Jackson v. Roberts ( 2020 )

19-0480-bk
Jackson v. Roberts
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
August Term, 2019
(Argued: January 23, 2020 Decided: August 19, 2020)
Docket No. 19-480
_____________________________________
In re: Curtis James Jackson, III,
Debtor.
_____________________________________
Curtis James Jackson, III,
Plaintiff-Appellant,
v.
William Leonard Roberts, II,
Defendant-Appellee.
_____________________________________
Before:
PIERRE N. LEVAL, REENA RAGGI, DEBRA ANN LIVINGSTON, Circuit Judges.
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
1In 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
3Jackson 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.
4In 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
7But 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.
8See 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
9See 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
11Our 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
12As 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), and (c) the context of
Roberts’s use, we conclude that no reasonable listener could conclude that Roberts’s
use of the “In Da Club” sample and of Jackson’s stage name implied Jackson’s
endorsement of Roberts, his mixtape, or his then-upcoming commercial album. See
infra at 56.
24
of consumers [against deception], [or the plaintiff’s] reputation[] or privacy”
should survive implied preemption). The substantiality of Jackson’s interest
in his invocation of Connecticut’s right of publicity is therefore minimal.
Roberts’s mere reproduction of a sound that can be recognized as Jackson’s
voice, and his small discreet notation that correctly identifies Jackson as the
artist of the sample played, do not violate any substantial state law publicity
interest that Jackson possesses. To the contrary, 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.
As Jackson’s suit is directed against references to him in the context of
the reproduction, without his authorization, of a sample from his
performance of his famous song, in the absence of any substantial alleged
injury properly within the scope of the publicity right, the suit constitutes
little more than a thinly disguised effort to exert control over an unauthorized
production of a sample of his work. To the extent that the applicability of
implied preemption depends on an assessment of the substantiality of the
state law interest invoked by the plaintiff, Jackson’s invocation of his right of
publicity in this context is at best sorely deficient.
25
We turn now to the other essential element of implied preemption to be
balanced against the substantiality of the plaintiff’s state law interest — the
potential for conflict between the assertion of a state law claim invoked
against the dissemination of works within the subject matter of copyright and
the operation of the federal copyright system. We find a potential for conflict
and impairment of rights established by the Copyright Act in two different
respects.
Many works of authorship that fall within the subject matter of the
Copyright Act include either depictions of real persons or appearances by real
persons — such as actors or musicians in the performance of the work. To the
extent that publication, reproduction, or performance of a work that either
refers explicitly to a real person or exhibits real persons in its performance
could support a suit for invasion of that real person’s right of publicity, 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.
See Laws v. Sony Music Ent., Inc., 448 F.3d 1134, 1145 (9th Cir. 2006) (warning
that “the right of publicity [could be used as] a license to limit the copyright
holder’s rights” and that, “left to creative legal arguments, the [] right of
26
publicity could easily supplant the copyright scheme”); Sinatra v. Goodyear
Tire & Rubber Co., 435 F.2d 711, 718 (9th Cir. 1970) (“If a proposed licensee
must pay each artist who has played or sung the composition and who might
therefore claim [misappropriation of likeness], the licensee may well be
discouraged to the point of complete loss of interest.”). 13 Moreover, such suits
could substantially interfere with the utilization of a work in ways explicitly
permitted by the Copyright Act, such as for uses that would qualify as fair
use under 17 U.S.C. § 107, or for uses of works in the public domain. A person
who uses a work for “criticism, comment, news reporting, teaching, . . .
13 We recognize that the Recording Agreement between Jackson and
Shady/Aftermath offered Shady/Aftermath a means of avoiding the impairment of
its copyright interest that might result from Jackson's ability to sue a licensee or
assignee for violation of Jackson's right of publicity. The Recording Agreement, as
noted above, assigned Jackson's right of publicity to Shady/Aftermath on an
exclusive basis during the term of the Recording Agreement (through 2014) and
thereafter on a non-exclusive basis. Accordingly, coincident with an assignment or
grant of a license for “In Da Club,” Shady/Aftermath could have assigned or
licensed Jackson’s right of publicity, providing the assignee or licensee with a
complete defense against any such suit by Jackson. On the other hand, if
Shady/Aftermath failed to license or assign the publicity right coincident with the
license or assignment of the copyright, the assignee or licensee would be vulnerable
to Jackson’s interference with its copyright entitlement. The fact that
Shady/Aftermath possesses a contractual right capable of counteracting the potential
for interference with its rights does not nullify the potential for such right of
publicity suits to interfere in the proper functioning of the copyright system.
27
scholarship, or research” in a manner expressly authorized by the fair use
provision of the Copyright Act might nonetheless incur liability to a person
depicted in the work under a state right of publicity law, for mere depiction
of her likeness, notwithstanding the express policy of the Copyright Act to
allow such usage. 14 Cf. Bonito Boats, 489 U.S. at 156–57. Similarly, 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 allowing free access to copy whatever the
14 We recognize that many statutory right of publicity laws include specific
exceptions for types of uses that might qualify as fair use under the copyright law.
See, e.g., Cal. Civ. Code § 3344(d) (providing that the use of a name or likeness “in
connection with any news, public affairs, or sports broadcast or account, or any
political campaign, shall not constitute [a violation of the statute]”). The Restatement
provides the basis for a similar exception. See Restatement (Second) of Torts § 652C
(“[A] newspaper . . . does not become liable under the rule stated in this Section to
every person whose name or likeness it publishes.”). And, even if state law would
authorize a right of publicity suit against the use of a copyrighted work in a manner
that would qualify as a fair use under the Copyright Act, the First Amendment
might provide a strong defense. See Hart v. Elec. Arts, Inc., 717 F.3d 141, 158, 165 (3d
Cir. 2012) (adopting the “transformative use” test for evaluating First Amendment
defenses to right of publicity claims, which “import[s] the concept of
‘transformative’ use from copyright law,” id. at 158). Nonetheless, while the First
Amendment and such provisions may reduce the risk of such overreaching by
publicity laws, the potential for conflict would persist in many instances.
28
federal . . . copyright laws leave in the public domain.” Compco Corp. v. Day-
Brite Lighting, Inc., 376 U.S. 234, 237 (1964).
Allowing Jackson’s right of publicity suit to proceed would interfere
with the functioning of the copyright system in another way as well. As
explained above, Jackson’s suit, although ostensibly an invocation of his
rights to control the use of his persona in publicity, is so devoid of the
substantial interests protected by that right that it is more properly seen as a
thinly disguised effort by the creator and performer of a work within the
subject matter of copyright — who owns no copyright interest in the work —
to nonetheless exert control over its distribution, notwithstanding that the law
of copyright confers the right to exercise such control exclusively on the rights
holder. 17 U.S.C. § 106. Jackson’s attempt though this suit to control the
reproduction of “In Da Club” conflicts with and acts in derogation of the
exclusive right of the rights holder to exercise such control.
