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Howard Stern Ads Clear of Performer’s Rights, 2nd Cir. Says (2)

Oct. 4, 2022, 1:56 PMUpdated: Oct. 4, 2022, 8:32 PM

Sirius XM Radio Inc.'s Howard Stern ads don’t violate the publicity rights of “Stuttering John,” a former performer on the show, the Second Circuit affirmed Tuesday.

John Melendez, who performed on the show from 1988 to 2004, argued that Sirius XM used his name and likeness to advertise for the show without his permission. But a district court found that any audience for the ads would construe clips of Melendez on the show as promoting the show and its material, not suggesting Melendez endorsed it.

In March, a US Court of Appeals for the Second Circuit panel expressed skepticism of Melendez’s argument that Sirius XM couldn’t use clips from a show to which it had rights to play. The panel’s opinion Tuesday found Melendez “failed to plausibly allege” any use of his likeness that was “separate from, or beyond, the rebroadcasting” of “copyrightable material.”

The publicity rights claims were preempted by the Copyright Act because it satisfied a two-part test considering its subject matter and the general scope of copyright law.

The court compared it to a publicity rights claim by rapper 50 Cent, whose name is Curtis Jackson, alleging his identity was used commercially without permission through the sampling of his song “In Da Club” in another work. That 2020 Second Circuit opinion said the subject matter prong of the test was met because the focus of Jackson’s claim was the music, not Jackson’s identity. Similarly, Melendez’ claims were based on Sirius XM’s use of the copyrighted works, and no other independent use of Melendez’s identity, the court said.

The court distinguished the precedents Melendez raised, saying they involved allegations of manipulation of the plaintiffs’ likenesses or use of the identity or likeness to support a product independent of the copyrighted work.

The court also said that while the publicity rights law and Melendez’s claim over the ad had a commercial element beyond the scope of copyright law, that doesn’t automatically cause it to fail the general scope prong of the test and move the case beyond copyright law’s preemption. The court said it still had to look “holistically at what he ‘seeks to protect.’” Trying to block Sirius XM from merely reproducing copyrightable material with Melendez’s voice to promote that material didn’t qualitatively differ from a copyright claim, it said.

The court also upheld the US District Court for the Southern District of New York’s refusal to let Melendez amend his complaint a second time. It said Melendez failed to articulate before either court any allegations he could assert that could save his claim from preemption, such as use of Melendez’s identity beyond clips from the show.

Melendez counsel Michael S. Popok of Zumpano Patricios said “we respectfully disagree” with the Second Circuit’s decision and that Melendez “had a meritorious appeal” and should have won in “a case seeking to compensate him for years of creative work for which he was not adequately paid.”

Counsel for Sirius XM declined to comment.

‘Misses the Point’

Sirius XM acquired “The Howard Stern Show” archives as part of a $500 million deal to move Stern’s show to satellite radio in 2006—two years after Melendez left the show for “The Tonight Show with Jay Leno.”

Melendez’s 2020 complaint brought claims under California’s right-of-publicity law. It said Sirius XM airs old “Howard Stern Show” episodes that featured him and advertises his participation without his permission to “enhance its subscription base, sell ads and drive listeners (and subscribers) to Sirius XM and its Howard-centric channels.”

Melendez also accused Sirius XM of retaliating by threatening to remove his podcast from its Pandora streaming service.

But Sirius XM convinced the district court that Melendez’s allegations didn’t rise to a publicity rights claim and to dismiss the case. Using clips from old episodes that included Melendez’s voice couldn’t reasonably be construed as an endorsement for Sirius XM, the court said.

Melendez’s argument that clips played on channels other than the Howard Stern channels “misses the point” because they’re still advertisements for Stern’s show, the court said. The commercial benefit “flows from the rebroadcasting of the copyrightable sound recordings themselves, not from Melendez’s identity.”

Kramer Levin Naftalis & Frankel LLP represented Sirius.

Circuit Judge Joseph F. Bianco wrote the opinion, joined by Judges Raymond J. Lohier and Beth Robinson.

The case is John Edward Melendez v. Sirius XM Radio Inc., 2d Cir., No. 21-1769, 10/4/22.

(Updates with additional reporting. Previous versions removed an incorrect description of the opinion's length and corrected the court name in the headline.)

To contact the reporter on this story: Kyle Jahner in Washington at

To contact the editors responsible for this story: Adam M. Taylor at; Jay-Anne B. Casuga at