FOR PUBLICATION
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`
`DEBRA LAWS,
`
`Plaintiff-Appellant,
`v.
`SONY MUSIC ENTERTAINMENT, INC.,
`d/b/a EPIC RECORDS, a
`Delaware corporation,
`Defendant-Appellee.
`
`No. 03-57102
`D.C. No.
`CV-03-02038-LGB
`OPINION
`
`Appeal from the United States District Court
`for the Central District of California
`Lourdes G. Baird, District Judge, Presiding
`
`Argued and Submitted
`September 12, 2005—Pasadena, California
`
`Filed May 24, 2006
`
`Before: Jerome Farris, Ferdinand F. Fernandez, and
`Jay S. Bybee, Circuit Judges.
`
`Opinion by Judge Bybee
`
`5707
`
`(cid:252)
`(cid:253)
`(cid:254)
`

`
`5710
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`COUNSEL
`
`Rickey Ivie and Kendall E. James of Ivie, McNeill & Wyatt,
`Los Angeles, California, for the appellant.
`
`Russell J. Frackman, Matt J. Railo, and Paul Guelpa of Mitch-
`ell, Silberberg & Knupp, LLP, Los Angeles, California, for
`the appellee.
`
`OPINION
`
`BYBEE, Circuit Judge:
`
`Plaintiff Debra Laws (“Laws”) brought suit against defen-
`dant Sony Music Entertainment, Inc. (“Sony”) for misappro-
`priating her voice and name in the song “All I Have” by
`Jennifer Lopez and L.L. Cool J. The district court found that
`Sony had obtained a license to use a sample of Laws’s record-
`ing of “Very Special” and held that Laws’s claims for viola-
`tion of her common law right to privacy and her statutory
`right of publicity were preempted by the Copyright Act, 17
`U.S.C. § 101-1332. We agree with the district court that the
`Copyright Act preempts Laws’s claims, and we affirm.
`
`I. FACTS AND PROCEEDINGS
`
`In 1979, professional vocalist and recording artist Debra
`Laws and Spirit Productions (“Spirit”) entered into a record-
`ing agreement with Elektra/Asylum Records (“Elektra”) to
`produce master recordings of Laws’s vocal performances for
`Elektra. The agreement gave Elektra the “sole and exclusive
`right to copyright such master recordings” and “the exclusive
`worldwide right in perpetuity . . . to lease, license, convey or
`otherwise use or dispose of such master recordings.” Elektra
`also secured the right “to use and to permit others to use your
`name, the Artist’s name . . . likeness, other identification, and
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5711
`
`biographical material concerning the Artist . . . in connection
`with such master recordings.” Notwithstanding these provi-
`sions, Elektra agreed that “we shall not, without your prior
`written consent, utilize or authorize others to utilize the Mas-
`ters in any so-called ‘audio-visual’ or ‘sight and sound’
`devices intended primarily for home use,” and “we or our
`licensees shall not, without your prior written consent, sell
`records embodying the Masters hereunder for use as premi-
`ums or in connection with the sale, advertising or promotion
`of any other product or service.” In 1981, Laws recorded the
`song “Very Special,” which was released on Laws’s album on
`the Elektra label. Elektra copyrighted the song that same year.
`
`In November 2002, Elektra’s agent, Warner Special Prod-
`ucts, Inc., entered into an agreement with Sony Music Enter-
`tainment, Inc. (“Sony”) to grant Sony a non-exclusive license
`to use a sample of Debra Laws’s recording of “Very Special”
`in the song “All I Have,” performed by recording artists Jen-
`nifer Lopez and L.L. Cool J. The agreement required Sony to
`include a credit stating, “Featuring samples from the Debra
`Laws recording ‘Very Special’ ” in any reproduction. Warner,
`Elektra’s agent, did not seek permission from Laws or Spirit
`before it released the disc and video, and neither Laws nor
`Spirit was compensated.
`
`Sony subsequently released a Jennifer Lopez compact disc
`and music video incorporating brief samples of “Very Spe-
`cial” into her recording of “All I Have.” The sampled portions
`include a segment approximately ten seconds in length at the
`beginning of “All I Have,” and shorter segments repeated in
`the background throughout the song. Sony included the
`required credit in the booklet accompanying the compact disc.
`The song and Lopez’s album, “This is Me . . . Then,” became
`a huge commercial success, netting over forty-million dollars.
`At one time “All I Have” was the number one song in the
`United States.
