Second Circuit finds conflict preemption of publicity rts for unauthorized music sample

Jackson v. Roberts, No. 19-480 (2d Cir. Aug. 19, 2020)

Judge Leval, kindly citing my work as well as
that of other scholars, finds a right of publicity claim against a remix album
preempted by the Copyright Act/Supremacy Clause through implied (conflict)
preemption, as well as by §301. Unsurprisingly, I think the conflict preemption
ruling is correct.

Jackson (p/k/a 50 Cent) sued Roberts (p/k/a Rick
Ross) for sampling a well-known 50 Cent song to which he did not own the
copyright, “In Da Club,” on a mix tape, Renzel Remixes, “which Roberts released for free in 2015, in advance of Roberts’s
then-upcoming commercial album, Black Market.” Jackson alleged that 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 his right of publicity
under Connecticut common law.

Some background:

In the hip-hop world, a “mixtape” —
unlike a commercial album — is an album of material generally produced by a
recording artist for free distribution to fans. As both Jackson and Roberts
agree, it is common for hip-hop mixtapes to include “remixes,” often consisting
of new vocal recordings by the releasing artist, combined with samples of songs
by other artists who are identified by name. And as both Jackson and Roberts
agree, many hip-hop artists (including Jackson himself) have created mixtapes
that included samples of recordings of other artists without obtaining
permission from either the recording artist or the copyright holder of the work
sampled. Some (but not all) mixtapes are released for free in advance of an
upcoming commercial album by the same artist and include material that promotes
the upcoming release.

Roberts’s Renzel Remixes mixtape is
a compilation of 26 remixes in which Roberts performs his own new lyrics over
audio samples of popular songs by well-known recording artists. For 11 remixes,
the track list identifies 18 original recording artists associated with the
samples, including, for example, “Hello (Feat. Adele),” “Bill Gates (Feat. Lil
Wayne),” and “In Da Club (Ft. 50 Cent).” 
The “In Da Club (Ft. 50 Cent)” track consists of Roberts rapping over
the original instrumental track of Jackson’s song, followed by a roughly
thirty-second sample of Jackson singing his refrain from the original “In Da
Club” recording, reproduced without alteration. Roberts did not obtain or
request permission from Shady/Aftermath or from Jackson to include those in his
mixtape, or to use Jackson’s stage name.

“In Da Club (Ft. 50 Cent)” remix included several references
to Roberts’s then-upcoming commercial album, Black Market: “Only on the Black
Market, December 4th / The Album is out.” The cover art for the mixtape
included a reference in small white typeface to Black Market and its release

The district court dismissed the claim because, under his Recording Agreement, Jackson “surrendered his rights to the use of his name, performance and likeness associated with the master recording of ‘In Da Club’ in connection with the advertising and marketing of ‘Phonograph Records’” and because it was preempted.The court of appeals disagreed with the contractual
reasoning. The contractual grant ended in 2014, before the remix was released.
Preemption still barred the claim.

“[P]rominent copyright scholars have suggested that implied
preemption may bar a right of publicity claim where the claim does not further
a distinct state interest, such as preventing ‘consumer deception,’ protecting
privacy, or safeguarding against reputational harms.” (Citations: Rebecca
Tushnet, Raising
Walls Against Overlapping Rights: Preemption and the Right of Publicity
, 92
Notre Dame L. Rev. 1539, 1545–48 (2017); Nimmer; Jennifer Rothman; and Guy Rub.)
 The court of appeals agreed that right
of publicity claims were preempted when they “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.” However, not all interferences with any possible
exploitation justify preemption, at least where the state is furthering “sufficiently
substantial state interests, such as protecting a person’s privacy,
compensating for fraud or defamation, or regulating unauthorized use of its
citizens’ personas.” For example, an anti-paparazzi statute protecting citizens
“from unreasonable intrusions on personal privacy,” could have the “collateral
effect of precluding the defendant from exploiting a photograph that falls within
the subject matter of federal copyright law” without preemption, and a ban on
falsity could likewise interfere with the exploitation of literary works
containing falsehoods.

Bonito Boats instructs that analysis of
implied preemption depends on whether the state law claim furthers substantial
state law interests that are distinct from the interests served by the federal
law which may preempt the claim. The standard: “when a person undertakes to
exert control over a work within the subject matter of the Copyright Act under
a mechanism different from the one instituted by the law of copyright (i.e., a
state law claim), implied preemption may bar the claim unless the state-
created right vindicates a substantial state law interest, i.e. an ‘interest[]
outside the sphere of congressional concern in the [copyright] laws.’” [Andrew
Gilden and others might find something to say here about the implicit suggestion that
privacy is outside the sphere of congressional concern in copyright. But
perhaps the court is better read as saying that some kinds of privacy
claims are outside the sphere of congressional concern—unauthorized subject claims,
not creator claims.]

