir. 2001). This "so-called right of publicity" has been defined by the California Supreme Court as, in essence, an acknowledgement that

the reaction of the public to name and likeness, which may be fortuitous or which may be managed or planned, endows the name and likeness of the person involved with commercially exploitable opportunities. The protection of name and likeness from unwarranted intrusion or exploitation is the heart of the law of privacy.

Lugosi v. Universal Pictures , 25 Cal. 3d 813, 824, 160 Cal.Rptr. 323, 603 P.2d 425 (1979).

California courts require plaintiffs to satisfy several elements in order to prevail on a common law cause of action for misappropriation of the right of publicity. These elements are: "(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." Gionfriddo v. Major League Baseball , 94 Cal.App.4th 400, 114 Cal. Rptr. 2d 307, 313 (2001).

B. California Statutory Law

In 1971, California codified the right of publicity and created a statutory basis to bring such a claim. The operative statute authorizes "recovery of damages by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent." Comedy III Prods., Inc. v. Gary Saderup, Inc. , 25 Cal. 4th 387, 391, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001). Specifically, California Civil Code Section 3344 (" Section 3344") provides:

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.

Cal. Civ. Code § 3344(a).

This statute "is best understood as ‘complementing,’ rather than enacting, the common law cause of action, because the two are not identical." Abdul-Jabbar v. Gen. Motors Corp. , 85 F.3d...