`
`In February 2003, Laws brought an action in the Superior
`Court of California, County of Los Angeles, alleging multiple
`
`

`
`5712
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`claims. The two claims relevant to this appeal were: (1) a
`common law claim for invasion of privacy for the misappro-
`priation of Laws’s name and voice and (2) a claim for misap-
`propriation of Laws’s name and voice for a commercial
`purpose under California Civil Code § 3344. The complaint
`sought injunctive and monetary relief.
`
`Sony removed the case to the United States District Court
`for the Central District of California and sought to join Elek-
`tra as a necessary party. The court denied the motion. Sony
`filed a summary judgment motion, which the district court
`granted, ruling that both of Laws’s misappropriation claims
`were preempted by the Copyright Act. Laws filed a timely
`appeal.
`
`II. STANDARD OF REVIEW
`
`A grant of summary judgment is reviewed de novo. See
`Buono v. Norton, 371 F.3d 543, 545 (9th Cir. 2004). We must
`view the evidence in the light most favorable to Laws and
`determine whether there is any genuine issue of material fact
`and whether the district court properly applied the relevant
`substantive law. See Olsen v. Idaho State Bd. of Med., 363
`F.3d 916, 922 (9th Cir. 2004). Summary judgment may be
`affirmed on any ground supported by the record. Id.
`
`We review de novo whether a federal law preempts a state
`law. See Radici v. Associated Ins. Cos., 217 F.3d 737, 740
`(9th Cir. 2000). The district court’s interpretation of state law
`is also reviewed de novo. See Rabkin v. Or. Health Scis.
`Univ., 350 F.3d 967, 970 (9th Cir. 2003).
`
`III. ANALYSIS
`
`[1] The Copyright Clause of the U. S. Constitution provides
`that “Congress shall have the Power . . . To promote the Prog-
`ress of Science and useful Arts, by securing for limited Times
`to Authors and Inventors the exclusive Right to their respec-
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5713
`
`tive Writings and Discoveries . . . .” U.S. Const. art. I, § 8, cl.
`8. Pursuant to this authority, Congress enacted the Copyright
`Act, 17 U.S.C. § 101-1332, to define and protect the rights of
`copyright holders. Under the Act, “the owner of copyright . . .
`has the exclusive rights to do and to authorize” others to dis-
`play, perform, reproduce or distribute copies of the work, and
`to prepare derivative works. Id. § 106. The copyright is the
`right to control the work, including the decision to make the
`work available to or withhold it from the public.
`
`[2] Sections 301(a) and (b) of Title 17 describe when the
`Act preempts legal and equitable rights granted by state com-
`mon law or statute. Section (a) states:
`
`On and after January 1, 1978, all legal and equitable
`rights that are equivalent to any of the exclusive
`rights within the general scope of copyright as speci-
`fied by section 106 in works of authorship that are
`fixed in a tangible medium of expression and come
`within the subject matter of copyright as specified by
`sections 102 and 103 . . . are governed exclusively
`by this title. Thereafter, no person is entitled to any
`such right or equivalent right in any such work under
`the common law or statutes of any State.
`
`Id. § 301(a). Section (b) states:
`
`Nothing in this title annuls or limits any rights or
`remedies under the common law or statutes of any
`State with respect to . . . subject matter that does not
`come within the subject matter of copyright as speci-
`fied by sections 102 and 103, including works of
`authorship not fixed in any tangible medium of
`expression . . . .
`
`Id. § 301(b) (2000). Congress explained what the statute made
`obvious: “[t]he intention of section 301 is to preempt and
`abolish any rights under the common law or statutes of a State
`
`

`
`5714
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`that are equivalent to copyright and that extend to works,
`within the scope of the Federal copyright law.” H.R. Rep. No.
`94-1476, at 130 (1976); see also Maljack Prods. v. Good-
`Times Home Video Corp., 81 F.3d 881, 888 (9th Cir. 1996).
`
`We have adopted a two-part test to determine whether a
`state law claim is preempted by the Act. We must first deter-
`mine whether the “subject matter” of the state law claim falls
`within the subject matter of copyright as described in 17
`U.S.C. §§ 1021 and 103.2 Second, assuming that it does, we
`
`1§ 102. Subject matter of copyright: In general
`(a) Copyright protection subsists, in accordance with this title,
`in original works of authorship fixed in any tangible medium of
`expression, now known or later developed, from which they can
`be perceived, reproduced, or otherwise communicated, either
`directly or with the aid of a machine or device. Works of author-
`ship include the following categories:
`(1)
`literary works;
`(2) musical works, including any accompanying words;
`(3) dramatic works, including any accompanying music;
`(4) pantomimes and choreographic works;
`(5) pictorial, graphic, and sculptural works;
`(6) motion pictures and other audiovisual works;
`(7) sound recordings; and
`(8) architectural works.