Some right of publicity claims will therefore avoid preemption:
those that target false endorsements, because the “state’s interest in
protecting its consumers from deception in the commercial marketplace is
clearly both substantial and distinct from the interest in ‘grant[ing]
valuable, enforceable rights to authors . . . to afford greater encouragement
to the production of literary (or artistic) works of lasting benefit to the
world’” (citing me). So too with “right of publicity claims that vindicate
privacy or reputational interests, or those that would prohibit the sale of
goods whose value to consumers consists predominantly of the unauthorized
exploitation of a person’s valuable persona,” since that too “vindicate[s]
substantial state law interests that have little relation to the interests of a
copyright holder to exclusive control over works of authorship.” [Ugh; not
citing me, unsurprisingly, and not explaining what those substantial state
interests are or how they can be detached from the interests of the author who
created the relevant representation.] “The more substantial the state law
interest involved in the suit, the stronger the case to allow that right to
exist side-by-side with the copyright interest, notwithstanding its capacity to
interfere, even substantially, with the enjoyment of the copyright” (back to citing
me for allowing state “protection of consumers, reputation, or privacy”).

However, “the less substantial the state law rights invoked,
or the more the invocation of the state right amounts to little more than
camouflage for an attempt to exercise control over the exploitation of a
copyright, the more likely that courts will find the state law claim to be

So, does this lawsuit assert “a sufficiently substantial
state interest, distinct from the interests underlying federal copyright law,
to evade preemption”?  The court first
expressed doubt as to whether Connecticut really meant to prohibit “mere use” of
Jackson’s name to identify him as the artist of the song Roberts samples, and the
use of the sound of Jackson’s voice, “which is inevitable in sampling Jackson’s
performance of his song,” without permission. However, “Jackson’s claim may
just barely fall within the boundaries of Connecticut’s right of publicity as
Roberts undoubtedly believed it was to his personal benefit to include the
references to Jackson in his mixtape.”

Despite that, the court found that the lawsuit didn’t seek
to vindicate any substantial state interests distinct from those furthered by
the copyright law. There was no use of Jackson’s name or persona “in a manner
that falsely implied Jackson’s endorsement of Roberts, his mixtape, or his
forthcoming album, nor in a manner that would induce fans to acquire or pay
heed to the mixtape merely because it included Jackson’s name and a sound that
could be identified as his voice.” The court relied on (1) the absence of any
explicit endorsement statement; (2) evidence “that it is common practice in the
hip-hop industry for artists to use copyrighted samples in mixtapes without the
permission of the copyright holders or performers of the sampled works (and to
reference the relevant performers by name in track titles),” and (3) the “context”
of Roberts’s use.

Comment: not that I disagree, but it’s pretty interesting
how a mini-confusion inquiry works here without much in the way of factfinding.
(2) is particularly notable because that has nothing to do with actual consumer
perception—though it might help to the extent that one views the “reasonable”
consumer as a normative construct.

The use of Jackson’s voice and the “small discreet notation
that correctly identifies Jackson as the artist of the sample played” thus didn’t
violate any substantial state law publicity interest. Instead, “the predominant
focus of Jackson’s claim is Roberts’s unauthorized use of a copyrighted sound
recording that Jackson has no legal right to control.”

On the other side of the balance, there was a potential for
interference with “the dissemination of works within the subject matter of
copyright and the operation of the federal copyright system.” First, many
protected works of authorship involve depictions of or appearances by real
people; if those in themselves could support a publicity rights claim, “the
potential for impairment of the ability of copyright holders and licensees to
exploit the rights conferred by the Copyright Act is obvious and substantial.”

Although the contract could have protected Jackson’s label
from impairment of its interest in fully exploiting the work, that wasn’t
enough to protect either licensees (if the label somehow failed to transfer its
rights) or fair users. Although many statutory rights of publicity have
specific exceptions for “types of uses that might qualify as fair use,” and
although the First Amendment might provide protection even in the absence of
such exceptions, “the potential for conflict would persist in many instances.”
Likewise, “a state law that would impose liability on a defendant for use of a
public domain work, on the sole basis that the plaintiff is depicted in that
work,” would interfere with the federal policy of free copying of public domain
works (cf. Dastar).

