Melendez v. Sirius XM Radio Inc.
- Paul Crotty
- 1:20-cv-06620
- U.S. District Court · Southern District of New York
- 12
In Melendez v. Sirius XM, Judge Crotty dismissed Melendez’s publicity claims with prejudice because copyright law preempted them.
John Edward Melendez’s California statutory and common-law publicity claims were dismissed with prejudice, ending his case against Sirius XM Radio, Inc.
What happened
Melendez v. Sirius XM Radio Inc. involved John Edward Melendez’s claims that Sirius XM improperly used his name, voice, and likeness from old Howard Stern Show recordings. He sued under California’s publicity laws, alleging Sirius XM rebroadcast the recordings and used them to promote its services.
Sirius XM asked the court to dismiss the amended complaint, arguing among other things that federal copyright law preempted the claims. The court ruled that the claims focused on Sirius XM’s rebroadcasting and promotion of the sound recordings, not on a separate misuse of Melendez’s identity.
Judge Crotty granted Sirius XM’s motion to dismiss the amended complaint with prejudice. The court also directed the clerk to close the motion and the case.
The detailed version
- Melendez v. Sirius XM Radio Inc. · No. 1:20-cv-06620
- Paul Crotty
- June 24, 2021
Background
John Edward Melendez, known professionally as “Stuttering John,” worked as a writer and performer on The Howard Stern Show from 1988 to 2004. Melendez alleged that Sirius XM used more than 13,000 hours of archived episodes featuring his name, voice, and identity. He claimed Sirius XM rebroadcast portions of those episodes and promoted them through its radio channels and social-media platforms.
Melendez brought claims under California Civil Code § 3344 and California common law, alleging that Sirius XM knowingly used his name, voice, likeness, and other aspects of his identity without consent for advertising and commercial purposes. Sirius XM moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient claim.
Court’s Analysis
The court assumed, for purposes of the motion, that the sound recordings were not protected by copyright. It explained that statutory preemption can still apply when the work falls within copyright’s subject matter, even if the particular work is not eligible for copyright protection.
The court applied a two-part test for preemption under § 301 of the Copyright Act: whether the work falls within copyright’s subject matter and whether the state-law rights are equivalent to rights protected by copyright. The court concluded that the archived sound recordings fell within copyright’s subject matter.
The court also concluded that Melendez’s claims were focused on Sirius XM’s use and rebroadcasting of the recorded Howard Stern Show episodes. The alleged commercial benefit flowed from the sound recordings and the promotion of the show itself, rather than from using Melendez’s identity to imply that he endorsed a separate product or service. The court therefore found that the claims sought to control distribution of the recordings and were equivalent to copyright-infringement claims.
Disposition
The court held that Melendez’s California publicity claims were preempted by § 301 of the Copyright Act. It granted Sirius XM’s motion to dismiss the amended complaint, with prejudice, and stated that further amendment would be futile. The clerk was directed to close the motion at ECF No. 25 and close the case.
Read the full 12-page opinion on CourtListener, the free public archive maintained by the Free Law Project.