We recognize that, pursuant to the Recording Agreement, there were
limitations on Shady/Aftermath’s authority to license the use of “In Da Club.”
The Recording Agreement contained a reservation. With certain exceptions, it
did not allow Shady/Aftermath to license “In Da Club” for use in a
29
commercial or for use as a sample without Jackson’s approval. Thus,
Roberts’s use of the sample was not only unauthorized by the rightsholder,
but was also a use that the rightsholder could not authorize without Jackson’s
approval.
By reason of his unauthorized sampling, Roberts was presumably liable
for copyright infringement to Shady/Aftermath, but not to Jackson. Jackson
may have a right either to compel Shady/Aftermath to sue Roberts for
copyright infringement, seeking damages on which Jackson might have been
entitled to a royalty, or to seek damages from Shady/Aftermath for its failure
to protect Jackson’s right to royalties by suing Roberts. Even if Jackson
possessed such rights against Shady/Aftermath, which in turn possessed
rights it could have enforced against Roberts, Jackson possessed no legal right
to directly control Roberts’s use of the song. His attempt to do so under the
disguise of a right of publicity claim was in derogation of Shady/Aftermath’s
exclusive right to enforce the copyright.
While it is true that Jackson’s suit did not prevent Shady/Aftermath
from itself suing Roberts for copyright infringement, Shady/Aftermath might
have had good reason for not doing so. It might have considered Roberts’s
30
use of “In Da Club,” although unauthorized, to be beneficial to the
commercial value of the song, and may therefore have preferred to tacitly
permit Roberts’s infringement of its copyright. The exclusive right of the
copyright holder “to authorize” the reproduction or adaptation of a work of
authorship must include the right to decide whether to tolerate an
infringement. Cf. Tim Wu, Tolerated Use, 31 COLUM. J.L. & ARTS 617, 619 (2008)
(“Tolerated use is infringing usage of a copyrighted work of which the
copyright owner may be aware, yet does nothing about. . . . Reasons [for non-
enforcement] can include simple laziness or enforcement costs, a desire to
create goodwill, or a calculation that the infringement creates an economic
complement to the copyrighted work — it actually benefits the owner.”).
Jackson’s direct suit against Roberts interferes with that right by attempting to
step into Shady/Aftermath’s shoes and impose liability on Roberts for the
reproduction and adaptation of “In Da Club.”
We recognize that there are weaknesses in Roberts’s assertion of
preemption against Jackson. For one, implied preemption is typically invoked
to protect against suit one who is lawfully reproducing or publishing a
copyright-protected work. See Facenda, 542 F.3d at 1028–32 (analyzing
31
potential preemption of right of publicity claim based on the defendant’s use
of a work to which the defendant held the copyright). Roberts, in contrast, has
no rights in the copyrighted work. Furthermore, as explained above, it is not
clear that Jackson’s suit’s interference with Shady/Aftermath’s exclusive right
to seek copyright remedies had any substantial adverse effect on
Shady/Aftermath’s ability to exploit its rights, although we can envision
circumstances in which a Shady/Aftermath copyright licensee’s ability to
exploit its copyright entitlement would be frustrated by a similar suit. See
supra note 13. We conclude that the policy considerations justifying the
doctrine of implied preemption prevail, so that Jackson’s insubstantial claim
of violation of his publicity is precluded.
b. Statutory Preemption
Roberts also contends that Jackson’s right of publicity claim is
preempted by § 301 of the Copyright Act. We refer to this category of
preemption as “statutory preemption.” The purpose of statutory preemption
is essentially to ensure a nationwide, uniform federal copyright system,
ousting the states from imposing any control of the area. See H.R. Rep. No. 94-
32
1476, at 129 (“Section 301 . . . adopts a single system of Federal statutory
copyright . . . .”). Section 301 reads as follows:
On and after January 1, 1978, all legal or equitable rights that are
equivalent to any of the exclusive rights within the general scope
of copyright as specified by section 106 in works of authorship that
are fixed in a tangible medium of expression and come within the
subject matter of copyright as specified by sections 102 and 103,
whether created before or after that date and whether published
or unpublished, are governed exclusively by this title. Thereafter,
no person is entitled to any such right or equivalent right in any
such work under the common law or statutes of any State.
17 U.S.C. § 301(a). Our court has interpreted the statute as directing a two-
part analysis for determining whether a state law claim is preempted under
§ 301. Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir.
1983), rev’d on other grounds, 471 U.S. 539 (1985). What we will call the “first”
prong, although it is mentioned second in the text of the statute, looks at the
work that would be affected by the plaintiff’s exercise of a state-created right,
and requires (as an essential element of preemption) that the work “come
within the subject matter of copyright as specified by sections 102 and 103.”
17 U.S.C. § 301(a). 15 Accordingly, if the work against which the plaintiff
15Section 102(a) provides that “[c]opyright protection subsists . . . in original works
of authorship fixed in any tangible medium of expression, now known or later
33
claims rights is a “literary work[],” a “musical work[],”a “sound recording[],”
or any other category of “work[] of authorship” within the “subject matter of
copyright” (even if the subject of the claim is for some reason ineligible for
copyright protection 16) the plaintiff’s claim is subject to the possibility of
statutory preemption. 17 U.S.C. § 102(a); Harper & Row, 723 F.2d at 200
(holding that memoirs are “literary works” falling within the subject matter of
copyright).
The second prong looks at the right being asserted (over a work that
comes within the “subject matter of copyright”) and requires (for preemption
to apply) that the right be “equivalent to any of the exclusive rights within the
general scope of copyright as specified by section 106.” 17 U.S.C. § 301(a)
developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device,” and provides
that “[w]orks of authorship include . . . (2) musical works, including any
accompanying words; . . . [and] (7) sound recordings.” 17 U.S.C. § 102(a). Section
103, which addresses compilations and derivative works, is not relevant to our
analysis.
16See H.R. Rep. No. 94-1476, at 131 (“As long as a work fits within one of the general
subject matter categories of sections 102 and 103, [Section 301] prevents the States
from protecting it even if it fails to achieve Federal statutory copyright protection
because it is too minimal or lacking in originality to qualify, or because it has fallen
into the public domain.”); see also Harper & Row, 723 F.2d at 200 (citing H.R. Rep. No.
94-1476).