Here, a creator and performer of a work within the subject
matter of copyright, who owned no copyright interest in the work, was
nonetheless trying to control its distribution in defiance of the exclusive
right of the copyright owner to exercise such control. True, under the
contract, Jackson’s approval was also required for sampling; thus Roberts
was “presumably” liable for copyright infringement to the label, and Jackson
might have a right to compel the label to sue Roberts or to seek damages for
the label’s failure to protect his right to royalties. Nonetheless, Jackson had
no legal right to directly go after Roberts, and his attempt to do so “under
the disguise of a right of publicity claim” was in derogation of the label’s exclusive
right to enforce the copyright. And the label might have had good reason to
tolerate the use to enhance the song’s commercial value; as the copyright
owner, its exclusive right included “the right to decide whether to tolerate an

Although implied preemption usually protects a defendant who’s
lawfully reproducing or publishing a work, the policy considerations justifying
the doctrine of implied preemption nonetheless applied here.

Just in case, the court also found § 301 preemption. I tend
to find §301 reasoning in what’s really a conflict preemption case to be
tortured; I’ll just focus on what the court additionally says about consumer
confusion. Specifically, claims based on the use of an image/representation of
a person embodied in a copyrighted work are not preempted where the use is “in
a manner that appears to communicate a message that the plaintiff endorses the
defendant’s service or product (other than the copyrighted work in which the
plaintiff appears).” In a footnote, the court highlights the “important
difference” between conveying that the plaintiff consented to appear in or was
voluntarily associated with a work and conveying that the plaintiff endorsed “an
entirely separate product or service.” The former implication—of the plaintiff’s consent
to appear in the work and “to some extent” endorsement of the work itself— is “immaterial” here.

So, in Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th
Cir. 2001), a publicity rights claim wasn’t preempted where Abercrombie had
“create[d] t-shirts[] exactly like those worn by the [plaintiffs] in the photograph”
and “advertised those t-shirts alongside the photograph of the similarly clad
plaintiffs, thus conveying a false implication that the plaintiffs were wearing
Abercrombie shirts and represented Abercrombie as brand ambassadors.” Permission
from the copyright holder was insufficient to justify preemption because the
gravamen of the claim was “the defendant’s usurpation of the plaintiff’s
identity to sell a product or service with which the plaintiff has no relevant

This particularly tortured sentence (citations and footnotes
omitted) shows both why I don’t think §301 works here and why the right of
publicity lacks intelligible boundaries:

In our view, the pertinent
distinction for [whether a claim is within the subject matter of copyright] is whether, on the one hand, the defendant’s use
of a work involving the plaintiff’s likeness seeks advantage for the defendant
on the basis of the plaintiff’s identity — as where the plaintiff is identified
in a manner that implies the plaintiff’s endorsement, sponsorship, or approval
(or in some cases the plaintiff’s disapproval or rejection) of the defendant or
its product, or holds opinions favored (or disfavored) by the defendant, or
where (as with baseball cards) the value of what the defendant distributes lies
in its reference to the identity of the plaintiff shown — what might be called
“identity emphasis,” which argues against preemption — or whether, on the other
hand, the advantage sought by the defendant flows from the reproduction or
dissemination of the work itself (as opposed to the persona of the plaintiff),
which argues in favor of preemption.

In a footnote, the court rejects “commercial advantage” as
an extra element, as both too broad and too narrow. In particular, “a plaintiff
should legitimately be entitled to claim the right of publicity where the
defendant appropriates the plaintiff’s persona to advance a non-commercial
cause, as by falsely representing that the plaintiff supports a political
candidate or a controversial cause.” [This could well be an example of how decisions
that purport to limit a claim can lay the foundations for its expansion. Under
ordinary, non-IP First Amendment precedents, a false claim of political
endorsement could easily fail based on the Supreme Court’s solicitude for noncommercial
falsehoods, so the court here is, unnecessarily, assuming a very broad scope
for publicity rights.]

And the court explains “identity emphasis” as covering, in
addition to the positive value of identity, “depicting an unpopular plaintiff
in a manner suggesting that person’s dislike of the defendant or its product,
or using the plaintiff’s identity in a negative way to generate interest in the
defendant or the defendant’s work.” 

The preemption question is whether the defendant is seeking “advantage through identity emphasis” or whether the plaintiff is seeking “control of the [copyrighted] work itself.” “In other words, the more the defendant has
used a copyrighted work for its own value, as opposed to using it to exploit
the depicted plaintiff’s identity, the more the right of publicity claim
brought by someone depicted in the work can be considered a disguised effort to
control the dissemination of the work.” 