`2§ 103. Subject matter of copyright: Compilations and derivative works
`(a) The subject matter of copyright as specified by section 102
`includes compilations and derivative works, but protection for a
`work employing preexisting material in which copyright subsists
`does not extend to any part of the work in which such material
`has been used unlawfully.
`(b) The copyright in a compilation or derivative work extends
`only to the material contributed by the author of such work, as
`distinguished from the preexisting material employed in the
`work, and does not imply any exclusive right in the preexisting
`material. The copyright in such work is independent of, and does
`not affect or enlarge the scope, duration, ownership, or subsis-
`tence of, any copyright protection in the preexisting material.
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5715
`
`must determine whether the rights asserted under state law are
`equivalent to the rights contained in 17 U.S.C. § 106, which
`articulates the exclusive rights of copyright holders.3 See
`Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003 (9th
`Cir. 2001).
`
`Laws alleges two causes of action. First, she asserts a claim
`for protection of her voice, name and likeness under Califor-
`nia’s common law right of privacy. To sustain this action,
`Laws must prove: “(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.” Eastwood v. Superior
`Court, 198 Cal. Rptr. 342, 347 (Ct. App. 1983), superseded
`by statute on other grounds as stated in KNB Enters. v. Mat-
`thews, 92 Cal. Rptr. 2d 713 (Ct. App. 2000); see also Down-
`ing, 265 F.3d at 1001. Second, Laws asserts a statutory
`
`3§ 106. Exclusive rights in copyrighted works
`Subject to sections 107 through 122, the owner of copyright
`under this title has the exclusive rights to do and to authorize any
`of the following:
`(1)
`to reproduce the copyrighted work in copies or phonore-
`cords;
`(2)
`to prepare derivative works based upon the copyrighted
`work;
`(3)
`to distribute copies or phonorecords of the copyrighted
`work to the public by sale or other transfer of ownership, or by
`rental, lease, or lending;
`(4)
`in the case of literary, musical, dramatic, and choreographic
`works, pantomimes, and motion pictures and other audiovisual
`works, to perform the copyrighted work publicly;
`(5)
`in the case of literary, musical, dramatic, and choreographic
`works, pantomimes, and pictorial, graphic, or sculptural works,
`including the individual images of a motion picture or other
`audiovisual work, to display the copyrighted work publicly; and
`(6)
`in the case of sound recordings, to perform the copyrighted
`work publicly by means of a digital audio transmission.
`
`

`
`5716
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`misappropriation or “right of publicity” claim under Califor-
`nia Civil Code § 3344(a), which provides that:
`
`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 ser-
`vices, without such person’s prior consent . . . shall
`be liable for any damages sustained by the person or
`persons injured as a result thereof.
`
`We have observed that “[t]he remedies provided for under
`California Civil Code § 3344 complement the common law
`cause of action; they do not replace or codify the common
`law.” Downing, 265 F.3d at 1001. Nevertheless, for purposes
`of our preemption analysis, section 3344 includes the ele-
`ments of the common law cause of action. See id. (“Under
`section 3344, a plaintiff must prove all the elements of the
`common law cause of action” plus “knowing use” and “a
`direct connection between the alleged use and the commercial
`purpose.”). For convenience’s sake, we will refer to Laws’s
`claims as “right of publicity” claims.
`
`Sony does not argue that common law privacy actions and
`statutory claims under section 3344 are preempted generally
`by section 301; rather, it argues that they are preempted as
`applied to the facts of this case. We thus turn to (1) whether
`the subject matter of Laws’s right of publicity claims comes
`within the subject matter of copyright, and (2) whether the
`rights Laws asserts under California law are equivalent to
`those created under the Copyright Act.