34
(emphasis added). This prong is often referred to as the “general scope”
requirement of preemption. See, e.g., Briarpatch Ltd., L.P. v. Phoenix Pictures,
Inc., 373 F.3d 296, 305 (2d Cir. 2004). To more clearly distinguish this second
requirement from the “subject matter” prong, we refer to it as the
“equivalence” requirement. Section 106 defines the “exclusive rights” granted
by the federal copyright law, which consist of the rights “to do and to
authorize” the reproduction, distribution, performance, and display of a
work, and the creation of derivative works based on a work. 17 U.S.C. § 106.
With respect to what the statute means by “equivalent,” we have stated as a
general proposition (later somewhat refined, as discussed below), that state
law rights are equivalent to those within copyright’s general scope “[w]hen
[those state law rights] may be abridged by an act which, in and of itself,
would infringe one of the exclusive rights [provided in Section 106] . . . .
Conversely, when a state law violation is predicated upon an act
incorporating elements beyond mere reproduction or the like, the rights
involved are not equivalent and preemption will not occur.” Harper & Row,
723 F.2d at 200.
35
This Harper & Row summary of the meaning of equivalency is
somewhat overbroad in its description of both the circumstances where the
right is equivalent (and therefore subject to preemption) and those where it is
not equivalent (and not subject to preemption). As for the former, the test
would sweep in every claim based on right of publicity or privacy directed
against a work within the subject matter of copyright because every such
claim would assert abridgment of the right by an act of reproduction,
distribution, or performance that, “in and of itself, would infringe one of the
exclusive rights” of copyright. Id. at 200.
And as for non-equivalency, the Harper & Row formulation suggests
that the mere presence of an extra element beyond those required for
copyright infringement would preclude preemption (with the consequence
that no publicity claim would ever be precluded, as such claims typically
require the “appropriat[ion] . . . [of a] name or likeness,” see Restatement
(Second) of Torts § 652C). While we have indeed begun by inquiring whether
“an extra element is required instead of or in addition to” what is required for
a copyright infringement claim, Comput. Assocs. Int’l., Inc. v. Altai, Inc., 982
F.2d 693, 716 (2d Cir. 1992) (citations and internal quotation marks omitted),
36
not all “extra elements” are sufficient to remove the claim from the “general
scope” of copyright. The critical inquiry is whether such extra elements of the
state law claim beyond what is required for copyright infringement “change[]
the nature of the action so that it is qualitatively different from a copyright
infringement claim.” Id. (internal quotation marks omitted). “An action will
not be saved from preemption by elements . . . which alter the action’s scope
but not its nature.” Id. at 717 (emphases added) (internal quotation marks
omitted). 17
17One prominent copyright treatise has cautioned against “mechanical decision
making that merely inquires whether any extra element can be found in the state
claim [] beyond that necessary to give rise to a copyright infringement violation.”
6 PATRY ON COPYRIGHT § 18:19, Westlaw (database updated Mar. 2020). It urges:
“Instead of focusing on . . . the presence or absence of extra elements, the proper
approach is to determine whether the elements of the state claim are qualitatively
different in nature from the elements of a copyright cause of action.” Id. While we
have inquired into the existence of extra elements in determining whether
preemption applies, see, e.g., Altai, 982 F.2d at 716; Briarpatch, 373 F.3d at 305–06;
Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 850 (2d Cir. 1997), our precedents
support the view that the determination should not depend on a “mechanical”
search for extra elements, but, as we stated in Altai, requires a holistic evaluation of
the nature of the “rights sought to be enforced,” and a determination whether the
state law action “is qualitatively different from a copyright infringement claim.” Altai,
982 F.2d at 716; cf. Ritchie v. Williams, 395 F.3d 283, 287 n.3 (6th Cir. 2005) (criticizing
the “extra element” test, noting that it “does not provide any real guidance to the
courts” (quoting Schuyler Moore, Straightening Out Copyright Preemption, 9 UCLA
ENT. L. REV. 201, 204 (2002))). The text of the statute — which does not mention
“extra elements” — supports this view.
37
Under this test, we have upheld § 301 preemption as to a variety of
state law claims that included an “extra element” — including claims of
unfair competition, 18 unjust enrichment, 19 conversion, 20 tortious interference
with contractual relations, 21 and commercial misappropriation 22 — when the
extra element was not of such important character as to differentiate the claim
18Walker v. Time Life Films, Inc., 784 F.2d 44, 53 (2d Cir. 1986) (holding that plaintiff’s
state law unfair competition claim, based on defendants’ use of plaintiff’s book in a
motion picture, was preempted “to the extent it seeks protection against copying
of . . . [the] book”); Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 247 (2d Cir.
1983) (same).
19Briarpatch, 373 F.3d at 306–07 (holding that plaintiffs’ unjust enrichment claim,
based on the theory that defendants were “unjustly enriched by turning [plaintiff’s
novel] into a motion picture without compensating [plaintiff] or obtaining . . .
permission” was preempted under § 301 because “it is clear that the specific right
[plaintiff is] . . . trying to enforce is the right of adaptation—i.e. the right to prepare
or authorize preparation of a derivative work”).
20Harper & Row, 723 F.2d at 201 (holding plaintiff’s conversion claim, to the extent
based on the “unauthorized publication” of excerpts from a manuscript, preempted
because “the right [plaintiffs] seek to protect is coextensive with an exclusive right
already safeguarded by the Act—namely, control over reproduction and derivative
use of copyrighted material”).
21Id. at 201 (holding that plaintiff’s tortious interference claim, based on the
defendant’s “act of unauthorized publication,” is preempted because it seeks to
vindicate the right to control creation of derivative works).
22Motorola, 105 F.3d at 851–54 (holding that state law commercial misappropriation
claim brought by the NBA against pager service that delivered real-time game
scores was preempted, because the allegations supporting the NBA’s claim were
“virtually synonymous [with] wrongful copying and are in no meaningful fashion
distinguishable from infringement of a copyright”).
38
substantially from a copyright claim. On the other hand, we have recognized
that other state law claims based on uses of works within the “subject matter
of copyright” — including claims alleging breaches of fiduciary duty, 23
“unfair competition claims based upon breaches of confidential
relationships,” 24 and trade secret claims 25 — survive preemption when such
claims include a sufficiently significant “extra element” that “qualitatively
distinguishes such . . . [claims] from claims for copyright infringement.” Altai,
982 F.2d at 717.
23Briarpatch, 373 F.3d at 307 (holding that breach of fiduciary claim survives
preemption because “the underlying right [plaintiffs] seek to vindicate is the right to
redress violations of the duty owed to a partnership by those who control it,” and
noting that “the fact that these claims require a finding that there was a breach of
fiduciary duty . . . adds an extra element that makes the claims qualitatively
different from a claim of copyright infringement”).