Comment: (1) This of course has nothing to do with the subject matter of copyright or extra elements; it is conflict preemption analysis in a 301 hat. (2) Unfortunately, this formulation suffers from the usual
deficiencies of attempts to distinguish the dancer from the dance for publicity
rights purposes: where the works are valuable because they depict a well-known
person—nobody wants a biography of me!—they are used for both their own value and
to exploit the depicted person. That is the basic stuff of ordinary news
reporting and nonfiction. Courts just announce that a news photo of Chris Pine,
or AOC, is used “for its own value” while a drawing of the Three Stooges is
used to exploit their identity.

Which brings us back to deception: “a crucial issue in determining whether Jackson’s right of publicity
claim is subject to preemption depends on whether Roberts’s use of Jackson’s
stage name and the ‘In Da Club’ sample could reasonably be construed by the
intended audience as a false implication of Jackson’s endorsement or
sponsorship of Roberts or his product.” [Among the questions this raises for me:
suppose that such a claim survives a motion to dismiss, but on summary judgment
or after trial the relevant factfinder finds no likelihood of confusion. Is the
claim then preempted?]

Footnote: false endorsement/sponsorship isn’t required to
survive preemption, as long as “the defendant has otherwise exploited the
plaintiff’s identity to gain an advantage,” e.g. by making a poster of the plaintiff,
but Jackson was arguing false endorsement as his sole reason to avoid
preemption here.

Here, Roberts offered “evidence that, 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 (e.g., a ‘ft.’ line) in a track title.” Jackson himself has
done this. “[T]his evidence powerfully supports 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, does not communicate
to the relevant audience that the sampled artist has endorsed or sponsored the
sampling artist’s work.” Instead, “Roberts is expressing himself as an artist
by his choice of sampled works, without implying that the artists so depicted
have lent their personas to the promotion of his album.” And the song was so
well known “that it could not possibly be understood to be material Jackson
created specifically for inclusion in the mixtape”; also, the album sampled
from at least 26 artists and identified 18. “It would be unreasonable for a
listener to conclude, simply based on Roberts’s use of these samples and his
references to those artists’ stage names, that each of these well-known artists
— including Adele, Nas, Snoop Dogg, Kendrick Lamar, and Lil Wayne — endorsed or
sponsored Roberts’s free mixtape.”

The court distinguished other cases in which use of a
plaintiff’s image or persona could communicate endorsement or sponsorship, such
as Downing, which involved what was essentially a clothing catalog. In Toney
v. L’Oreal
, the defendant used the model’s photo in magazine ads and on
packaging “in a context that suggested that the plaintiff had used the product
and intended to be seen as endorsing the defendant’s product.” [I will note
that the FTC, with all the attention it’s given to endorsement, doesn’t think
that a model’s appearance is ordinarily perceived as an endorsement; instead
the FTC expects that viewers will perceive the model as doing a job.] Here,
there was “no such contextual implication of endorsement. … Jackson does not
appear on the cover of the mixtape, nor do any of Roberts’s lyrics refer to
Jackson, nor is the “In Da Club” sample used in a manner that could mislead
listeners into believing that it was new material that Jackson had created
specifically for inclusion in Roberts’s mixtape.” His music and his stage name
were used in the same manner as the other artist’s.

Even without direct evidence about consumer perception, the
absence of an explicit message, the evidence of standard mixtape practice, and
the large number of sampled/identified artists “compel[led] the conclusion that
there is no substantial likelihood that the audience could reasonably construe
Roberts’s use of the ‘In Da Club’ sample, credited to Jackson, as a suggestion
that Jackson had endorsed Roberts, his mixtape, or his upcoming commercial
album.” Thus, the gravamen of the claim was not use of his identity but use of
the work itself.

To avoid §301 preemption, Jackson argued that stage names
are not “works of authorship” that “come within the subject matter of copyright.”
But implied preemption took care of this regardless, since Roberts used Jackson’s
stage name to accurately identify him as the performer of one of the works he
sampled. Allowing such a claim “would impermissibly interfere with the
administration of the federal copyright system by placing a substantial barrier
between copyright holders and the full exploitation of their works.” Also, a
state right of publicity prohibiting the use of an author or performer’s name
to accurately describe a work “could further interfere with permitted uses of
that work by individuals other than the rightsholder or licensee — such as an
art critic, teacher, news reporter or parodist, exercising the right to make
fair use of a copyrighted work.” The court did, however, caution that “a different right of publicity claim based on the
use of a name in a misleading manner may invoke a significant state interest in
protecting against unauthorized exploitations of a person’s name so that it
would escape implied preemption (citing Cher v. Forum Int’l, Ltd., 692 F.2d 634
(9th Cir. 1982) (while a magazine that purchased a journalist’s interview with
Cher and published it was entitled to tell its readers that it was publishing
the interview, a different magazine violated her right of publicity because its
marketing copy implied Cher’s endorsement of the magazine)).

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