In a precedential 66-page opinion in a case brought by Curtis Jackson (a/k/a 50 Cent) that will be cited as a seminal decision going forward, the U.S. Court of Appeals for the Second Circuit adopted the copyright preemption doctrine in barring a right of publicity claim.
Given the growing tension between copyright and right of publicity laws, this opinion is significant because it likely creates a further circuit split that the U.S. Supreme Court may ultimately resolve, and it potentially complicates longstanding practices of the music licensing process.
So, What Happened?
The facts underlying this five-year litigation battle are fairly straightforward. In December 2015, Jackson sued William Roberts (a/k/a Rick Ross) after Roberts recorded and made publicly available a remix version of Jackson’s most popular song, “In Da Club.”
Roberts’ remix version was one of 26 remixes included on his Renzel Remixes mixtape, in which Roberts performed his own lyrics over the original (i.e., “master”) recordings of popular songs by other well-known artists, including Adele and Snoop Dogg. Jackson’s complaint alleged that Roberts’ use of Jackson’s voice in the song and stage name in the track’s title violated Jackson’s right of publicity under Connecticut common law.
The U.S. District Court for the District of Connecticut granted summary judgment in favor of Roberts, holding that Jackson had contractually surrendered his right to use his likeness associated with the master recording of “In Da Club” vis-à-vis his recording agreement, and thus his right of publicity claim was preempted under the federal copyright preemption doctrine. In February 2019, Jackson appealed.
The Second Circuit Decision
The Second Circuit affirmed the lower court’s ruling, but for different reasons, determining that statutory preemption by the express provision of Section 301 of the Copyright Act, as opposed to the terms of Jackson’s recording artist agreement, barred Jackson’s right of publicity claim.
It ultimately concluded that Jackson’s right of publicity claim was based on the reproduction of a copyrighted work embodying Jackson’s voice, which was preempted by Section 301 because its focus was Roberts’ use of a work that fell within the “subject matter of copyright” and it asserted rights that were sufficiently equivalent to the rights protected by federal copyright law.
In issuing its opinion in this case of first impression, the Second Circuit has provided courts within its jurisdiction a blueprint for deciding cases involving right of publicity claims based on the use of copyrighted music.
Moreover, it now joins the Eighth and Ninth Circuits in adopting the copyright preemption doctrine to right of publicity claims in the entertainment context. Conversely, the Third, Fifth, Seventh, and Tenth Circuits have found, in limited circumstances, against applying the copyright preemption doctrine to right of publicity claims, especially when commercial or advertising uses are involved.
A circuit split is taking shape on this issue, and additional circuits will likely grapple with the right of publicity-copyright tension in future cases. As such, the U.S. Supreme Court may ultimately some day determine the issue.
There is at least one takeaway from the Second Circuit’s decision that may give the entertainment industry heartburn concerning the future of music licensing. Artists routinely assign away any copyright ownership, or any name, image or likeness rights in advertising, in connection with the master recordings of their songs.
This eliminates the need for others to obtain performers’ approval for subsequent licensing, thus making the music clearing process less cumbersome.
According to the Second Circuit’s interpretation of Jackson’s recording artist agreement, however, artists’ consent for subsequent licensing may be required. In a surprising twist, and contrary to the lower court’s interpretation, the Second Circuit found, in dicta, that Jackson’s right of publicity for use of “In Da Club” possibly survived the expiration of his agreement.
The court stated that “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.” Leaving the court’s preemption ruling aside, this contractual interpretation could afford Jackson a limited ability to have approval rights for the future licensing of one of the top songs in history.
Although legal experts may maintain that the record label’s rights received under Jackson’s contract survived the termination of the parties’ agreement, the Second Circuit’s language certainly suggests that performers’ approval could be required for licensing that occurs following the expiration of their contracts.
This outcome would significantly complicate the music licensing and clearing processes. At the very least, the Second Circuit has left the meaning of its words open to further analysis (albeit likely unintentionally).
Many complex issues surrounding music, including how it is licensed, who may sue based on its unauthorized use, and which laws apply, will likely remain hotly contested for years to come. In the interim, as William Shakespeare once said, let the music “play on.”
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Jonathan Goins is a partner & co-chair of the Intellectual Property & Technology Group at Lewis Brisbois Bisgaard & Smith LLP. He was lead counsel for William Roberts in this litigation. He is a frequent speaker and author on IP topics and lectures on copyright law, trademark law, entertainment law, and sports law as an adjunct professor at Atlanta’s John Marshall Law School.