24Altai, 982 F.2d at 717 (noting that “unfair competition claims based upon breaches
of confidential relationships” are not preempted (citing Balboa Ins. Co. v. Trans Glob.
Equities, 218 Cal. App. 3d 1327, 1339–53 (Ct. App. 3d Dist. 1990) (holding that § 301
does not preempt unfair competition claims “based on trade secret and breaches of
confidence or fiduciary duty,” id. at 1339))).
25Id. (holding that “[t]he defendant’s breach of duty is the gravamen of [certain]
trade secret claims, and supplies the ‘extra element’ that qualitatively distinguishes
such trade secret causes of action from claims for copyright infringement that are
based solely upon copying”).
39
1. Subject Matter Requirement
As explained above, the first prong looks at the work against which the
plaintiff seeks to exercise a state-created right and requires that such work
come within the “subject matter of copyright.” In analyzing this issue, courts
have occasionally encountered difficulty identifying the focus of the
particular state law claim. When a right of publicity claim is based entirely on
the defendant’s use of a work that falls within the subject matter of copyright
(e.g., a photograph or a sound recording) that depicts or otherwise embodies
the plaintiff’s likeness (e.g., her visual appearance or voice), it can be unclear
whether the focus of the plaintiff’s claim is the likeness of the plaintiff or the
copyrighted work embodying that likeness. See, e.g., Maloney v. T3Media, Inc.,
853 F.3d 1004, 1011 (9th Cir. 2017) (considering preemption of a right of
publicity claim based on the use of photographs of plaintiffs, and querying
whether the focus of the claim is the photographs themselves or the
“‘likeness’ or ‘persona’” exhibited in the photographs).
Jackson argues that his “claim’s subject is the unauthorized commercial
use of [his] identity [i.e., the sound of his voice, recognizable as his, and his
stage name] — not the use of the copyrighted work itself.” Br. for Appellant
40
at 3. As Jackson points out, neither stage names nor voices — nor a person’s
“identity” or “likeness” — are “works of authorship” that fall within the
subject matter of copyright. See id.; see also Toney v. L’Oreal USA, Inc., 406 F.3d
905, 910 (7th Cir. 2005) (“A person’s likeness—her persona—is not authored
and it is not fixed.”); U.S. Copyright Office, COMPENDIUM OF U.S. COPYRIGHT
OFFICE PRACTICES § 313.4(C) (3d ed. 2014) (“COMPENDIUM”) (“Words and
short phrases, such as names, titles, and slogans, are not copyrightable
because they contain a de minimis amount of authorship.”). Accordingly, to
the extent that the subject of Jackson’s claim is limited to Roberts’s use of
sound that is recognizable as his voice or his stage name, Jackson’s claim
would not be preempted by § 301. On the other hand, Jackson’s claim also
may be seen as one that seeks to control the reproduction of a copyrightable
work: Jackson’s “In Da Club” and his performance of it. So viewed, the focus
of Jackson’s claim would be a musical composition and a sound recording of
a performance of it, which clearly fall within the “subject matter of
copyright,” in which case, Jackson’s claim would be subject to § 301
preemption.
41
Courts have invoked § 301 to justify preemption of right of publicity
claims, notwithstanding the contentions of the plaintiffs that their suits were
directed against unauthorized use of their names or likenesses, on the
conclusion that the invocation of the publicity right was a pretextual
justification for an effort to prevent or otherwise control the reproduction or
dissemination of a copyrighted work. In Ray v. ESPN, Inc., for example, the
Eighth Circuit considered a right of publicity claim brought by Steve “Wild
Thing” Ray, a former professional wrestler, against ESPN, alleging that ESPN
re-broadcast films of his early 1990s wrestling bouts without his permission.
783 F.3d 1140, 1141 (8th Cir. 2015). (ESPN had acquired permission to use the
films from the copyright holder.) In response to ESPN’s statutory preemption
defense, Ray argued that his claims were outside the “subject matter or ambit
of the Copyright Act” because the “focal point of . . . [the] case” was not
ESPN’s use of the films, but ESPN’s use of Ray’s uncopyrightable likeness as
embodied in the films. Id. at 1143. The court rejected that argument, instead
holding that the focus of the claim was ESPN’s use of the films themselves,
which were clearly “within the subject matter of copyright law,” see 17 U.S.C.
§ 102(a)(6), and holding that Ray’s claim was an “attempt to merely prevent
42
rebroadcast of a copyrighted film.” Id. at 1143–44 (internal quotation marks
omitted). Finding that Ray’s claim was equivalent to a copyright infringement
claim, the court held that the claim was barred by § 301. Id. at 1144.
Similarly, in Laws v. Sony Music Entertainment, Inc., the Ninth Circuit
considered a right of publicity claim brought by Debra Laws, a recording
artist, against a recording company, which had used a sample from Laws’s
song (with permission from the copyright holder) in a different song. 448 F.3d
at 1136. Laws argued that the “subject matter” of her right of publicity claim
was her uncopyrightable “persona and likeness,” i.e. her voice as captured in
the sample; the defendant argued that the subject matter of the claim was
really the copyrightable recording of Laws’s performance. Id. at 1139. The
court concluded that Laws’s claim focused on the recording, not the voice
embodied therein. Id. at 1141. Accordingly, the court held that the claim was
within the subject matter of copyright. Id. at 1143. 26
26 The majority of courts to consider similar claims have reached the same result. See,
e.g., Maloney., 853 F.3d at 1011 (holding that a right of publicity claim challenging
“the copyright holder’s decision to distribute . . . copyrighted images [depicting the
plaintiffs, two NCAA basketball players] . . . by selling consumers a non-exclusive
license to download a chosen photograph from the NCAA Photo Library” was
preempted); Dryer v. Nat’l Football League, 814 F.3d 938, 942 (8th Cir. 2016) (right of
43
On the other hand, the mere fact that a defendant’s alleged invocation
of the plaintiff’s identity is through use of a copyrighted work does not
necessarily mean that the claim of invasion of the right of publicity is an
attempt to control that work and is therefore subject to preemption. For
example, when a defendant exhibits an image or representation of the
plaintiff embodied in a copyrighted work 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),27
publicity claim based on NFL Films’ use of footage depicting plaintiffs’ performance
during football games preempted “[b]ecause the [plaintiffs] do not challenge the
NFL’s use of their likenesses or identities in any context other than the publication
of [the] game footage”); Romantics v. Activision Publ’g, Inc., 574 F. Supp. 2d 758, 766–
67 (E.D. Mich. 2008) (right of publicity claim based on defendants’ re-recording of
plaintiffs’ song, which plaintiffs claimed appropriated their “distinctive sound,” was
preempted because plaintiffs’ allegations were focused on the defendants’
“attempt[] to reproduce [plaintiffs’] sound recording”); Butler v. Target Corp., 323 F.
