19-0480-bk
`Jackson v. Roberts
`
`(Argued: January 23, 2020
`
`Decided: August 19, 2020)
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`August Term, 2019
`
`
`
`Docket No. 19-480
`
`_____________________________________
`
`
`
`
`
`In re: Curtis James Jackson, III,
`
`Debtor.
`_____________________________________
`
`Curtis James Jackson, III,
`
`Plaintiff-Appellant,
`
`v.
`
`William Leonard Roberts, II,
`
`Defendant-Appellee.
`
`_____________________________________
`
`
`
`PIERRE N. LEVAL, REENA RAGGI, DEBRA ANN LIVINGSTON, Circuit Judges.
`
`
`Before:
`
`
`
`Plaintiff Curtis James Jackson III appeals from the judgment of the
`
`United States District Court for the District of Connecticut (Warren W.
`Eginton, J.) granting summary judgment to Defendant William Leonard
`Roberts II on Jackson’s claim of violation of Connecticut common law right of
`publicity, on the grounds that the claim is preempted by the Copyright Act.
`AFFIRMED.
`
`
`
`Jackson v. Roberts
`
`(Argued: January 23, 2020
`
`Decided: August 19, 2020)
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`August Term, 2019
`
`
`
`Docket No. 19-480
`
`_____________________________________
`
`
`
`
`
`In re: Curtis James Jackson, III,
`
`Debtor.
`_____________________________________
`
`Curtis James Jackson, III,
`
`Plaintiff-Appellant,
`
`v.
`
`William Leonard Roberts, II,
`
`Defendant-Appellee.
`
`_____________________________________
`
`
`
`PIERRE N. LEVAL, REENA RAGGI, DEBRA ANN LIVINGSTON, Circuit Judges.
`
`
`Before:
`
`
`
`Plaintiff Curtis James Jackson III appeals from the judgment of the
`
`United States District Court for the District of Connecticut (Warren W.
`Eginton, J.) granting summary judgment to Defendant William Leonard
`Roberts II on Jackson’s claim of violation of Connecticut common law right of
`publicity, on the grounds that the claim is preempted by the Copyright Act.
`AFFIRMED.
`
`
`
`
`FREDERICK A. BRAUNSTEIN, Robins
`Kaplan LLP, New York, NY (Paul V.
`LiCalsi, Robins Kaplan LLP, New York,
`NY and Glenn A. Danas, Robins Kaplan
`LLP, Los Angeles, CA, on the brief) for
`Plaintiff-Appellant.
`
`JONATHAN D. GOINS, Lewis Brisbois
`Bisgaard & Smith LLP, Atlanta, GA
`(Leron E. Rogers and John T. Rose,
`Lewis Brisbois Bisgaard & Smith LLP,
`Atlanta, GA, and Nicholas P. Hurzeler,
`Lewis Brisbois Bisgaard & Smith LLP,
`New York, NY, on the brief), for
`Defendant-Appellee.
`
`
`
`
`
`LEVAL, Circuit Judge:
`
`Plaintiff Curtis James Jackson III appeals from the judgment of the
`
`District Court for the District of Connecticut (Warren W. Eginton, J.) granting
`
`summary judgment in favor of Defendant William Leonard Roberts II on the
`
`grounds that Jackson’s claim of violation of the Connecticut common law
`
`right of publicity is preempted by the Copyright Act. Jackson and Roberts are
`
`both recognized hip-hop recording artists, known to the public by their stage
`
`names: Jackson is known as “50 Cent” and Roberts is known as “Rick Ross.”
`
`This dispute arises from Roberts’s use of a sample taken from one of Jackson’s
`
`best-known songs, “In Da Club,” in a mixtape entitled Renzel Remixes, which
`
`
`
`2
`
`
`
`
`Roberts released for free in 2015, in advance of Roberts’s then-upcoming
`
`commercial album, Black Market. Jackson’s complaint alleged that, on the
`
`mixtape, 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
`
`Jackson’s right of publicity under Connecticut common law. The district court
`
`granted Roberts’s motion for summary judgment. Because we conclude that
`
`Jackson’s claim is preempted under either the doctrine of implied preemption
`
`or under the express terms of § 301 of the Copyright Act, we AFFIRM the
`
`grant of summary judgment.
