By Brian Craig, J.D.
The hip hop artist’s common law right of publicity claim was preempted by the Copyright Act under both implied preemption and statutory preemption.
The Copyright Act preempted a Connecticut common law right of publicity claim brought by hop artist Curtis James Jackson III, better known by his stage name of "50 Cent," against another artist, the U.S. Court of Appeals for the Second Circuit has held. In affirming the district court’s grant of summary judgment in favor of defendant hip hop artist William Leonard Roberts II, known as "Rick Ross," the Second Circuit concluded that the Copyright Act preempted the right of publicity claim under the doctrine of implied preemption and under the express terms of the Copyright Act. Furthermore, the Second Circuit held that use of the stage name "50 Cent" was barred by implied preemption (Jackson v. Roberts, August 19, 2020, Leval, P.).
Hip hop artist Curtis James Jackson III, also known as "50 Cent," filed a suit in the federal district court in Connecticut against hip hop artist William Leonard Roberts II, known as "Rick Ross," alleging violation of the Connecticut common law right of publicity. The dispute arose from Roberts’s use of a sample taken from one of Jackson’s best-known songs, "In Da Club," in a mixtape entitled Renzel Remixes, which Roberts released for free in 2015, in advance of Roberts’s then-upcoming commercial album. Jackson’s complaint alleged that, on the mixtape, Roberts’s use of Jackson’s voice performing "In Da Club," as well as of Jackson’s stage name in the track title identifying that song, violated Jackson’s right of publicity under Connecticut common law. The district court granted Roberts’s motion for summary judgment, concluding that the claim was preempted by the Copyright Act. Jackson appealed.
Implied preemption. The Second Circuit first determined that the common law right of publicity claim is preempted by the Copyright Act under the doctrine of implied preemption. The doctrine of implied preemption will bar a state law claim where, under the circumstances of a particular case, the challenged state law stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress. The Second Circuit held that implied preemption may provide a defense against a right of publicity claim which, if allowed to proceed, would impair the ability of a copyright holder or licensee to exploit the rights guaranteed under the Copyright Act, or in some way interfere with the proper functioning of the copyright system.
Here, the right of publicity suit was directed against references in the context of the reproduction, without authorization, of a sample from a performance of a famous song, in the absence of any substantial alleged injury properly within the scope of the publicity right. The suit constituted little more than a thinly disguised effort to exert control over an unauthorized production of a sample of his work. The court concluded that the policy considerations justifying the doctrine of implied preemption prevailed, so that Jackson’s insubstantial claim of violation of his publicity was precluded.
Statutory preemption. The Second Circuit also concluded that the right of publicity claim was preempted by Section 301 of the Copyright Act, 17 U.S.C. § 301(a). The court referred to this category of preemption as "statutory preemption." The purpose of statutory preemption is essentially to ensure a nationwide, uniform federal copyright system, ousting the states from imposing any control of the area. Under the first prong, the court examines whether the use of the work falls within the subject matter of the copyright. The second prong looks at the right being asserted and requires that the right be equivalent to any of the exclusive rights within the general scope of copyright.
In the hip-hop industry, it is common practice for artists to sample each other’s work without permission, and to credit the artists they sample on mixtapes without authorization, with designation in a track title. The court found that this evidence powerfully supported the conclusion that, in the hip-hop world, the mere use, without more, of a sample from a well-known song, with acknowledgment of the identity of the sampled artist, did not communicate to the relevant audience that the sampled artist has endorsed or sponsored the sampling artist’s work. Because the claim focused on the use of the copyrighted work itself, rather than the use of the artist’s identity, the claim fell within the subject matter of copyright.
Furthermore, the complaint asserted rights that were sufficiently equivalent to the rights protected by federal copyright law. To the extent that Jackson’s right of publicity claim was based on the reproduction of a copyrighted work embodying Jackson’s voice, that claim was preempted by the Copyright Act, whether or not Connecticut courts would impose a "commercial use" requirement for right of publicity claims. Jackson’s claim was virtually synonymous with a claim for wrongful copying and was in no meaningful fashion distinguishable from infringement of a copyright.
Stage name. Finally, the Second Circuit concluded that Jackson’s claim with respect to the use of his stage name was barred by implied preemption. The court held that use of the stage name was neither misleading nor did it imply that Jackson had endorsed Roberts, his mixtape, or his commercial album. Accordingly, because Jackson’s right of publicity claim sought to control the use of a copyrighted work by prohibiting accurate descriptions of that work, that claim impermissibly interfered with the federal copyright framework and had to be dismissed.
Therefore, the Second Circuit affirmed the district court’s grant of summary judgment.
This case is No. 19-0480-bk.
Attorneys: Glenn Danas (Robins Kaplan LLP) for Curtis James Jackson, III. Jonathan Goins (Lewis Brisbois Bisgaard & Smith LLP) for William Leonard Roberts, II.
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