Second Circuit Says Copyright Act Preempts of State Law Claim of Right of Publicity

By John DiGiacomo

Under general federal and Constitutional legal principles, federal laws will preempt state and local laws where there is a conflict and where federal power and jurisdiction prevail. The power to make laws with respect to patents and copyrights is specifically granted to the federal government in the US Constitution. See US Const., Art. I, Section 8. Pursuant to its Constitutional powers, Congress has enacted the US Copyright Act, 17 USC § 101 et seq., and has amended it from time to time. Generally speaking, if state law conflicts with the federal Copyright Act, the Copyright Act will control and the state law will be preempted.

Over the years, there have not been many cases where the Copyright Act has been implicated in the federal preemption doctrine. However, the federal Second Circuit Court of Appeals has recently had occasion to examine one such case. See In re Jackson, Case No. 19-480 (2nd Cir. August 19, 2020). In that case, the court held that Connecticut’s common law right of publicity was preempted, explicitly and implicitly, by the Copyright Act.

The case involved music performed by Curtis Jackson, known more popularly as hip-hop artist “50 Cent” (hereinafter “Jackson”). A sampling of Jackson’s song “In Da Club” was used by another hip-hop artist, known as “Rick Ross,” on a remix tape. “In Da Club” is a famous song that helped make Jackson an international music sensation. The remix tape by Rick Ross gave Jackson credit as the artist and listed the name of the song. The mixtape contained samples from many works performed by many musicians.

Jackson believed that use of “In Da Club” was copyright infringement. Jackson wanted to sue Rick Ross, but “In Da Club” had been recorded pursuant to an agreement with Jackson’s record label. Pursuant to that agreement, Jackson had no copyright rights or interest with respect to “In Da Club.” Consequently, Jackson could not sue for copyright infringement because only copyright owners can bring infringement lawsuits.

Instead, Jackson brought suit against Rick Ross based on Connecticut’s common law right of publicity. Generally speaking, the right of publicity gives a person control over the use of his or her image. That image cannot be used without permission. Jackson argued that use of his voice and use of his persona name on the mixtape by Rick Ross violated his right of publicity.

At the trial level, Jackson’s case was dismissed and, on appeal, the Second Circuit affirmed. The court held that the Copyright Act preempted the right of publicity provided under Connecticut common law. The court held that Connecticut’s right of publicity was preempted under both implied doctrines and express preemption doctrines. With respect to implied preemption, the court used a balancing test, weighing “the substantiality of the plaintiff’s state law interest” against possible damage to the workings of the federal copyright system. On the one side — the substantiality of Jackson’s right to publicity — the court was rather dismissive asserting that Jackson’s claim was not an effort to protect rights that were substantially different than those protected under the Copyright Act. Rick Ross had given Jackson full credit and listed the name of the song. Rick Ross also did not employ Jackson’s name or persona in a manner that falsely implied Jackson’s endorsement of the mixtape. In the hip-hop music world, sampling does not imply endorsement. Rick Ross also did not reference Jackson’s persona in a derogatory manner or invade Jackson’s privacy. Finally, the court also found that Rick Ross did not use Jackon’s persona in a manner that would induce fans to buy the mixtape because it included Jackson’s name and sounds “that could be identified as his voice.” For the court, Jackson’s case was “little more than a thinly disguised effort to exert control over an unauthorized production of a sample of his work” even though Jackson possessed no copyright interest in the song.

On the other side of the equation, the court held that allowing these sorts of state-based common law claims would work great mischief in the workings of the copyright system. Under the facts of this case, the court held that there was no public policy justification for allowing such an intrusion.

The Second Circuit also held that the Copyright Act expressly preempted Jackson’s right of publicity claim. Despite Jackson’s efforts to cast use of his voice as the central question, the factual and legal issues in the case involved use of a portion of a copyrighted work. Thus, the actual subject matter of the case was copyright law and, with respect to copyrights, federal law is preeminent. The court held that the state law claims were expressly preempted.

For more information and/or if you have questions about protecting your copyrights and other intellectual property, contact the copyright lawyers at Revision Legal at 231-714-0100.

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