`
`A. BACKGROUND
`
`In 2003, Jackson released his debut rap album, Get Rich or Die Tryin’,
`
`which includes the song “In Da Club.” Billboard named “In Da Club” as one of
`
`the “Hot 100 Songs of the Decade.” The song helped to propel Jackson to
`
`international fame. Jackson recorded “In Da Club” pursuant to an agreement
`
`(the “Recording Agreement”) with his then record label, Shady
`
`Records/Aftermath Records (“Shady/Aftermath”). By operation of the
`
`
`
`3
`
`
`
`
`Recording Agreement, Jackson owns no copyright interest in “In Da Club.”1
`
`Moreover, Jackson granted to Shady/Aftermath the “perpetual and exclusive
`
`rights during the term of [the Recording Agreement],” and a non-exclusive
`
`right thereafter, to use Jackson’s name and likeness “for the purposes of trade,
`
`or for advertising purposes . . . in connection with the marketing and
`
`exploitation of Phonograph Records and Covered Videos hereunder.” App’x
`
`at 52. Shady/Aftermath, however, agreed to refrain from licensing the
`
`recordings made pursuant to the Recording Agreement “for use in a
`
`commercial in the United States [with certain exceptions]” or “for use as a
`
`‘sample’” without Jackson’s consent. Id. at 54. Those restrictions “apply
`
`[during and] after the term of [the Recording] Agreement,” subject to certain
`
`other conditions. While the term of the Recording Agreement is not clear,
`
`Jackson contends (and Roberts does not dispute) that it terminated in 2014. Id.
`
`In November 2015, Roberts released the mixtape Renzel Remixes for free
`
`over the internet. In the hip-hop world, a “mixtape” — unlike a commercial
`
`
`
` 1
`
`
`
` In Section 7.01 of the Recording Agreement, Jackson acknowledged that all
`recordings and performances made pursuant to the Recording Agreement were
`works made for hire and are the sole property of Shady/Aftermath.
`4
`
`
`
`
`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
`
`
`
`5
`
`
`
`
`Club (Ft. 50 Cent).”2 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.
`
`Roberts included in the “In Da Club (Ft. 50 Cent)” remix several
`
`references to his then-upcoming commercial album, Black Market, repeating
`
`the lines “Only on the Black Market, December 4th / The Album is out.” The
`
`cover art for Roberts’s mixtape included a reference in small white typeface to
`
`Black Market and its release date, as shown below:
`
`
`
` 2
`
`
`
` “Ft.” and “Feat.” are abbreviations for “featuring.” The mixtape also includes
`several remixes based on samples of songs by other artists who are not identified by
`name on the track list. See App’x at 137 (noting that Renzel Remixes includes a sample
`of The Weeknd’s song “Can’t Feel My Face”); id. at 138 (track list showing a remix
`titled “Can’t Feel My Face” without a “Ft.” designation).
`6
`
`
`
`
`
`
`Jackson brought this action against Roberts on December 23, 2015,
`
`alleging that Roberts’s use of his voice (in the “In Da Club” sample) and his
`
`stage name (in the track title) violated his right of publicity under Connecticut
`
`common law.3 Both parties moved for summary judgment on the issue of
`
`Roberts’s liability. Roberts argued, inter alia, that his use was protected by the
`
`First Amendment, that Jackson’s claim was preempted by the Copyright Act,
`
`and that Jackson had no publicity rights associated with “In Da Club,” having
`
`
`
` 3
`
` Jackson commenced this suit as a part of a Chapter 11 bankruptcy proceeding in
`the United States Bankruptcy Court for the District of Connecticut. See Complaint, In
`re Curtis James Jackson, III, No. 15-21233, ECF No. 288 (Bankr. D. Conn. Dec. 23, 2015).
`Following a joint motion of the parties, the action was transferred to the District
`Court for the District of Connecticut (Eginton, J.). Order Granting Motion to
`Withdraw Reference, Jackson v. Roberts, No. 3:17-cv-550, ECF No. 4 (D. Conn. Mar.
`17, 2017).