Supp. 2d 1052, 1056 (C.D. Cal. 2004) (right of publicity claim based on the
defendant’s use of plaintiffs’ song preempted because “[p]laintiffs have not alleged
that the [defendants’] Commercials used impersonations of their voices, but the
[copyrighted sound] Recording itself”); Cummings v. Soul Train Holdings LLC, 67 F.
Supp. 3d 599, 603 (S.D.N.Y. 2014) (plaintiff musician’s right of publicity claim, based
on defendants’ authorized use of recordings of the TV program “Soul Train”
containing plaintiff’s performances, was preempted).
27We note the important difference between, on the one hand, the use of a person’s
likeness that implies endorsement of or voluntary association with the copyrightable
work in which that likeness is embodied, and, on the other hand, the use of a
person’s likeness that implies endorsement of an entirely separate product or
44
courts have generally found that such a claim is not preempted. See infra
(discussing Downing). Thus, the fact that Roberts’s use of Jackson’s identity
was through Roberts’s use of a copyrighted work (the “In Da Club” sample)
does not mean that Jackson’s claim is necessarily preempted by § 301. In
Downing v. Abercrombie & Fitch, for example, the Ninth Circuit considered a
right of publicity claim brought by a group of professional surfers, alleging
that Abercrombie, in its marketing of apparel, had misappropriated their
likenesses by using a photograph of them at a surfing competition. 265 F.3d
994, 999–1000 (9th Cir. 2001). Abercrombie had “create[d] t-shirts[] exactly
like those worn by the [plaintiffs] in the photograph” and had 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. Id. at 1000. Like
the defendants in Ray and Laws, Abercrombie had used the photograph with
permission from the copyright holder. Id. at 1000. And, like the plaintiffs in
service. A person’s appearance in a copyrightable work — i.e., an actor’s appearance
in a film — will in most (but not all) circumstances serve to communicate that the
person depicted has consented to appear in that work, and has, at least to some
extent, endorsed the work itself. That kind of implication of endorsement is
immaterial to this analysis.
45
Ray and Laws, the Downing plaintiffs argued that their claim should survive
preemption because the “subject matter” of their claim was the
misappropriation of their likenesses, not the copyrighted photograph that
contained their likenesses. The Ninth Circuit concluded that the “basis for
[plaintiffs’] claim[]” was not the “publication of the photograph” but the “use
of the [plaintiffs’] likenesses . . . pictured in the published photograph.” Id. at
1003. Accordingly, the court held that the claim fell outside the “subject
matter of copyright” and escaped preemption. Id. at 1005; see also Toney, 406
F.3d at 910 (right of publicity claim based on defendant’s use of a photograph
of plaintiff on packaging for a hair product not preempted).
Under these precedents, the question whether the focus of Jackson’s
claim is the recognizable sound of his voice (which is not within the subject
matter of copyright) or the copyrighted work in which that voice is embodied
(which, of course, is within the subject matter of copyright) would depend on
the gravamen of the claim and the allegations supporting it. The “crux of the
issue,” the Ninth Circuit explained in Maloney, is whether “[the] claim seeks
to vindicate misuse of an individual’s likeness, as opposed to merely
interfering with the distribution, display, or performance of a . . . work.” 853
46
F.3d at 1012–13. In general, when a defendant uses material within the subject
matter of copyright depicting a plaintiff’s likeness in a manner that falsely
“suggest[s] that the [plaintiff] had endorsed the defendant’s products,” courts
have found that the focus of the right of publicity claim is the plaintiff’s
uncopyrightable likeness or persona. Ray, 783 F.3d at 1143 (internal quotation
marks omitted) (discussing Laws and Downing); Laws, 448 F.3d at 1141 (same);
see also J. Thomas McCarthy & Roger E. Schechter, RIGHTS OF PUBLICITY AND
PRIVACY § 11:50, Westlaw (database updated May 2020) (explaining that
preemption does not apply when the right of publicity claim “concerns the
use of a human identity to attract attention to advertising of a commercial
product or service”). This is because the gravamen of that kind of right of
publicity claim is the defendant’s usurpation of the plaintiff’s identity to sell a
product or service with which the plaintiff has no relevant connection. Toney,
406 F.3d at 910 (noting that “[t]he basis of [the plaintiff’s] right of publicity
claim concerns the message [that] the plaintiff endorses, or appears to endorse
the product in question”). The fact that the defendant employed a
copyrighted work to depict the plaintiff is beside the point. See id. (“Clearly
the defendants used [the plaintiff’s] likeness without her consent [to imply
47
her endorsement of their product]. The fact that the photograph itself could
be copyrighted . . . is irrelevant to the [right of publicity] claim.”). Under these
circumstances, the right of publicity claim necessarily survives § 301
preemption because the claim does not assert rights “in works of authorship
that . . . come within the subject matter of copyright.” 17 U.S.C. § 301(a).
In our view, the pertinent distinction for such analysis is whether, on
the one hand, the defendant’s use of a work involving the plaintiff’s likeness
seeks advantage 28 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
28Some courts have focused as a test of whether the plaintiff’s claim escapes
preemption on whether the defendant’s use of the plaintiff’s likeness was for
“commercial advantage,” Toney, 406 F.3d at 910, or its use of the plaintiff’s likeness
or name was “in an advertisement . . . to promote its commercial products,” Ray, 783
F.3d at 1144 (emphasis added). In our view, this is imprecise — in some respects too
broad, and in others too narrow. It is too broad in the sense that any commercial use
of material is surely intended to serve the user’s commercial advantage, regardless
of whether that advantage somehow depends on the depiction of the persona of the
plaintiff. The formulation is also too narrow in the sense that 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.
48
disapproval or rejection 29) of the defendant or its product, or holds opinions
favored (or disfavored) by the defendant, or where (as with baseball cards, see
Cardtoons, 95 F.3d at 962–64) the value of what the defendant distributes lies
in its reference to the identity of the plaintiff shown — what might be called
“identity emphasis,” 30 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. 31
29 While the most common instances are likely to be a defendant’s use of the
plaintiffs’ likeness to imply endorsement, “identity emphasis” would also be present
in the rarer circumstance where the defendant seeks advantage by 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.
30Of course, even if a plaintiff’s claim centers around the defendant’s identity-
emphasizing usage of the plaintiff’s persona as depicted in a piece of copyrighted
material, contracts that are binding on the plaintiff may nonetheless bar the plaintiff
from bringing such a suit, and in such circumstances, reliance on the contractual bar
may obviate the need for the court to consider the potentially more complicated
question of preemption.