`
`A. The “Subject Matter” of Copyright
`
`[3] We first consider whether the subject matter of Laws’s
`misappropriation claim is within the subject matter of the
`Copyright Act. We conclude that it is. Sections 102 and 103
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5717
`
`of the Act identify the works of authorship that constitute the
`“subject matter” of copyright. Section 102 of the Act extends
`copyright protection to “original works of authorship fixed in
`any tangible medium of expression . . . from which they can
`be . . . reproduced, . . . either directly or with the aid of a
`machine or device.” 17 U.S.C. § 102(a). That section defines
`a “work of authorship” to include “sound recordings.” Id.
`§ 102(a)(7). “A work is ‘fixed’ in a tangible medium of
`expression when its embodiment in a copy or phonorecord, by
`or under the authority of the author, is sufficiently permanent
`or stable to permit it to be perceived, reproduced, or otherwise
`communicated for a period of more than transitory duration.”
`Id. § 101. Laws’s master recordings held by Elektra are
`plainly within these definitions.
`
`Laws nevertheless contends that the subject matter of a
`copyright claim and a right of publicity claim are substan-
`tively different. She argues that a copyright claim protects
`ownership rights to a work of art, while a right of publicity
`claim concerns the right to protect one’s persona and likeness.
`Sony, by contrast, contends that the subject matter of a right
`of publicity in one’s voice is not different from a copyright
`claim when the voice is embodied within a copyrighted sound
`recording. Sony argues that once a voice becomes part of a
`sound recording in a fixed tangible medium it comes within
`the subject matter of copyright law.
`
`Our jurisprudence provides strong guidance to the resolu-
`tion of this question. In Sinatra v. Goodyear Tire & Rubber
`Co., 435 F.2d 711 (9th Cir. 1970), Nancy Sinatra filed suit
`against Goodyear Tire on the basis of an advertising cam-
`paign that featured “These Boots Are Made for Walkin’,” a
`song that Sinatra made famous. Goodyear Tire had obtained
`a license from the copyright proprietor for the use of music,
`lyrics, and arrangement of the composition. Goodyear Tire
`subsequently used the music and lyrics in its ads, which were
`sung by unknown vocalists. She alleged the song had taken on
`
`

`
`5718
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`a “secondary meaning” that was uniquely injurious to her. We
`rejected her claim:
`
`[A]ppellant’s complaint is not that her sound is
`uniquely personal; it is that the sound in connection
`with the music, lyrics and arrangement, which made
`her the subject of popular identification, ought to be
`protected. But as to these latter copyrightable items
`she had no rights. Presumably, she was required to
`obtain permission of the copyright owner to sing
`“Boots”, and to make an arrangement of the song to
`suit her own tastes and talents. Had she desired to
`exclude all others from use of the song so that her
`“secondary meaning” with the song could not be
`imitated she could have purchased those rights from
`the copyright proprietor. One wonders whether her
`voice . . . would have been identifiable if another
`song had been presented, and not “her song,” which
`unfortunately for her was owned by others and
`licensed to the defendants.
`
`Id. at 716. Although Sinatra was decided prior to passage of
`the modern-day preemption provision in section 301, we
`nonetheless ruled that the Copyright Act impliedly preempted
`Sinatra’s state law claim. Id. at 717-18. We later confirmed
`this holding in Midler v. Ford Motor Co., 849 F.2d 460, 462
`(9th Cir. 1988), when we observed that “[t]o give Sinatra
`damages for [defendants’] use of the song would clash with
`federal copyright law.”
`
`In Midler, recording and performing artist Bette Midler
`filed suit against an advertising agency and its client when a
`professional “sound alike” was used to imitate Midler’s voice
`from her hit song “Do You Want to Dance.” The agency did
`not acquire a license to use Midler’s recording; instead, it had
`obtained a license from the song’s copyright holder and then
`attempted to get Midler to do the commercial. When Midler’s
`agent advised the agency that she was not interested, the
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5719
`
`agency hired someone who had been a backup singer for
`Midler and could imitate her voice and style. Indeed, the
`singer was instructed to sound as much like Bette Midler as
`possible. We held that Midler’s common law misappropria-
`tion claim was not preempted by copyright law because the
`“thing” misappropriated, her voice, was not copyrightable in
`that instance. We explained:
`
`Midler does not seek damages for [the defendant’s]
`use of “Do You Want To Dance,” and thus her claim
`is not preempted by federal copyright law. Copyright
`protects “original works of authorship fixed in any
`tangible medium of expression.” A voice is not
`copyrightable. The sounds are not “fixed.” What is
`put forward as protectible here is more personal than
`any work of authorship.