`
`
`
`7
`
`
`
`
`transferred them to Shady/Aftermath in the Recording Agreement. See
`
`Memorandum of Law in Support of Defendant’s Motion for Summary
`
`Judgment, Jackson v. Roberts, No. 3:17-cv-550, ECF No. 100 (D. Conn. May 8,
`
`2018).
`
`The district court granted Roberts’s motion for summary judgment,
`
`concluding, in an order of September 28, 2018, that, under the Recording
`
`Agreement, Jackson had “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 that his “right of publicity claim is preempted” because
`
`Jackson “cannot assert a tort action based on the rights that he has
`
`contractually surrendered.” App’x at 604–05. Jackson timely appealed.
`
`B. DISCUSSION
`
`i.
`
`Recording Agreement
`
`As a preliminary matter, we note that the district court erred in
`
`interpreting the relevant provisions of the Recording Agreement to reach the
`
`conclusion that Jackson “surrendered his rights to the use of his name,
`
`performance and likeness associated with the master recording of ‘In Da
`
`
`
`8
`
`
`
`
`Club.’” App’x at 604. While the district court correctly noted that under
`
`Section 8.01 of the Recording Agreement, Jackson granted to
`
`Shady/Aftermath the “perpetual and exclusive” rights to utilize his name and
`
`likeness “for the purposes of trade, or for advertising purposes . . . in
`
`connection with the marketing and exploitation of Phonograph Records and
`
`Covered Videos hereunder,” that grant was exclusive only “during the term
`
`of the Recording Agreement,” which, the parties appear to agree, ended in
`
`2014. Accordingly, upon expiration of the Recording Agreement, Jackson
`
`recovered a shared interest in his right of publicity and is not contractually
`
`precluded from bringing this right of publicity claim. We therefore disagree
`
`with the district court’s dismissal of Jackson’s claim to the extent it was based
`
`on the court’s finding that “[Jackson] cannot assert a tort action based on the
`
`rights that he has contractually surrendered.” App’x at 605.
`
`ii.
`
`Copyright Act Preemption
`
`Jackson contends that the district court erred in concluding that his
`
`claim is preempted. Although relying on reasoning that differs in some
`
`regards from the district court’s, we agree with the court’s result and
`
`conclude that Jackson’s claim is preempted under the doctrine of implied
`
`
`
`9
`
`
`
`
`preemption. We hold, in the alternative, that Jackson’s claim as to the use of
`
`his voice on Roberts’ mixtape is preempted by the express terms of § 301 of
`
`the Copyright Act (“statutory preemption”). Generally stated, implied
`
`preemption precludes the application of state laws to the extent that those
`
`laws interfere with or frustrate the functioning of the regime created by the
`
`Copyright Act.4 Statutory preemption preempts state law claims to the extent
`
`that they assert rights equivalent to those protected by the Copyright Act, in
`
`works of authorship within the subject matter of federal copyright. See
`
`17 U.S.C. § 301.
`
`
`
` 4
`
`
`
` In contrast to preemption of state laws by operation of a congressional statute
`providing for such preemption, “implied preemption” occurs by “direct operation
`of the Supremacy Clause.” Kurns v. R.R. Friction Prods. Corp., 565 U.S. 625, 630 (2012).
`Implied preemption renders a state law inoperative in two circumstances: (1) when
`the state law “regulates conduct in a field that Congress intended the Federal
`Government to occupy exclusively,” (so called “field preemption”) and (2) when the
`state law “actually conflicts with federal law,” (so called “conflict preemption”).
`English v. Gen. Elec. Co., 496 U.S. 72, 79 (1990). The Supreme Court, however, has
`warned against assigning too much importance to these labels, noting that
`categories are not “rigidly distinct” and may overlap. Crosby v. Nat’l Foreign Trade
`Council, 530 U.S. 363, 372 n.6 (2000). For that reason, we use the term “implied
`preemption” to refer to the non-statutory species of Copyright Act preemption.
