Jackson v. Roberts, 972 F.3d 25

Background

Curtis "50 Cent" Jackson performed and recorded "In Da Club" under a Recording Agreement that designated the master recordings as the label’s property and granted the label certain publicity/marketing rights during the agreement term; Jackson contends the agreement expired in 2014.
William "Rick Ross" Roberts released a free 2015 mixtape (Renzel Remixes) that sampled numerous famous songs; one track used the original instrumental of "In Da Club," included an unaltered ~30-second clip of Jackson’s recorded refrain, and listed the track as "In Da Club (Ft. 50 Cent)."
Roberts did not seek permission from Shady/Aftermath (the copyright owner of the master recording) or from Jackson to use the sample or to use Jackson’s stage name in the track title.
Jackson sued in Connecticut state common law for violation of the right of publicity based on the sampled voice and the track-list credit; the district court granted summary judgment for Roberts largely on preemption grounds.
The Second Circuit: reversed the district court’s contractual holding (Jackson reclaimed publicity rights after the contract’s term), but affirmed summary judgment because Jackson’s publicity claim was preempted—under implied preemption and, as to the voice sample, under §301 statutory preemption.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Jackson’s Connecticut right of publicity claim is impliedly preempted by federal copyright policy	Right of publicity protects persona/voice/name; state interest distinct from copyright	Allowing the suit would frustrate federal copyright scheme and let performers control exploitation of recordings they do not own	Implied preemption applies; Jackson’s claim is a thinly disguised effort to control a copyrighted work and is preempted
Whether §301 statutory preemption bars Jackson’s claim as to the sampled voice recording	The claim targets Jackson’s uncopyrightable voice/identity, not the copyrighted work	The gravamen targets reproduction/distribution of a sound recording within copyright subject matter	§301 preempts the claim based on the voice sample: the focus is the copyrighted recording and the rights asserted are equivalent to copyright
Whether the Recording Agreement foreclosed Jackson’s publicity claim	Jackson: agreement term ended in 2014 so publicity rights reverted and he may sue	Roberts: Jackson contractually surrendered rights and thus cannot sue	The district court erred to the extent it relied on surrender; appellate court held Jackson recovered publicity rights after contract termination but preemption still bars the suit
Whether Roberts’s use implied Jackson’s endorsement (consumer-deception/identity-emphasis)	Jackson: titling the track and using his recorded voice implies endorsement or association	Roberts: hip-hop mixtape practice routinely samples and credits artists; no contextual endorsement; many artists were credited, and use was non-deceptive	No reasonable listener would construe Roberts’s use as implying endorsement; gravamen is reproduction of the copyrighted work, not an identity-based endorsement claim

Key Cases Cited

Crosby v. National Foreign Trade Council, 530 U.S. 363 (2000) (framework for implied preemption/conflict with federal objectives)
Goldstein v. California, 412 U.S. 546 (1973) (Copyright Act’s preemptive scope discussion)
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) (test whether state protection conflicts with federal intellectual-property policy)
Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974) (states may protect privacy/trade secrets without supplanting federal patent policy)
Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195 (2d Cir. 1983) (two-part §301 preemption analysis adopted by the Second Circuit)
Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) (court’s test whether extra elements make state claim qualitatively different from copyright)
Laws v. Sony Music Entertain., Inc., 448 F.3d 1134 (9th Cir. 2006) (right-of-publicity claims based on samples can be preempted when claim targets the recording)
Ray v. ESPN, Inc., 783 F.3d 1140 (8th Cir. 2015) (claim preempted where focus is rebroadcast of copyrighted film depicting plaintiff)
Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001) (right-of-publicity claim survived §301 where photo use implied plaintiff’s endorsement of product)
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964) (federal policy favors free use of materials in the public domain)
National Basketball Ass’n v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) (state commercial-misappropriation claims may be preempted when effectively equivalent to copyright claims)