31While we think that this mode of analysis is appropriate for determining whether
a state law claim is subject to preemption, there is support, with which we agree, for
the notion that it fits more appropriately in the analysis of the second, “equivalence”
requirement for statutory preemption — which looks to the nature of the plaintiff’s
claim and of the rights asserted — rather than in the analysis under the first
requirement of whether the work against which the state law claim is directed is
within the subject matter of copyright. See Dryer, 814 F.3d at 942–43 (noting, in a
49
In Downing, the plaintiffs’ claim survived preemption because
Abercrombie had used their photograph to promote Abercrombie’s products
discussion of the “equivalence” requirement, that “a right-of-publicity suit
challenging the use of a copyrighted work in a commercial advertisement” would be
non-equivalent, but a similar suit “challeng[ing] the . . . exploit[ation] [of] the value
of [the] work [itself]” would “assert[] rights equivalent to” the rights granted under
copyright); Tushnet, supra, at 1545 (discussing Dryer with approval and noting that
“[w]ithout an element of consumer deception [i.e. an implication of false
endorsement] there was nothing ‘extra’ distinguishing the right of publicity [claim
from a copyright claim]”); see also H.R. Rep. No. 94-1476, at 132 (“The evolving
common law rights of ‘privacy,’ [and] ‘publicity’ . . . would remain unaffected [by §
301 preemption] as long as the causes of action contain elements, such as an invasion of
personal rights . . . that are different in kind from copyright infringement.” (emphasis
added)). The first requirement focuses on whether the work against which the
plaintiff’s claim is directed is within the “subject matter of copyright.” 17 U.S.C. §
301(a). That question can be answered entirely without reference to the nature of the
plaintiff’s claim. It is the second requirement that examines the plaintiff’s claim to
determine whether it is “equivalent to any of the exclusive rights within the general
scope of copyright.” H.R. Rep. No. 94-1476, at 130; see also Altai, 982 F.2d at 716 (to
analyze equivalence prong, “we must determine ‘what plaintiff seeks to protect, the
theories in which the matter is thought to be protected and the rights sought to be
enforced’” (citation omitted)). The focus of the plaintiff’s claim — and the nature of
the rights claimed — is highly pertinent to the latter inquiry, but arguably irrelevant
to whether the work that would be affected by the plaintiff’s claim falls within the
“subject matter” of copyright. Courts that have applied this analysis to the first
requirement appear to have confused examination of the “subject matter” of the
plaintiff’s claim with the statute’s reference to whether the work affected is within
the “subject matter” of copyright. See, e.g., Maloney, 853 F.3d at 1011 (“The subject
matter of the [plaintiffs’] state law claims — the photographs — therefore appears to
fall within the subject matter of copyright” (internal quotation marks, alterations,
and citation omitted)). This confusion rarely if ever makes a difference in the
ultimate conclusion because the focus of the plaintiff’s claim will determine whether
the claim is or is not precluded, regardless of whether it is considered in analyzing
the “subject matter” or “equivalence” requirements of § 301.
50
in a way that implied that the plaintiffs were Abercrombie brand
ambassadors. 265 F.3d at 1000. As the Ninth Circuit later explained, the
defendant had used the photograph in a way that “went well beyond mere
republication of the photograph,” instead publishing it “in connection with a
broad surf-themed advertising campaign, identif[ying] the plaintiffs-surfers
by name, and offer[ing] for sale the same t-shirts worn by the plaintiffs in the
photo . . . suggest[ing] that the surfers had endorsed Abercrombie’s t-shirts.”
Laws, 448 F.3d at 1141 (discussing Downing). It was on this basis that the court
concluded that the “subject matter” that was the focus of the right of publicity
claim was the “use of the [plaintiffs’ uncopyrightable] likenesses” — and not
the use of the photograph itself. Id.
By contrast, when the defendant’s use does not seek to secure
advantage through identity emphasis, but the right of publicity claim rather
seeks to exert “control of the [copyrighted] work itself,” the focus of the right
of publicity claim is the work that exhibits the plaintiff’s likeness (rather than
the likeness itself) and the claim can therefore be subject to statutory
preemption. Id. at 1142. In other words, the more the defendant has used a
copyrighted work for its own value, as opposed to using it to exploit the
51
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. See, e.g., Ray, 783 F.3d at 1144 (noting that
“ESPN did not use Ray’s likeness or name in an advertisement without his
permission to [imply Ray’s endorsement of] its commercial products” and
concluding on that basis that the subject matter of the claim is the copyrighted
film depicting Ray’s likeness). 32 The gravamen and focus of the claim would
be the defendant’s use of the work, not the defendant’s incidental use of the
likeness of someone seen in the work.
Accordingly, 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. 33 To contradict any
32 See supra note 28 (discussing the above-quoted language from Ray).
33 We focus on whether Roberts’s use implied Jackson’s endorsement or voluntary
association with Roberts, the mixtape, or Roberts’s commercial album because that
is Jackson’s principal argument as to preemption on appeal. See Br. for Appellant at
17. We do not mean to suggest that, in order to survive preemption, a plaintiff must
allege that the defendant’s falsely implied endorsement or sponsorship. To the
52
such implication, Roberts offers 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, just as Roberts referenced
Jackson’s stage name in the title of his remix (“In Da Club (Ft. 50 Cent)”).
Indeed, Jackson himself, as he admitted in his deposition, has used vocal and
instrumental samples from other well-known artists, sometimes identifying
them by name, in his own mixtapes without permission.
In our view, this 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
contrary, many right of publicity claims would survive preemption where the
defendant has otherwise exploited the plaintiff’s identity to gain an advantage. See,
e.g., Factors Etc., 652 F.2d at 289 (Mansfield, J., dissenting) (arguing that a right of
publicity claim challenging the unauthorized use of a photograph of Elvis Presley
on a memorial poster is not preempted because “[t]he right of publicity protects an
interest which copyright does not[:] . . . [the interest] against the unauthorized
appropriation of an individual’s very persona which would result in unearned
commercial gain to another”). While the distinction we draw between seeking
advantage through identity emphasis and seeking to control the copyrighted work
itself may on occasion present close cases, here, Jackson’s sole argument for
avoiding preemption is that Roberts’s use falsely implied his endorsement or
voluntary association. As further explained below, we find no basis for that
contention.
53
not communicate to the relevant audience that the sampled artist has
endorsed or sponsored the sampling artist’s work. In this manner, 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. Absence of endorsement is further shown by the fact that the
sampled song was so well known for years prior to Roberts’s mixtape that it
could not possibly be understood to be material Jackson created specifically
for inclusion in the mixtape, and by the fact that Renzel Remixes employed
samples from the works of at least 26 recording artists and identified 18 of
those artists in the track titles. 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. See, e.g., Laws, 448 F.3d at 1136,
1141 (holding preempted a right of publicity claim based on the use of Debra
Laws’s name and a sample of her song “Very Special” in Jennifer Lopez’s
song “All I Have”).