`10
`
`
`
`
`a. Implied Preemption
`
`The doctrine of implied preemption will bar a state law claim where,
`
`“under the circumstances of a particular case, the challenged state law stands
`
`as an obstacle to the accomplishment and execution of the full purposes and
`
`objectives of Congress.” Crosby v. Nat’l Foreign Trade Council, 530 U.S. 363, 373
`
`(2000) (alterations omitted); see also Goldstein v. California, 412 U.S. 546, 561
`
`(1973) (addressing the scope of implied preemption by the Copyright Act).5
`
`What constitutes a “sufficient obstacle” is a “matter of judgment, to be
`
`informed by examining the federal statute as a whole and identifying its
`
`purpose and intended effects.” Crosby, 530 U.S. at 373. If, by reason of state
`
`law, a federal statute’s “operation within its chosen field . . . [would] be
`
`frustrated and its provisions be refused their natural effect[,] the state law
`
`
`
` 5
`
` Implied preemption under the Copyright Act typically applies when a state law
`would frustrate the operation of a provision of federal copyright law. See, e.g., Vault
`Corp. v. Quaid Software Ltd., 847 F.2d 255, 268–70 (5th Cir. 1988) (holding that a state
`law permitting software producer to prohibit disassembly of its computer program
`conflicted with the policy reflected in 17 U.S.C. § 117(a), which expressly permits the
`owner of a copy of a software program to copy or adapt that program in order to
`utilize it).
`
`
`
`11
`
`
`
`
`must yield to the regulation of Congress.” Id. (quoting Savage v. Jones, 225 U.S.
`
`501, 533 (1912)).6
`
`Of course, many doctrines of state law, including libel, fraud, right of
`
`privacy, and right of publicity, intended to protect substantial interests, can
`
`interfere substantially with the full exploitation of rights created by the
`
`Copyright Act. Those state law doctrines, in other words, can restrict (and in
`
`some cases prohibit) the publication and dissemination of works of
`
`authorship governed by the Act, and therefore at least arguably can stand as
`
`an obstacle to the Copyright Act’s policy of “encourag[ing] the dissemination
`
`of existing and future works.” Golan v. Holder, 565 U.S. 302, 326 (2012).
`
`Nonetheless, while the central justification and value supporting application
`
`of the conflict preemption aspect of implied preemption is the potential of
`
`state law claims to interfere with copyright, many such state law claims at
`
`least in some circumstances function free of implied preemption.
`
`
`
` 6
`
`
`
` The passage in the Copyright Act of 1976 of 17 U.S.C. § 301, which preempts the
`copyright field, perhaps supersedes the field preemption function of implied
`preemption, but does not bar the application of implied preemption in its conflict
`preemption function. See Freightliner Corp. v. Myrick, 514 U.S. 280, 287 (1995)
`(rejecting the argument “that implied pre-emption cannot exist when Congress has
`chosen to include an express pre-emption clause in a statute”). Our discussion of
`implied preemption in this opinion thus relates to its conflict preemption function.
`12
`
`
`
`
`The right of publicity imposes liability on “[o]ne who appropriates to
`
`his own use or benefit the name or likeness of another.” Restatement (Second)
`
`of Torts § 652C (Am. Law Inst. 1977). While we know of no court decisions
`
`that barred application of a right of publicity claim on grounds of implied
`
`preemption, the Third Circuit has asserted that, where a right of publicity
`
`claim would conflict with the exercise, by a copyright holder or licensee, of
`
`the rights guaranteed by federal copyright law, that claim may be impliedly
`
`preempted. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1029–31 (3d Cir.
`
`2008).7 Further, prominent 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. Rebecca
`
`Tushnet, Raising Walls Against Overlapping Rights: Preemption and the Right of
`
`Publicity, 92 NOTRE DAME L. REV. 1539, 1545–48 (2017); see also 1 NIMMER ON
`
`COPYRIGHT § 1.17[B][3][a] (noting that the “conflict between the right of
`
`
`
` 7
`
` But see Brown v. Ames, 201 F.3d 654, 659–61 (5th Cir. 2000) (concluding that right of
`publicity claims are not barred by implied preemption because they pose no risk of
`“undermin[ing] the copyright system”).
`
`
`
`13
`
`
`
`
`publicity and copyright . . . [is] rooted more in conflict preemption and the
`
`Supremacy Clause . . . than in express preemption and Section 301”).8
`
`We agree that implied preemption may provide a defense against a
`
`right of publicity claim which, if allowed to proceed, 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. It does not follow, however, that state law publicity
`
`interests are inevitably preempted whenever their recognition would burden
`
`the enjoyment of the benefits of copyright. The Copyright Act’s grant of
`
`exclusive rights to disseminate (and to authorize the dissemination of) a work
`
`of authorship does not necessarily mean that those rights will effectively
`
`nullify significant rights established under state law whenever the application
`
`of the state law would impair or diminish exploitation of the federal right.
