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IP Law Daily, PUBLICITY RIGHTS—2nd Cir.: Well-known broadcaster’s claims are stymied by Copyright Act preemption, (Oct 5, 2022)

Law Firms Mentioned:Kramer Levin Naftalis & Frankel LLP
Organizations Mentioned:Kramer Levin Naftalis & Frankel, LLP | Sirius XM Radio, Inc. | Zumpano Patricios & Popok, PLLC

By Matthew Hersh, J.D.

“Stuttering John,” once a fixture on the Howard Stern show, could not sue Sirius XM for the use of his name, image, or likeness.“Stuttering John,” once a fixture on the Howard Stern show, could not sue Sirius XM for the us ...

By Matthew Hersh, J.D.

“Stuttering John,” once a fixture on the Howard Stern show, could not sue Sirius XM for the use of his name, image, or likeness.“Stuttering John,” once a fixture on the Howard Stern show, could not sue Sirius XM for the use of his name, image, or likeness.

A radio broadcaster who became famous for exploiting his speech impediment for humorous effect—no doubt from a time when popular culture was less sensitive to persons facing similar challenges—was precluded by the Copyright Act’s preemption doctrine from claiming that a radio station re-broadcast tapes of his performance, the U.S. Court of Appeals for the Second Circuit has held. The court, affirming the decision of the federal district court for Manhattan, found that the case fit easily within the preemption doctrine because the station exploited no aspect of the broadcaster’s personality beyond what was embedded in the studio tapes (Melendez v. Sirius XM Radio, Inc., October 4, 2022, Lohier, R.).

The lawsuit involves the performances of John Edward Melendez, better known as “Stuttering John” from his performances on the Howard Stern radio show between 1988 and 2004. Melendez became well-known for the interviews he conducted with politicians and celebrities that featured, as he characterized in his complaint, “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.”

Two years after Melendez left the Howard Stern Show, Stern reached a five-year, $500 million agreement with Sirius XM through which Sirius XM acquired a license to air both newly released as well as back episodes of the show. Melendez sued, alleging that the airing of shows containing his performances constituted a violation of his right of publicity under California law. The Manhattan court found that the claim was preempted under Section 301 of the Copyright Act. Melendez appealed, leading to this opinion.

Preemption. The court of appeals easily affirmed the preemption decision. Under well-established preemption doctrine, the court noted, courts impose a “subject matter” test as well as a “general scope” or “equivalence” test. The subject matter element of the test, the court explained, is satisfied when the plaintiff’s claim applies to a work of authorship fixed in a tangible medium of expression and falling within the ambit of one of the categories of copyrightable works. The equivalence test is met, the court noted, when the challenged act “by itself,” infringes one of the exclusive rights provided by federal copyright law. Here, both prongs of the test were met.

The subject matter requirement of the test was met, the court noted, because the focus of Melendez’s claim was less “the recognizable sound of his voice (which is not within the subject matter of copyright)” but rather “the copyrighted work in which that voice is embodied (which, of course, is within the subject matter of copyright).” In general, the court reasoned, the more a defendant has used a copyrighted work for its own value, as opposed to using it to exploit the depicted plaintiff’s identity, the more the right of publicity claim is subject to preemption as “a disguised effort to control the dissemination of the work.” That is exactly what was happening here, the court found. The complaint contained no allegations that Melendez’s name or likeness was extracted in any way to appear independently from how it originally appeared in the archival episodes, the court observed, or that the excerpts were manipulated in some manner to bring his identity into focus. Thus, the court concluded, Melendez’s allegations “are directed at the copyrighted works in which he appears—the archival episode recordings—and not toward any separate use of his name or likeness.”

The claim also easily met the equivalence requirement, the court found. Melendez complained only of the public performance of recordings in which he appeared, but no other meaningful activity. To be sure, the court noted, the complaint alleged that Sirius used those works for a “commercial” purpose—but most copyright infringement actions complain of commercial use, so that was not a meaningful difference. It might have been different, the court noted, if Sirius were accused of using the tapes not merely to exploit Melendez’s work but to specifically suggest that Melendez endorsed the channel or its current lineup. But that was not the case here, the court noted.

The Case is No. 21-1769-cv.

Attorneys: Michael Steven Popok (Zumpano Patricios & Popok, PLLC) for John Edward Melendez. Mark Baghdassarian (Kramer Levin Naftalis & Frankel LLP) for Sirius XM Radio, Inc.

Companies: Sirius XM Radio, Inc.

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