54
This case differs significantly from those in which courts have found
that the use of a plaintiff’s image or persona could communicate endorsement
or sponsorship. As noted, in Downing, for example, Abercrombie had done far
more than reproduce a photograph depicting the plaintiffs: Abercrombie had
“create[d] t-shirts[] exactly like those worn by the [plaintiffs] in [the]
photograph” and had advertised those t-shirts alongside the photograph in
its marketing materials, creating the false impression that the plaintiffs were
wearing Abercrombie merchandise. 265 F.3d at 1000. “By doing so,
[Abercrombie] suggested that the surfers had endorsed Abercrombie’s t-
shirts.” Laws, 448 F.3d at 1141 (discussing Downing). And in Toney, the
defendant (a hair products company) had used the plaintiff model’s likeness
both in “national magazine advertisements for [its product],” and on the
packaging for that product in a context that suggested that the plaintiff had
used the product and intended to be seen as endorsing the defendant’s
product. 406 F.3d at 907. In both cases, the context of the defendant’s use
clearly supported the implication of endorsement.
Here, there is no such contextual implication of endorsement. Nothing
in Roberts’s mixtape suggests Jackson’s endorsement or sponsorship: Jackson
55
does not appear on the cover of the mixtape, see App’x at 138; nor do any of
Roberts’s lyrics refer to Jackson, see App’x at 127–28; 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. Jackson’s music and stage name were presented in the
same manner as the music and names of numerous other sampled artists. See
App’x at 138.
Although Roberts presented no evidence directly addressing how the
relevant audience would understand and interpret the use of the Jackson
sample and name, the combination of (a) the absence of any apparent
message of endorsement, (b) the evidence that it is commonplace for hip-hop
artists to so sample each other’s songs without permission, and (c) the large
number of artists other than Jackson who were similarly sampled and
identified by Roberts compels 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. We
conclude that the gravamen of Jackson’s right of publicity claim, to the extent
56
it is based on the use of the “In Da Club” sample, is not the use of his identity
but rather the use of the copyrighted work itself, and that the focus of
Jackson’s claim therefore comes within the “subject matter of copyright.” 34
2. “Equivalence” or “General Scope” Requirement
As noted above, the “equivalence” or “general scope” requirement for
statutory preemption turns on whether the right asserted against the use of a
work within the subject matter of copyright is equivalent to a right within the
general scope of copyright. 17 U.S.C. § 301(a). Roberts’s preemption defense
would fail as a matter of law if Jackson’s claim sought to assert rights that
were not “equivalent to any of the exclusive rights within the general scope of
copyright.” Id. § 301(b)(3). The district court assumed, without support, that
Connecticut’s right of publicity action requires that the defendant’s use be
“commercial” in nature. App’x at 596. Some courts have held that, when a
state’s right of publicity claim includes such a “commercial purpose” or
“commercial use” requirement, that element constitutes an extra element,
beyond what is required to establish a claim of copyright infringement, so
34To the extent that Jackson’s claim is based on Roberts’s use of his stage name in
the track list, a somewhat different analysis applies, which we discuss below. See
infra section B.ii.c.
57
that it takes right of publicity claims outside the general scope of copyright,
which does not require a commercial purpose as an element of a claim of
infringement. See Toney, 406 F.3d at 910 (holding Illinois right of publicity
claim not preempted after finding that the state law requires a showing of the
defendant’s “commercial purpose”).
That argument is inapplicable here for a number of reasons. First, there
is no substantial support for the assertion that commercial purpose is a
necessary element of a Connecticut right of publicity claim. While the
Connecticut Supreme Court has never specified the elements of a right of
publicity claim, lower courts have assumed that the elements mirror those
described in the Restatement (Second) of Torts § 652C. See Amie Morse v. Conn.
Cmty. for Addiction Recovery, Inc., No. CV095005371S, 2010 WL 4074949, at *26–
27 (Conn. Super. Ct. Sept. 15, 2010) (applying the Restatement’s definition of
the misappropriation of likeness tort). 35 Under the Restatement’s definition, a
plaintiff may prevail on a right of publicity claim “even though the
35See also Grossman v. Comput. Curriculum Corp., 131 F. Supp. 2d 299, 311 (D. Conn.
2000) (noting that Connecticut courts have “adopted the Restatement (Second) of
Torts formulation of [the right of publicity] action” (citing Goodrich, 448 A.2d at
1329).
58
[defendant’s] use is not a commercial one, and even though the benefit sought
to be obtained is not a pecuniary one.” Restatement (Second) of Torts § 652C
cmt. b. We see no reason furthermore why the right of publicity should be so
limited. It seems altogether appropriate that the right of publicity should
apply where the defendant has sought advantage by claiming gratuitously
that the plaintiff supports a political candidate who favors some
noncommercial cause.
Even if a commercial purpose is a necessary element of a Connecticut
right of publicity claim, this does not necessarily take the right of publicity
outside of equivalency with the “rights within the general scope of
copyright.” As noted above, the focus of the “equivalency” analysis is on
whether the “nature” of a state law action “is qualitatively different from a
copyright infringement claim.” Altai, 982 F.2d at 716 (internal quotation
marks omitted). Reliance on commercial purpose for this distinction faces the
problem that, while it is true that a commercial motivation is not essential to a
copyright or a claim of infringement of copyright, commercial interests have
always played an enormous role in copyright law. The first statute
establishing a right in authors to control copies of their works, the Statute of
59
Anne, proclaimed that its purpose was to enable authors to earn money from
their writings, so as to induce them to produce “useful books.” See Golan v.
Holder, 565 U.S. 302, 347 (2012) (Breyer, J., dissenting) (explaining that the
Statute of Anne “granted authors [exclusive rights] in order to encourage them
‘to compose and write useful Books’” (quoting Statute of Anne 1710, 8 Ann. c. 19
(Eng.))). The justifying theory of copyright, as expressed in the U.S.
Constitution, is that it “Promote[s] the Progress of Science” by giving authors
a financial incentive to produce and disseminate works of authorship. See
Harper & Row, 471 U.S. at 558 (“[T]he Framers intended copyright . . . [to]
suppl[y] the economic incentive to create and disseminate ideas.”); Mazer, 347
U.S. at 219 (“The economic philosophy behind the [Copyright] clause . . . is
the conviction that encouragement of individual effort by personal gain is the
best way to advance public welfare through the talents of authors . . . .”).
