50 F.4th 294
2d Cir.2022Background
- John "Stuttering John" Melendez was an on-air contributor to The Howard Stern Show from 1988–2004; Sirius XM later licensed the show’s archives and airs current and archival episodes that include Melendez.
- Sirius XM used audio/visual excerpts from those archival episodes in online and on‑air advertisements promoting the Howard Stern Show and Sirius XM’s platform.
- Melendez sued under California common law and Cal. Civ. Code § 3344, alleging unauthorized commercial use of his name/likeness (voice/persona) and seeking damages.
- The district court dismissed the amended complaint with prejudice, holding the claims were preempted by the Copyright Act (17 U.S.C. § 301) and denying leave to amend as futile.
- The Second Circuit affirmed: Melendez’s allegations challenged the reproduction/distribution of copyrightable recordings (sound recordings/audiovisual works), not a separate use of his identity; therefore the state‑law right‑of‑publicity claims were preempted and amendment would be futile.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Melendez’s claims fall within the subject‑matter of copyright (i.e., whether the challenged use targets copyrightable works or the plaintiff’s identity itself) | Melendez: the alleged harm targets his identity/attributes, not the recordings; his attributes are not fixed copyrightable works | Sirius XM: challenged uses are excerpts of archived recordings fixed in a tangible medium (sound recordings/audiovisual works) | Held: Subject‑matter prong satisfied — claims target copyrighted/copyrightable recordings (excerpts), not an independent use of identity |
| Whether Melendez’s state‑law claims are equivalent to exclusive rights under §106 (general‑scope/equivalence preemption) | Melendez: California law requires a commercial‑use element (an “extra element”) which makes the claim qualitatively different from copyright infringement | Sirius XM: the commercial‑use requirement does not change the nature of the claim because the asserted right seeks to control reproduction/distribution of the works | Held: General‑scope prong satisfied — the right asserted is equivalent to copyright exclusive rights; commercial‑use element insufficient to avoid preemption |
| Whether the excerpts could reasonably be construed as implying Melendez’s endorsement (i.e., an “identity‑emphasis” that avoids preemption) | Melendez: airing excerpts on non‑HS channels or platform‑wide promos could imply endorsement or wider exploitation of his persona | Sirius XM: ads merely promote access to archival HS Show content; audience would not plausibly infer individual endorsement by featured participants | Held: Implausible that audience would construe the ads as Melendez’s endorsement; no factual allegations that excerpts were manipulated to emphasize identity |
| Whether the district court abused its discretion by denying leave to amend (futility) | Melendez: he can cure pleading defects and could allege additional facts if given leave | Sirius XM: plaintiff failed to identify any plausible facts that would overcome statutory preemption | Held: Denial affirmed — Melendez did not propose plausible amendments; repleading would be futile |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading must state a plausible claim; courts need not accept conclusory allegations)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (established the plausibility standard for pleadings)
- In re Jackson, 972 F.3d 25 (2d Cir. 2020) (applied the two‑prong §301 preemption test to right‑of‑publicity claims; distinguished identity‑emphasis from mere use of copyrighted work)
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir. 2004) (describes subject‑matter and equivalence analysis for §301 preemption)
- Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) (preemption when state claim is indistinguishable from federal copyright claim)
- Laws v. Sony Music Ent., Inc., 448 F.3d 1134 (9th Cir. 2006) (commercial‑use element does not automatically avoid preemption where state claim seeks to control distribution of copyrighted work)
- Maloney v. T3Media, Inc., 853 F.3d 1004 (9th Cir. 2017) (right‑of‑publicity claims preempted where plaintiffs challenged distribution of copyrighted images)
- Waits v. Frito‑Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (contrast: use of a voice impersonation in an ad found actionable under publicity law)
- Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (contrast: imitation of a singer’s voice in advertisement supports publicity claim)