`
`
`
` 8
`
` See also Jennifer E. Rothman, Copyright Preemption and the Right of Publicity, 36 U.C.
`DAVIS L. REV. 199, 208, 236 (2002) (arguing that “principles of the Supremacy Clause
`[should] determine when copyright law should preempt the right of publicity”);
`Guy A. Rub, A Less-Formalistic Copyright Preemption, 24 J. INTELL. PROP. L. 327, 345,
`348 n.95 (2017) (arguing that “[c]onflict preemption should . . . be considered in
`practically every copyright preemption case” and “should not be reserved for
`unusual or extreme cases” because the Copyright Act's statutory preemption
`provision “does not seem to address all the situations in which copyright law and
`state law might conflict”).
`
`
`
`14
`
`
`
`
`Federal copyright law does not entirely divest the states of authority to limit
`
`the exploitation of a work within copyright’s subject matter in furtherance of
`
`sufficiently substantial state interests, such as protecting a person’s privacy,
`
`compensating for fraud or defamation, or regulating unauthorized use of its
`
`citizens’ personas. Cf. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 487 (1974)
`
`(holding that state trade secret law is not categorically preempted by federal
`
`patent law, noting that “[a] most fundamental human right, that of privacy, is
`
`threatened when industrial espionage is condoned or is made profitable; the
`
`state interest in denying profit to such illegal ventures is unchallengeable”
`
`(footnote omitted)). A state may, for example, enact an anti-paparazzi statute
`
`that protects its citizens from unreasonable intrusions on personal privacy,
`
`see, e.g., Cal. Civ. Code § 1708.8 (imposing liability for “captur[ing] any type
`
`of visual image . . . of the plaintiff engaging in a private, personal, or familial
`
`activity”), and a plaintiff may come to court to vindicate that state law interest
`
`notwithstanding that the claim, if successful, may have the collateral effect of
`
`precluding the defendant from exploiting a photograph that falls within the
`
`subject matter of federal copyright law. And a state may impose liability on
`
`the publication of misleading or false newspaper articles, notwithstanding
`
`
`
`15
`
`
`
`
`that the collateral effect of that liability would be to interfere with the ability
`
`of the news media, under the copyright law, to exploit such articles for
`
`commercial gain. Cf. H.R. Rep. No. 94-1476, at 132, reprinted in 1976
`
`U.S.C.C.A.N. 5659, 5748 (1976) (“[Federal copyright law] is not intended to
`
`preempt common law protection in cases involving activities such as false
`
`labeling, fraudulent representation, and passing off even where the subject
`
`matter involved comes within the scope of the copyright statute.”).9 In other
`
`words, the mere fact that a state law claim would restrict or prevent certain
`
`uses of a copyrightable work does not necessarily answer the question
`
`whether that state law claim should be preempted on the ground that it
`
`“stands as an obstacle to the accomplishment and execution of the full
`
`purposes and objectives of [the Copyright Act].” Goldstein, 412 U.S. at 561
`
`(citation omitted).
`
`A 1989 Supreme Court decision finding a state claim preempted by
`
`federal patent law provides a helpful framework for us to determine when a
`
`
`
` 9
`
`
`
` See also Factors Etc., Inc. v. Pro Arts, Inc., 496 F. Supp. 1090, 1100 (S.D.N.Y. 1980)
`(noting that the “right to exploit [a person’s] name and image” for commercial
`purposes covers an “area unattended by federal law” and that a state law protecting
`that right is “neither contrary to nor preempted by federal law” (internal quotation
`marks omitted)), rev’d on other grounds, 652 F.2d 278 (2d Cir. 1981).