Indeed, the vast majority of activities that could constitute infringement of
copyright are undertaken for a “commercial purpose,” as the incentive to
infringe is frequently to profit from the dissemination of material that is
protected by copyright. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584
(1994) (rejecting the argument that “commerciality carrie[s] presumptive force
60
against a finding of [fair use],” noting that most activities that could constitute
fair use “are generally conducted for profit in this country”); see also id.
(quoting 3 BOSWELL’S LIFE OF JOHNSON 19 (G. Hill ed. 1934) (“[N]o man but a
blockhead ever wrote, except for money.”))); Pierre N. Leval, Fair Use Rescued,
44 UCLA L. REV. 1449, 1456 (1997) (“Most undertakings in which we expect to
find well-justified instances of fair use are commercial. These include, of
course, journalism, commentary, criticism, parody, biography, and history;
even the publication of scholarly analysis is often commercial.”).
For some courts, notwithstanding the sometimes-cited proposition that
the presence of “extra elements” in the state law claim will destroy
equivalency, a requirement of “commercial use” in a right of publicity claim
is “not enough to qualitatively distinguish [a] right of publicity claim from a
claim in copyright,” particularly when the essence of the plaintiff’s claim is an
unauthorized reproduction of the copyrighted work. Laws, 448 F.3d at 1144–
45. In Laws, the Ninth Circuit observed that, in order to take the state law
claim out of equivalency, the “extra element” must “change the underlying
nature of the action,” and that the “commercial use” requirement in
California’s statutory right of publicity failed to meet this standard. Id. The
61
court observed, “Although the elements of [the] state law claim[] may not be
identical to the elements in a copyright action, the underlying nature of [the]
state law claim[] is part and parcel of a copyright claim.” Id. at 1144.
Further, Second Circuit precedent establishes that a “commercial
purposes” element does not sufficiently “change[] the nature of [a similar
state law claim] so that it is qualitatively different from a copyright
infringement claim.” Altai, 982 F.2d at 716 (internal quotation marks and
emphasis omitted); see Motorola, 105 F.3d at 851 (holding that the tort of
commercial misappropriation under New York law, to the extent that it
applies to the protection of “property rights of commercial value” from “any
form of commercial immorality,” falls within the general scope of copyright
notwithstanding the state law requirement that the rights at issue have
“commercial value” and are used “commercial[ly]”); see also 1 NIMMER ON
COPYRIGHT § 1.14[C], LexisNexis (database updated Apr. 2020) (“It is []
irrelevant [to the equivalence requirement] that certain [e.g., non-commercial]
reproductions, performances, distributions, or displays . . . would infringe
under the Copyright Act and not under the state-created right.”).
62
Accordingly, whether or not Connecticut courts would impose a
“commercial use” requirement for right of publicity claims, Jackson’s claim is
“virtually synonymous [with a claim for] wrongful copying” and is “in no
meaningful fashion distinguishable from infringement of a copyright.”
Motorola, 105 F.3d at 851. As explained in the preceding section on implied
preemption, Jackson’s claim is a thinly disguised effort to attack Roberts’s use
of Jackson’s song.
Accordingly, we conclude that, to the extent that Jackson’s right of
publicity claim is based on the reproduction of a copyrighted work (“In Da
Club”) embodying Jackson’s voice, that claim is preempted by § 301 because
(1) its focus is Roberts’s use of a work that falls within the “subject matter of
copyright” and (2) it asserts rights that are sufficiently equivalent to the rights
protected by federal copyright law.
c. Jackson’s Stage Name
To the extent that Jackson’s right of publicity claim is based on
Roberts’s use of his stage name, Jackson argues that statutory preemption can
play no role because stage names are not “works of authorship” that “come
within the subject matter of copyright.” Br. for Appellant at 31; COMPENDIUM
63
§ 313.4(C) (“Words and short phrases, such as names, titles, and slogans, are
not copyrightable because they contain a de minimis amount of
authorship.”). 36 We need not address this contention because, in any event,
Jackson’s claim with respect to the use of his stage name in the track list is
barred by implied preemption. This aspect of Jackson’s claim centers on
Roberts’s use of his stage name to accurately name Jackson as the performer
of one of the copyrighted works that Roberts sampled in his remix, just as he
used the stage names of 17 other artists to identify them in connection with
the sample of their works. Even assuming that the use of an artist’s name, for
the sole purpose of identifying his association with a work that is reproduced,
could support a Connecticut right of publicity claim, Jackson’s claim would
36In other similar cases, courts have assumed, without discussion, that a right of
publicity claim that is preempted because it seeks to assert the right to control the
use of a copyrighted work is also preempted to the extent that the claim is based on
the use of the plaintiff’s name. See, e.g., Laws, 294 F. Supp. 2d 1160, 1161 (C.D. Cal.
2003) (noting that the defendant had mentioned the plaintiff, Debra Laws, by name,
including in the packaging of its challenged musical work a credit stating that the
work “[f]eatur[es] samples from the Debra Laws recording ‘Very Special’”); Laws,
448 F.3d at 1143 (holding that the plaintiff’s claim satisfied the first prong of Section
301 preemption without discussion of whether a name falls within the “subject
matter of copyright”); Ray, 783 F.3d at 1142–44 (holding that the wrestling films the
defendant had used were within the “subject matter of copyright” without
discussion of the defendant’s use of the plaintiff’s name).
64
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. The “exclusive rights to do and to authorize” the
reproduction, adaptation, distribution, performance, and display of a
copyrighted work would be substantially encumbered if the rightsholder or
their licensees were precluded from identifying for the intended audience the
authors or performers of that work. 37 To be sure, 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. Compare Cher v.
Forum Int’l, Ltd., 692 F.2d 634, 638 (9th Cir. 1982) (holding that a magazine
that purchased from an independent journalist an interview with Cher and
published it was “entitled to inform its readers that the issue contained an
article about Cher [and] that the article was based on an interview with Cher
37A 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. Cf. 17 U.S.C. § 107 (“[T]he fair use of a copyrighted work . . . is not an
infringement of copyright.”); see also supra at 27 (making a similar point).
65
herself”), with id. at 638–40 (holding that a different magazine that published
the same interview had violated Cher’s right of publicity because its
marketing copy implied Cher’s endorsement of the magazine). But as
discussed above, Roberts’s use of Jackson’s name was neither misleading nor
did it imply that Jackson had endorsed Roberts, his mixtape, or his
commercial album. Accordingly, because Jackson’s right of publicity claim
seeks to control the use of a copyrighted work by prohibiting accurate
descriptions of that work, that claim impermissibly interferes with the federal
copyright framework and must be dismissed.
C. CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s dismissal of
Jackson’s right of publicity claim.
66