Second Circuit affirms district court’s determination that right of publicity claim brought by hip-hop artist 50 Cent against fellow artist Rick Ross, based on Ross’s sampling of 50 Cent’s hit song “In Da Club” in a promotional mixtape, is preempted by Copyright Act.
Curtis James Jackson III, a hip-hop recording artist who goes by the name “50 Cent,” sued fellow hip-hop artist William Leonard Roberts II, who goes by the name “Rick Ross,” alleging violation of 50 Cent’s right of publicity under Connecticut state law. The dispute arose from Roberts’ release of a promotional mixtape that included a sample of Jackson performing his hit song “In Da Club” and use of Jackson’s stage name in the track title identifying that song. Jackson released “In Da Club” in 2003 on his debut rap album, and it helped propel him to international fame. Jackson had transferred his copyright interest in the “In Da Club” recording to his record label, Shady Records/Aftermath Records. In November 2015, Roberts released a mixtape, available to listeners for free, that sampled “In Da Club” for its instrumentals as well as Jackson’s vocals, without Jackson’s or Shady/Aftermath’s permission. Roberts also used Jackson’s stage name, 50 Cent, to identify the performing artist of the song. Both Jackson and Roberts acknowledged that it was common practice for hip-hop artists to sample other artists on mixtapes without permission.
The district court granted Roberts’ motion for summary judgment, finding that Jackson’s state law claim was preempted by the Copyright Act and that, under his record label contract, Jackson had “surrendered” his publicity rights to his record label. Jackson appealed and the Second Circuit affirmed.
The Second Circuit first held that Jackson’s grant of his publicity rights to Shady/Aftermath had become nonexclusive after the term of his recording agreement ended, and that Jackson was therefore not barred from bringing a publicity claim based on that agreement. Nevertheless, the court held that Jackson’s right of publicity claim was preempted by the Copyright Act under the doctrine of implied preemption, which preempts state law claims that conflict with the exercise of a federal statute. The question, according to the court, was whether Jackson’s claim furthered a substantial state law interest that was distinct from the interests of federal copyright law. The court found that Jackson’s claim failed this test, as Jackson’s claim did not target any false endorsement or seek to vindicate any privacy interests, and was instead focused on “Roberts’s unauthorized use of a copyrighted sound recording that Jackson has no legal right to control.” The court noted that Jackson might have a claim against Shady/Aftermath for not enforcing the copyright in the “In Da Club” sound recording or for breaching the sampling provision of Jackson’s artist contract, but a direct suit against Roberts too closely resembled a copyright infringement claim. The suit “constitutes little more than a thinly disguised effort to exert control over an unauthorized production of a sample of [Jackson’s] work,” the court concluded.
The Second Circuit also held that Jackson’s claim was statutorily preempted by Section 301 of the Copyright Act under the required two-prong analysis—(1) whether the state law claim affects a work that falls within the subject matter of copyright, and (2) whether the state law claim seeks to enforce rights that are the equivalent of any of the exclusive rights of copyright. As to the first prong, Jackson’s right of publicity claim came within the subject matter of the Copyright Act, the court found, because the focus of his claim was on Roberts’ reproduction of “In Da Club” and not the use of Jackson’s name or likeness. This was so even though Jackson’s name is not protected by copyright, because his suit effectively sought to control reproduction of a copyrighted work—the “In Da Club” recording—rather than to vindicate any false endorsement using Jackson’s name. The court noted that it was undisputed that hip-hop artists frequently sample each other’s songs on mixtapes without permission while giving credit to the original artist, and that Roberts’ mixtape included samples of a large number of other artists who were similarly identified in the title of the corresponding track.
In its analysis of the second prong of the statutory preemption analysis, the court concluded that the right Jackson was attempting to assert was equivalent to a copyright claim, because there were no extra elements that qualitatively changed the nature of the claim. Even assuming Connecticut’s right of publicity law required that the unauthorized use be for a commercial purpose, that was not enough to distinguish Jackson’s right of publicity claim from a copyright infringement claim, since copyright claims often target commercial uses. Accordingly, the second prong for statutory preemption was met.
Summary prepared by Tal Dickstein and Michael Segal