`16
`
`
`
`
`right of publicity claim should be barred under implied preemption. In Bonito
`
`Boats, Inc. v. Thunder Craft Boats, Inc., the Supreme Court considered whether
`
`a state law prohibiting the duplication of unpatented boat hull designs was
`
`preempted by the federal patent law. 489 U.S. 141 (1989). To determine the
`
`question of implied preemption, the Court explained that the States may not
`
`offer protection that would “render . . . fruitless” the element of patent law
`
`providing for “free competition in the exploitation of unpatented designs and
`
`innovations.” Id. at 151–52.10 However, the Court further explained that “the
`
`States may [nonetheless] place limited regulations on the circumstances in
`
`which such designs are used in order to prevent consumer confusion” and
`
`may provide protections for trade secrets “[d]espite the fact that [such]
`
`protection [is] available for ideas [that] clearly [fall] within the subject matter
`
`of patent” because “the nature and degree of [such] state protection [does] not
`
`conflict with the federal policies” underlying the patent law. Id. at 154–55
`
`(“[A]ll state regulation of . . . unpatented subject matter is not ipso facto pre-
`
`
`
`
`10 See also id. at 156–57 (“A state law that substantially interferes with the enjoyment
`of an unpatented utilitarian or design conception which has been freely disclosed by
`its author to the public at large impermissibly contravenes the ultimate goal of
`public disclosure and use which is the centerpiece of federal patent policy.”).
`17
`
`
`
`
`
`
`empted by the federal patent laws,” id. at 154). In its discussion of precedents
`
`as to the non-preemption by federal patent law of state trade secret law, the
`
`Court explained that “certain aspects of trade secret law operate[] to protect
`
`non-economic interests outside the sphere of congressional concern in the
`
`patent laws,” specifically the right of “privacy, [which] is threatened when
`
`industrial espionage is condoned or is made profitable.” Id. at 155 (citing
`
`Kewanee Oil, 416 U.S. at 487).
`
`Turning to the state law at issue, the Court noted that “[i]t is readily
`
`apparent that the [] statute does not operate to prohibit ‘unfair competition’ in
`
`the usual sense that term is understood . . . [as a] tort of deceit . . . focus[ed] []
`
`on the protection of consumers.” Id. at 157. Instead, the statute “is aimed
`
`directly at preventing the exploitation of the design and utilitarian
`
`conceptions embodied in the product itself” and “creat[ing] an inducement
`
`for the improvement of boat hull designs.” Id. at 158. For this reason, the
`
`Court held that the state law “conflicts with the federal [patent] policy” by
`
`permitting the “reassert[ion]” of “a substantial property right in [an] idea”
`
`lacking in federal patent protection. Id. at 159.
`
`
`
`18
`
`
`
`
`While Bonito Boats addressed the preemptive scope of the federal patent
`
`law, that case provides a general framework to determine whether right of
`
`publicity claims are precluded by reason of Copyright Act implied
`
`preemption. 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. Accordingly, 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.” Id. at
`
`155.11
`
`Many right of publicity claims would satisfy that standard. Some right
`
`of publicity claims, for example, target false endorsements, and as such
`
`
`
`
`11 Our reference to “subject matter” here should not be taken to mean that, as a
`prerequisite to the implied preemption analysis, the court must conduct the subject
`matter inquiry inherent in the statutory preemption analysis. Instead, the focus is on
`whether the claim would have the effect of frustrating the functioning of the
`copyright laws. Here, as we explain in section c, it would.
`19
`
`
`
`
`
`
`vindicate a state’s interest in “prevent[ing] consumer confusion.” Id. at 154. A
`
`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” that underlies the federal copyright law. Mazer v. Stein,
`
`347 U.S. 201, 219 (1954) (internal quotation marks and citation omitted); see
`
`also Tushnet, supra, at 1545 (noting that “an element of consumer deception”
`
`suffices to distinguish a right of publicity claim from a copyright claim for
`
`purposes of preemption). Further, 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, see Cardtoons, L.C. v. Major League
`
`Baseball Players Ass’n, 95 F.3d 959, 962–64 (10th Cir. 1996) (considering a right
`
`of publicity claim based on the unauthorized use of the likenesses of baseball
`
`players on parody baseball cards), vindicate substantial state law interests
`
`that have little relation to the interests of a copyright holder to exclusive
`
`control over works of authorship. See Bonito Boats, 489 U.S. at 155. The more
`
`
`
`20
`
`
`
`
`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. See Tushnet, supra, at 1548 (arguing that “a right
`
`of publicity that furthers the protection of consumers, reputation, or
`
`privacy . . . [should] not be preempted”).
