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 date. 

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 preempted.”

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 infringement.”

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 connection.”

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)).