Written by Elaine K. Kim and Elaine Nguyen
The Second Circuit recently issued an important decision, In re Jackson, No. 19-480, — F.3d —, 2020 WL 4810706 (2d Cir. Aug. 19, 2020), in which it held that a state law right of publicity claim was barred on the ground of implied copyright preemption. While implied preemption—also known as conflict preemption—has come up in other copyright contexts, In re Jackson appears to be the first published opinion to bar a right of publicity claim on that basis. The decision portends the more frequent invocation of the implied copyright preemption doctrine, and raises questions to be answered, in future cases involving right of publicity or other types of state law claims.
The case began when the bankrupt hip-hop artist, Curtis James Jackson III p/k/a “50 Cent,” brought an adversary proceeding against another hip-hop artist, William Leonard Roberts II p/k/a “Rick Ross.” The claim concerned Roberts’s unauthorized sampling of Jackson’s hit song, “In Da Club,” in a track on Roberts’s Renzel Remixes mixtape. The mixtape’s track list identified the sampled song as “In Da Club (Ft. 50 Cent).” Renzel Remixes contained many other tracks that sampled from records performed by other artists.
Lacking a copyright interest in “In Da Club” by operation of his recording agreement, Jackson could not assert a copyright infringement claim. So instead, he claimed that the use of his voice in the sample, and the use of his stage name in the track title, violated his right of publicity under Connecticut common law.
The Second Circuit affirmed the grant of summary judgment to Roberts, concluding that Jackson’s claim was barred under the implied preemption doctrine or, alternatively, under the express terms of Section 301 of the Copyright Act of 1976, 17 U.S.C. §301. Noting that it was unaware of any prior decisions that had barred a right of publicity claim on implied preemption grounds, the Court went on to do exactly that, choosing to address implied preemption before statutory preemption. The Court laid out a general framework for a balancing test, looking at: (1) “the substantiality of the plaintiff’s state law interest”; and (2) “the potential for conflict between the assertion of a state law claim invoked against the dissemination of works within the subject matter of copyright and the operation of the federal copyright system.”
Applying this test, the Second Circuit held that Jackson’s claim, perhaps unlike many other right of publicity claims, did not seek to vindicate any substantial state interests, as Roberts did not employ Jackson’s name or persona in a manner that falsely implied Jackson’s endorsement, invaded his privacy, or harmed his reputation. And allowing Jackson’s right of publicity suit to proceed would interfere with the functioning of the copyright system because the claim was a “thinly disguised effort” by the creator and performer of a work within the subject matter of copyright to exert control over its distribution, notwithstanding the lack of any copyright interest. The court recognized that Roberts’s preemption argument had some weaknesses, including both that Roberts had no rights in “In Da Club” and that it was unclear if Jackson’s claim interfered with the copyright owner’s ability to exploit its rights. However, the court concluded that the policy considerations justifying the implied preemption doctrine prevailed.
Interestingly, the Second Circuit also concluded that Section 301 of the Copyright Act preempted Jackson’s claim. First, the work at issue fell within the “subject matter” of copyright—the first requirement of statutory preemption—because the focus of Jackson’s claim was not on the sound of his voice, but on the copyrighted work in which his voice was embodied, and Roberts did not depict Jackson’s likeness in a manner that falsely suggested endorsement. The court noted that the evidence “powerfully” supported the conclusion that in the hip-hop world, the mere use of a sample from a well-known song, with acknowledgement of the sampled artist’s identity, did not falsely communicate endorsement. Second, the court found that Jackson’s claim was “equivalent” to a copyright infringement claim—therefore meeting the second prong of statutory preemption—because any additional element of commercial purpose under Connecticut’s right of publicity law did not make the claim qualitatively different from a copyright infringement claim.
Given the Second Circuit’s determination that Section 301 preempted Jackson’s claim regarding the reproduction of “In Da Club,” it is not entirely clear why the court felt compelled to address—and start its opinion with—implied preemption. It might be because Jackson also made a claim based on the use of his stage name on the track list, which he argued could not be statutorily preempted because a stage name does not come within the subject matter of copyright.
In re Jackson raises interesting questions going forward. Are there other situations where a right of publicity claim will not be barred by Section 301 but will be barred by implied preemption? Does the assessment of the substantiality of the state interest, and balancing against the interference with the copyright system, depend on the evidence in each case? How will implied preemption be applied to other state law claims? In light of In re Jackson, we likely will see implied copyright preemption being raised more frequently, particularly where the case law is not settled that a particular claim is statutorily preempted. And as a result, we may see more courts interpreting and applying the Second Circuit’s guidelines to right of publicity and other state law claims that come up against copyright.
 See, e.g., Capital Cities Cable, Inc. v. Crisp, 467 U.S. 691 (1984) (holding that an Oklahoma state law that banned advertising of alcoholic beverages by cable operators was preempted by the Copyright Act under the implied preemption doctrine); Orson, Inc. v. Miramax Film Corp., 189 F.3d 377 (3d Cir. 1999) (holding that a Pennsylvania statute requiring a movie distributor to expand its distribution after forty-two days of exclusive first run licensing, by licensing another exhibitor in the same geographic area, was preempted by the Copyright Act under the implied preemption doctrine).