Laws v. Sony: Right of Publicity

The Ninth Circuit held that a right-of-publicity claim over a licensed vocal sample was preempted by the Copyright Act, drawing the line at imitation.

In Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006), decided May 24, 2006, the United States Court of Appeals for the Ninth Circuit drew one of the sharpest boundaries in the law of voice: the line between imitating a singer, which the right of publicity can reach, and using a singer’s actual recording, which copyright preempts. Debra Laws recorded the song “Very Special” in 1981 under a contract that gave Elektra the exclusive rights to her master. Two decades later, Sony obtained a license from Elektra’s agent to sample that recording in “All I Have,” a hit by Jennifer Lopez featuring LL Cool J. Sony did not seek Laws’s permission or pay her directly. Laws sued in California, asserting invasion of privacy and a statutory right of publicity under California Civil Code section 3344. Writing for the panel, Judge Jay Bybee affirmed summary judgment for Sony, holding that the Copyright Act preempted her claims because they targeted the fixed recording itself.

The decision is the leading Ninth Circuit authority for the proposition that copyright preemption bars a right-of-publicity claim when the defendant uses a plaintiff’s own sound recording rather than an imitation of her voice. It marks the doctrinal fault line running through the circuit’s voice cases.

At a glance

Case: Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006).
Decided: May 24, 2006 by Judge Jay Bybee for the panel; district court summary judgment for Sony affirmed.
Holding: Where a claim seeks to control the use of a copyrighted sound recording, a California right-of-publicity or privacy claim is preempted under 17 U.S.C. section 301 because it asserts rights equivalent to the exclusive rights of copyright.
Significance: The controlling limit distinguishing preempted actual-recording claims from non-preempted voice-imitation claims like Midler and Waits.

The preemption frame under section 301

Section 301 of the Copyright Act preempts state-law claims that satisfy two conditions. First, the subject matter of the claim must fall within the subject matter of copyright as defined in sections 102 and 103, meaning original works of authorship fixed in a tangible medium, including sound recordings. Second, the rights asserted under state law must be equivalent to any of the exclusive rights within the general scope of copyright set out in section 106, which include reproduction, distribution, and the preparation of derivative works. When both conditions are met, federal copyright law occupies the field and the state claim cannot proceed.

The equivalency inquiry often turns on whether the state claim requires an “extra element” that changes the nature of the action so that it is qualitatively different from a copyright claim. A claim that merely dresses up an objection to copying or distribution in the language of another tort does not survive. The court’s task in Laws was to decide on which side of that line a right-of-publicity claim over a licensed vocal sample fell.

The facts and the licensing chain

Laws recorded “Very Special” in 1981 for Elektra, which under the recording agreement held the exclusive rights to the master recording. In 2002, Sony, through Epic Records, wanted to sample a portion of that recording for “All I Have.” It obtained a license from Warner Special Products, acting for Elektra, and incorporated the sample into the new song. The transaction ran through the owner of the recording, not through Laws. She received neither a request for consent nor a direct payment, and she objected to the appearance of her voice in the Lopez track.

Her theory was that the use of her voice appropriated her identity and invaded her privacy under California law. Sony removed the case to federal court and moved for summary judgment on preemption grounds, which the district court granted. The Ninth Circuit affirmed.

The holding: the claim targeted the recording

The panel held that both prongs of section 301 were satisfied. The sampled vocal performance was a fixed sound recording, squarely within the subject matter of copyright. And Laws’s claim, however phrased, was in substance an effort to control the reproduction and distribution of that recording. What she objected to was that her recorded voice, captured in a copyrighted master, had been copied into another work. That is precisely the interest copyright protects through the section 106 rights. The “commercial use” element of her publicity claim did not supply a qualitatively different extra element, because the gravamen remained the unauthorized use of the fixed recording.

The court was careful about what it was not holding. It did not say that all voice claims are preempted. It said that a claim which, at bottom, seeks to prevent the copying of a copyrighted recording is equivalent to a copyright claim and therefore preempted. Laws’s recourse, the panel suggested, lay in contract against Elektra, the party that owned and licensed the master, not in a state tort against the licensee.

Where the line runs: Midler, Waits, and imitation

The decision’s enduring value is the contrast it draws with the circuit’s voice-imitation cases. In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), Ford’s agency hired a singer to imitate Bette Midler’s distinctive rendition of a song after Midler declined to participate, using no recording she had made. In Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), an advertiser similarly used a Tom Waits sound-alike. Those claims survived because an imitation of a voice is not itself copyrightable subject matter. Nothing fixed and owned by a copyright holder was being copied; what was appropriated was the identity conveyed by a distinctive vocal style, an interest outside copyright’s subject matter and therefore outside section 301.

Laws completes the picture. When the defendant uses the plaintiff’s actual recording, the subject-matter prong is satisfied and the claim is preempted. When the defendant imitates the plaintiff’s voice without using any recording, the subject-matter prong fails and the claim proceeds. The dividing question is not whether a voice was used but whether a fixed, copyrighted recording of that voice was the thing appropriated.

Open questions

How far does the reasoning reach? Laws involved a licensed sample. The opinion did not fully address how preemption applies where the underlying recording use is itself unlicensed or infringing.
What counts as more than the recording? The court found no qualitatively different extra element, but the boundaries of what additional facts might convert a recording-based claim into a non-preempted identity claim remain contested.
Does the licensing chain matter? Because Elektra owned the master, Laws’s remedy was said to lie in contract. The result for an artist who retained rights, or whose contract was silent, is less clear.
How do voice-cloning technologies fit? Synthesized voices that neither copy a specific recording nor merely imitate a live performance sit uneasily on the line the case draws, a tension sharpened by later digital-replica statutes.

Implications for creators and businesses

Own or license the master, and read the contract. For recorded performances, control usually rests with the entity that owns the sound recording. Artists who want a say over sampling must secure it by contract, because the right of publicity may be preempted.
Imitation and recording are legally different. Using a sound-alike raises voice-misappropriation exposure that copyright does not preempt, while using the real recording shifts the analysis into copyright and its licensing regime. Clearance strategy should track which one is involved.
Preemption is a real defense to voice claims. Defendants who properly license a recording from its owner have a strong preemption argument against a separate publicity suit by the featured performer over the same use.
Digital replicas need their own analysis. As synthetic voices proliferate, parties should not assume Laws answers every question, because a cloned voice may implicate neither a specific copyrighted recording nor a live imitation.

Frequently asked questions

Why was Debra Laws’s right-of-publicity claim preempted by copyright? Sony used Laws’s actual copyrighted sound recording, licensed from the label that owned it, rather than imitating her voice. The Ninth Circuit applied the two-part test under 17 U.S.C. section 301: the vocal performance is fixed subject matter within copyright, and Laws was effectively asserting control over reproduction of that recording, a right equivalent to copyright’s exclusive rights. With no qualitatively different extra element, the state claim was preempted.

How is Laws different from Midler v. Ford? In Midler, Ford hired a singer to imitate Bette Midler’s distinctive voice without using any recording she made. An imitation is not itself copyrightable subject matter, so the claim escaped preemption and could proceed as a voice-misappropriation tort. In Laws, the defendant used the plaintiff’s real recording, which is copyrightable subject matter, so the claim collided with copyright and was preempted.

Did Debra Laws have any remedy? The court suggested her recourse, if any, lay in contract against Elektra, the label that held the exclusive rights to her master recording and licensed it to Sony, rather than in a tort claim against Sony. Whether she could recover would depend on the terms of her recording agreement, not on California’s right of publicity.