State common law right of publicity preempted by federal copyright law. JACKSON v. ROBERTS

State common law right of publicity preempted by federal copyright law. JACKSON v. ROBERTS

A copyright is a set of exclusive rights granted to the creator of a new work of expression when it is fixed in a tangible medium. Copyright protects works like photographs, sculpture, literature and software.  Copyright law grants the owner of a copyright the exclusive right to reproduce, distribute, perform, display transmit or make derivative works based on the original.  If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  A copyright owner can file a lawsuit to stop copyright infringement with an injunction and get monetary damages for copyright infringement which has occurred.

Copyright law does not exist in a vacuum.  In the United States, like most other jurisdictions, a plaintiff must comply with several different sections of law when filing a lawsuit.  A plaintiff may have a meritorious cause of action and still fail to get a judgement in their favor, if the plaintiff does not properly plead their case.  Lawsuits filed in the United States are subject to several standards, some are codified and some are based on court precedent.

When congress adopted the federal copyright statute in 1978, most states had their own copyright statutes and common law precedent.  To minimize the possibility of conflict between state and federal law, congress explicitly preempted state copyright law. The relevant part of the law is codified in 17 U.S.C § 301 – Preemption with respect to other laws, which states:

(a) 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of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title.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.

Under the preemption, states are precluded from enforcing law if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law.  The exact circumstances when these conditions will be met can be difficult to imagine, therefore it is educational to study case law.

CURTIS JAMES JACKSON, III, v. WILLIAM LEONARD ROBERTS, II,  19-480 (2nd. Cir. 2020) illustrates a case where federal copyright law preempted a novel legal theory that relied upon state common law.

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.” The primary dispute in this case 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  Roberts released for free in 2015, in advance of Roberts’s then-upcoming commercial album, Black Market. Jackson had contractually assigned his song copyright to the record company that produced the song in a recording agreement.  Jackson brought suit alleging that Robert’s use of Jackson’s stage name and voice violated Jackson’s right of publicity under Connecticut common law.

In 2018 the district court granted motion for summary judgment in favor of the defendant on the theory that, Jackson had surrendered his rights to the use of his name, performance and likeness in connection with the advertising and marketing of ‘In Da Club’ 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.”  Jackson appealed this decision to The Court of Appeals for the Second Circuit.

The Second Circuit disagreed with the district court’s reasoning but came to the same conclusion.   The Second Circuit found that Jackson’s right of publicity claim was preempted by § 301 because (1) the focus of the claim is Roberts’s use of a work that falls within the “subject matter of copyright” and (2) the claim asserts rights that are sufficiently equivalent to the rights protected by federal copyright law. Based on this conclusion the Second Circuit affirmed the district court’s dismissal.

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