`
`Id. at 462 (citation omitted). What Midler sought was relief
`from an unauthorized vocal imitation for advertising pur-
`poses, and that was not the subject of copyright.
`
`[4] We subsequently applied Midler in Waits v. Frito-Lay,
`Inc., 978 F.2d 1093 (9th Cir. 1992). The voice of Tom Waits,
`a professional singer, songwriter, and actor, was imitated and
`then broadcast in a commercial for Frito-Lay. Waits filed a
`right of publicity claim under California law. We held that the
`claim was not preempted by copyright law because it was “for
`infringement of voice, not for infringement of a copyrightable
`subject such as sound recording or musical composition.” Id.
`at 1100. Thus, the issues in Waits were “whether the defen-
`dants had deliberately imitated Waits’ voice rather than sim-
`ply his style and whether Waits’ voice was sufficiently
`distinctive and widely known to give him a protectible right
`in its use. These elements are ‘different in kind’ from those
`in a copyright infringement case challenging the unauthorized
`use of a song or recording.” Id.
`
`[5] In this case, Laws’s voice misappropriation claim is
`plainly different from the claims in Midler and Waits and falls
`
`

`
`5720
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`within the subject matter of copyright. In contrast to Midler
`and Waits, where the licensing party obtained only a license
`to the song and then imitated the artist’s voice, here Sony
`obtained a license to use Laws’s recording itself. Sony was
`not imitating “Very Special” as Laws might have sung it.
`Rather, it used a portion of “Very Special” as sung by Debra
`Laws. See also Brown v. Ames, 201 F.3d 654, 658 (5th Cir.
`2000) (“The crucial difference between [this case and Daboub
`v. Gibbons, 42 F.3d 285 (5th Cir. 1995)] is that in Daboub the
`basis of the misappropriation claim . . . was the song itself,
`bringing it within section 301’s ambit, whereas here the basis
`of the misappropriation claim was defendants’ use of plain-
`tiffs’ names and/or likenesses.”).
`
`[6] Laws does not dispute Sony’s contention that the
`recording of “Very Special” was a copyrighted sound record-
`ing fixed in a tangible medium of expression. Laws’s right of
`publicity claim is based exclusively on what she claims is an
`unauthorized duplication of her vocal performance of the song
`“Very Special.” Although California law recognizes an assert-
`able interest in the publicity associated with one’s voice, we
`think it is clear that federal copyright law preempts a claim
`alleging misappropriation of one’s voice when the entirety of
`the allegedly misappropriated vocal performance is contained
`within a copyrighted medium. Our conclusion is consistent
`with our holdings in Midler and Waits, where we concluded
`that the voice misappropriation claim was not preempted,
`because the alleged misappropriation was the imitation of the
`plaintiffs’ voices. Neither of those imitations was contained in
`a copyrighted vocal performance. Moreover, the fact that the
`vocal performance was copyrighted demonstrates that what is
`put forth here as protectible is not “more personal than any
`work of authorship.” Midler, 849 F.2d at 462.
`
`Laws points to two cases for support. Both cases, however,
`involve photographs used in advertising, and are distinguish-
`able from this case. In Downing, 265 F.3d 994, we held that
`a claim based on the right of publicity was not preempted by
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5721
`
`the Copyright Act. In Downing, retailer Abercrombie & Fitch
`was developing a surfing theme—“Surf Nekkid”—for its sub-
`scription catalog. Abercrombie published a photo of the plain-
`tiffs, who were participants in a surf championship in Hawaii
`in 1965. Abercrombie ran the photo, which it had purchased
`from the photographer (who held the copyright), and it identi-
`fied the plaintiffs by name. Abercrombie went well beyond
`mere republication of the photograph. Without obtaining
`plaintiffs’ consent to use their names and images, it also
`offered t-shirts exactly like those worn by the plaintiffs in the
`photo. We noted that the photograph itself was within the sub-
`ject matter protected by the Copyright Act. But Abercrombie
`had not merely published the photograph. Rather, it published
`the photo in connection with a broad surf-themed advertising
`campaign, identified the plaintiffs-surfers by name, and
`offered for sale the same t-shirts worn by the plaintiffs in the
`photo. By doing so, it had suggested that the surfers had
`endorsed Abercrombie’s t-shirts. Accordingly, we concluded
`that “it is not the publication of the photograph itself, as a cre-
`ative work of authorship, that is the basis for [plaintiffs’]
`claims, but rather, it is the use of the [plaintiffs’] likenesses
`and their names pictured in the published photograph.” Id. at
`1003; see also Brown, 201 F.3d at 656-57 (no preemption
`where the record company used the names and likenesses of
`musicians, song writers, and producers on compact disks,
`tapes, catalogs and posters). We thus concluded that the claim
`was not within the subject matter of copyright because “[a]
`person’s name or likeness is not a work of authorship within
`the meaning of 17 U.S.C. § 102.” Downing, 265 F.3d at 1004.