`
`In contrast, 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. Cf. Dreyer v.
`
`Nat’l Football League, 814 F.3d 938, 943 (8th Cir. 2016) (noting that, where a
`
`right of publicity claim does not further the “state’s interest in protecting
`
`consumers,” “that suit seeks to subordinate the copyright holder’s right to
`
`exploit the value of [the] work to the plaintiff’s interest in controlling the
`
`work’s dissemination” under state law, and is therefore preempted).
`
`We now turn to the question whether Jackson’s Connecticut right of
`
`publicity claim against Roberts asserts a sufficiently substantial state interest,
`
`distinct from the interests underlying federal copyright law, to evade
`
`
`
`21
`
`
`
`
`preemption. The first question is whether Jackson even states an actionable
`
`claim of right of privacy. While there is very little Connecticut authority as to
`
`the boundaries of Connecticut’s common law right of publicity, we can derive
`
`its probable scope from the Restatement (Second) of Torts. See Goodrich v.
`
`Waterbury Republican-American, Inc., 448 A.2d 1317, 1329 (Conn. 1982)
`
`(adopting the Restatement’s definition of right of privacy and publicity torts).
`
`The Restatement provides that “[o]ne who appropriates to his own use or
`
`benefit the name or likeness of another is subject to liability to the other for
`
`invasion of his privacy.” Restatement (Second) of Torts § 652C. It explains
`
`that, while “[t]he common form of invasion of privacy . . . is the appropriation
`
`and use of the plaintiff’s name or likeness to advertise the defendant’s
`
`business or product,” the rule is “not limited to commercial appropriation”
`
`and “applies also when the defendant makes use of the plaintiff’s name or
`
`likeness for his own purposes and benefit, even though the use is not a
`
`commercial one.” Id. cmt. b. The Restatement thus at least initially sets out
`
`what appears to be a highly inclusive definition of the tort; a defendant is
`
`unlikely to publish a reference to a plaintiff unless the defendant views it as
`
`being somehow to his personal benefit. However, the Restatement then
`
`
`
`22
`
`
`
`
`provides, more restrictively, that “the defendant must have appropriated . . .
`
`the reputation, prestige, social or commercial standing, public interest or
`
`other values of the plaintiff’s name or likeness,” id. cmt. c, and that “[t]he
`
`value of the plaintiff’s name is not appropriated by mere mention of it, . . . nor
`
`is the value of his likeness appropriated when it is published for purposes
`
`other than taking advantage of his reputation, prestige, or other value
`
`associated with him, for purposes of publicity,” id. cmt. d.
`
`It is difficult to see how Roberts’s mere use of Jackson’s name to
`
`identify him as the artist of the song Roberts samples, and his use of the
`
`sound of Jackson’s voice, which is inevitable in sampling Jackson’s
`
`performance of his song, “appropriated . . . [Jackson’s] reputation, prestige,
`
`social or commercial standing, public interest or other values of [Jackson’s]
`
`name or likeness.” Id. cmt. c. “No one has the right to object merely because
`
`his name or his appearance is brought before the public, since neither is in
`
`any way a private matter and both are open to public observation.” Id. cmt. d.
`
`Nonetheless, 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. We will
`
`
`
`23
`
`
`
`
`assume (although without confidence) that the suit would not have been
`
`dismissed by a Connecticut court for failure to state a claim upon which relief
`
`may be granted.
`
`Nonetheless, Jackson’s claim does not seek to vindicate any substantial
`
`state interests distinct from those furthered by the copyright law: as explained
`
`further below, Roberts did not employ Jackson’s name or persona in a
`
`manner that falsely implied Jackson’s endorsement of Roberts, his mixtape, or
`
`his forthcoming album,12 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. Compare with Cardtoons, 95 F.3d at
`
`962–64. Nor is Roberts’s reference to Jackson’s persona in any way
`
`derogatory, or an invasion of Jackson’s privacy. See Tushnet, supra, at 1548
`
`(suggesting that only right of publicity claims which “further[] the protection
`
`
`
`
`12 As explained below, based on (a) the absence of any message of Jackson’s
`endorsement in the mixtape, (b) the 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),
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
