United States: Atlanta Trial & Appellate Team Secures Significant Second Circuit Victory In High-Profile IP Music Case Of First Impression

Atlanta Partner Jonathan D. Goins recently led a team that secured a significant victory for Lewis Brisbois client William Leonard Roberts (known professionally as Rick Ross) when the U.S. Court of Appeals for the Second Circuit affirmed the grant of summary judgment in Mr. Roberts' favor in a high-profile music case brought by Curtis James Jackson III (known professionally as 50 Cent). This matter was one of first impression in the Second Circuit and will likely support future permissible uses of copyrightable works in the music and entertainment industry against claims for right of publicity.

The Underlying Case

In the underlying case, Mr. Jackson sued Mr. Roberts for remixing the popular hip-hop song "In Da Club" on one of Mr. Roberts' mixtape albums, which had been released for free over the internet in late 2015. Mr. Roberts' mixtape album included approximately 26 remixed songs, each containing excerpts from pre-existing copyrighted sound recordings from popular recording artists such as Adele, Drake, Tupac, Snoop Dogg, Nas, Future, and Kendrick Lamar.

In his initial complaint, Mr. Jackson accused Mr. Roberts of federal trademark infringement and violation of his common law right of publicity for unlawfully using his name in the track title and his voice in the actual recording of Mr. Roberts' remix version of "In Da Club." We successfully obtained dismissal of Mr. Jackson's trademark infringement claim at the early pleadings' stage.

Following a three-year litigation battle, both parties filed cross-motions for summary judgment on the remaining right of publicity claim. Mr. Jackson's summary judgment argued that his voice was part of his likeness, and that Mr. Roberts used it without his permission in the context of promoting himself. In turn, we filed for summary judgment on the federal copyright preemption doctrine, asserting that a growing number of courts had barred state-based right of publicity claims involving allegedly unauthorized uses of pre-existing copyrightable recordings.

The District Court's Decision

The U.S. District Court for the District of Connecticut agreed with our preemption argument, reasoning that Mr. Jackson's voice and performance on the original masters recording of the song at issue was a copyrightable work, which he had relinquished via his recording artist agreement. Adopting the Ninth Circuit's Laws v. Sony Music Entertainment decision, the court found that Mr. Jackson had contractually surrendered his right to use his likeness associated with the master recording of the song at issue under the federal copyright's preemption doctrine. Accordingly, on September 28, 2018, the district court granted our summary judgment motion.

Mr. Jackson subsequently filed a motion for reconsideration. On February 11, 2019, the Honorable Warren W. Eginton adhered to his initial decision and entered judgment in favor of our client. Mr. Jackson then appealed.

The Appeal

On appeal, the Second Circuit affirmed the lower court's decision in Mr. Roberts' favor, concluding that Mr. Jackson's claim was preempted under either the doctrine of implied preemption or under the express terms of section 301 of the Copyright Act.

The court first determined that Mr. Jackson's state right of publicity claim against Mr. Roberts failed to assert a sufficiently substantial state interest that was distinct from interests underlying federal copyright law. The Second Circuit reasoned that "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, 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." As such, the court concluded that "Jackson's invocation of his right of publicity in this context is at best sorely deficient."

The Second Circuit further explained that permitting Mr. Jackson's right of publicity claim to proceed would present "a potential for conflict and impairment of rights established by the Copyright Act." It noted that where a performance of a work could support a claim for invasion of a 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."

Finally, the Second Circuit described that to the extent that Mr. Jackson's right of publicity claim was based on the reproduction of the copyrighted work, "In Da Club,' the claim was preempted under §301 of the Copyright Act because (1) the claim's focus was Mr. Robert's use of a work that fell within the "subject matter of copyright," and (2) the claim asserted rights that were "sufficiently equivalent to the rights protected by federal copyright law." The court reasoned that the use of Mr. Jackson's stage name and "In Da Club" sample could not "reasonably be construed by the intended audience as a false implication of Jackson's endorsement or sponsorship of Roberts or his product." Moreover, it found that the evidence "powerfully support[ed] 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 not communicate to the relevant audience that the sample artist has endorsed or sponsored the sampling artist's work." Accordingly, the Second Circuit affirmed the district court's dismissal of Mr. Jackson's right of publicity claim.

In Law360's coverage of this ruling, Mr. Goins noted, "Appellant's argument, if adopted, would have created chaos for the entire entertainment industry, especially regarding the music clearance process." Mr. Goins also told the publication that the decision supports artists' ability to sample or remix limited portions of popular songs, while recognizing that entities may license such songs without the need to contractually negotiate the right of publicity. In addition, he pointed out that companies typically seek song licenses from the copyright holder, as opposed to the performer, and that the song at issue in this case was itself a reproduction of a copyrighted work that Mr. Jackson did not own.

The Atlanta team was assisted during the appeal process by New York Appellate Practice Partner Nicholas P. Hurzeler, who provided detailed knowledge of Second Circuit and local New York rules and regulations.

You can read the full Second Circuit opinion here. Mr. Goins also published a Bloomberg Law Insight article about this decision, which you can find here.

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