`
`Laws also relies on a second case, Toney v. L’Oreal USA,
`Inc., 406 F.3d 905 (7th Cir. 2005), in which the Seventh Cir-
`cuit held that a claim under the Illinois Right of Publicity Act
`was not preempted by the Copyright Act. Toney was a model
`who had posed for photographs used to promote hair-care
`products on packaging and in national advertisements. Defen-
`dants owned the copyright for the photograph of Toney that
`was used, and had a right to use it from November 1995 to
`
`

`
`5722
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`November 2000; any other use would be negotiated sepa-
`rately. In apparent violation of their understanding, defen-
`dants continued to use the photographs in their advertising
`beyond 2000. Toney alleged that this use violated her right of
`publicity under Illinois law. The Seventh Circuit concluded
`that
`
`Toney’s identity is not fixed in a tangible medium of
`expression. There is no “work of authorship” at issue
`in Toney’s right of publicity claim. A person’s
`likeness—her persona—is not authored and it is not
`fixed. The fact that an image of the person might be
`fixed in a copyrightable photograph does not change
`this. . . . The fact that the photograph itself could be
`copyrighted, and that defendants owned the copy-
`right to the photograph that was used, is irrelevant to
`the [right of publicity] claim. . . . The defendants did
`not have her consent to continue to use the photo-
`graph . . . .
`
`Id. at 910. The fact that the photograph was copyrighted could
`not negate the fact that Toney had reserved artistic control
`over her image for any period beyond the contractual time
`frame. The Seventh Circuit concluded that Toney’s claim was
`not preempted.4
`
`In contrast, Jennifer Lopez’s song “All I Have” incorpo-
`rated samples of Deborah Laws’s “Very Special” and gave
`her the attribution negotiated by Elektra and Sony. Sony did
`
`4Toney differs from this case in a significant way: Toney brought her
`right of publicity claim against L’Oreal U.S.A., Inc., the Wella Corp., and
`Wella Personal Care of North America, Inc., which each at some point
`held the copyright and had agreed not to use Toney’s likeness after 2000.
`The facts of this case would be analogous to Toney if Laws had brought
`her right of publicity claim against Elektra, which holds the copyright to
`the song and may have agreed to licensing limitations. We express no
`views on the correctness of Toney or its application to any claims against
`Elektra.
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5723
`
`not use Laws’s image, name, or the voice recording in any
`promotional materials. Her state tort action challenges control
`of the artistic work itself and could hardly be more closely
`related to the subject matter of the Copyright Act.
`
`We find more to the point, and quite persuasive, the Cali-
`fornia Court of Appeal’s decision in Fleet v. CBS, Inc., 58
`Cal. Rptr. 2d 645 (Ct. App. 1996). There, defendant CBS
`owned the exclusive rights to distribute a motion picture in
`which plaintiffs performed. A third party who financed the
`operation of the movie refused to pay plaintiffs their previ-
`ously agreed-to salaries. Plaintiffs brought suit against CBS
`alleging, inter alia, that by airing the motion picture using
`their names, pictures, and likenesses without their consent,
`CBS had violated their statutory right of publicity. The Court
`of Appeal held that the Copyright Act preempted the action.
`As the court observed, “it was not merely [plaintiffs’] like-
`nesses which were captured on film—it was their dramatic
`performances which are . . . copyrightable.” Id. at 651.
`“[O]nce [plaintiffs’] performances were put on film, they
`became ‘dramatic work[s]’ ‘fixed in [a] tangible medium of
`expression . . . .’ At that point, the performances came within
`the scope or subject matter of copyright law protection,” and
`the claims were preempted. Id. at 650; see also Downing, 265
`F.3d at 1005 n.4 (“In Fleet, the plaintiffs were actors in a
`copyrighted film. The claims of the plaintiffs were based on
`their dramatic performance in a film CBS sought to distribute.
`. . . This is clearly distinguishable from this case where the
`Appellants’ claim is based on the use of their names and like-
`nesses, which are not copyrightable.”). In effect, the plain-
`tiffs’ right of publicity claim was a question of control over
`the distribution, display or performance of a movie CBS
`owned. Since CBS’s use of plaintiffs’ likenesses did not
`extend beyond the use of the copyrighted material it held,
`there was no right of publicity at issue, aside from the actors’
`performances. Had the court held otherwise, each actor could
`claim that any showing of the film violated his right to control
`his image and persona.
`
`

`
`5724
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`Laws makes much of the fact that she possessed a right of
`first refusal in all future uses of “Very Special” under the
`original production agreement with Elektra. She contends that
`this right expressly gives her control over the use of her name
`and voice in connection with any use of “Very Special.” She
`also contends that “[i]f the copyright holder itself, Elektra/
`Asylum, was not ceded such rights, then as a matter of law its
`licensee does not possess those rights.” In effect, Laws con-
`tends that her contractual reservation gives her an interest in
`the copyright and, concomitantly, renders Elektra’s copyright
`partially subject to her control.
`
`[7] We express no view as to the effect of Laws’s reserva-
`tion in the production agreement and no view as to any reme-
`dies that Laws may have against Elektra. Whether or not the
`two parties contracted around the actual use of a copyright
`does not affect our preemption analysis. To the extent that
`Laws has enforceable, contractual rights regarding the use of
`Elektra’s copyright, her remedy may lie in a breach of con-
`tract claim against Elektra for licensing “Very Special” with-
`out her authorization. See Grosso v. Miramax Film Corp., 383
`F.3d 965, 968 (9th Cir. 2004).5
`
`[8] In sum, we hold that Laws’s cause of action is within
`the subject matter of copyright.
`
`B. Equivalent Rights
`
`[9] We must next determine whether the rights she asserts
`under California law are equivalent to the rights protected
`under the Copyright Act. We conclude that they are. In Del
`Madera Props. v. Rhodes & Gardner, 820 F.2d 973 (9th Cir.
`1987), overruled on other grounds, Fogerty v. Fantasy, Inc.,
`510 U.S. 517 (1994), we outlined the test for determining
`
`5Counsel represented to this Court during oral argument that it had in
`fact filed a breach of contract claim in state court.
`
`

`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`5725
`
`whether state rights were “equivalent” to those under the
`Copyright Act:
`
`To satisfy the “equivalent rights” part of the preemp-
`tion test . . . the . . . alleged misappropriation . . .
`must be equivalent to rights within the general scope
`of copyright as specified by section 106 of the Copy-
`right Act. Section 106 provides a copyright owner
`with the exclusive rights of reproduction, preparation
`of derivative works, distribution, and display. To
`survive preemption, the state cause of action must
`protect rights which are qualitatively different from
`the copyright rights. The state claim must have an
`extra element which changes the nature of the action.
`
`Id. at 977 (quotations and citations omitted). In Del Madera
`Properties, the plaintiff alleged that the defendants had alleg-
`edly misappropriated a copyrighted land map to plan a new
`development. Plaintiff advanced an unfair competition claim
`and argued that it was qualitatively different from copyright
`because the unfair competition claim required the breach of a
`fiduciary duty, an element not required under copyright. We
`squarely rejected Del Madera’s argument:
`
`This argument . . . does not add any “extra element”
`which changes the nature of the action. The argu-
`ment is constructed upon the premise that the docu-
`ments and information . . . belonged to Del Madera
`and were misappropriated by the defendants. Del
`Madera’s ownership of this material, and the alleged
`misappropriation by the defendants, are part and par-
`cel of the copyright claim.
`
`Id.; see also Harper & Row, Publishers, Inc. v. Nation
`Enters., 501 F. Supp. 848, 853-54 (S.D.N.Y. 1980) (“[T]he
`contract claim is redundant because the additional elements
`. . . do not afford plaintiff rights that are ‘different in kind’
`
`

`
`5726
`
`LAWS v. SONY MUSIC ENTERTAINMENT
`
`from those protected by the copyright laws.”), rev’d on other
`grounds, 471 U.S. 539 (1985).
`
`[10] Laws contends that her right of publicity claim under
`California Civil Code § 3344 requires proof of a use for a
`“commercial purpose,” which is not an element of a copyright
`infringement claim. She concedes that a right which is the
`“equivalent to copyright” is one that is infringed by the mere
`act of reproduction; however, she argues that her claim is not
`based on Sony’s me