In 2018, a lower court ruled in Roberts' favor, finding that since Jackson had signed away his rights to the song as well as his right of publicity to Shady/Aftermath for the term of their recording agreement, he could not pursue a case against Roberts for using the song. On Wednesday, the U.S. Appeals Court agreed in an 66-page opinion.
The appeals court found that while Roberts did not obtain permission from Shady/Aftermath or from Jackson to include his "In Da Club" remix on the mixtape, or to include Jackson's name as a featured artist, that under Jackson's recording agreement he 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.'" Because of that, the court ruled, Jackson's "right of publicity claim is preempted" because he "cannot assert a tort action based on the rights that he has contractually surrendered."
In deciding to uphold that lower court decision, the appeals court ruled Roberts was "presumably liable for copyright infringement to Shady/Aftermath, but not to Jackson." The court also said that Jackson may have the right to either 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. But he did not have the right to go personally against Roberts.
"Today is a victory for talented artists, as well as those seeking to license the use of music," said Roberts' attorneys Leron E. Rogers and Jonathan D. Goins in a statement. "The Second Circuit's opinion reaffirms the creativity of artists to freely express their performances in sampling or remixing of popular songs, while at the same time, still guaranteeing that those who seek to license such songs (from a publisher or copyright holder) may do so without necessarily having to separately obtain or contractually negotiate one's right of publicity.
"Furthermore, Mr. Roberts' remix of 'In Da Club' was never about Mr. Jackson -- but was simply one of many remixes on his mixtape album, which also featured songs by Adele, Nas, Snoop Dogg, Kendrick Lamar, and Lil Wayne. Artists often perform lyrics in sampling or remixing songs of other artists, as it has long been a staple of hip-hop music."
John T. Rose, an associate at the firm who also reps Roberts, tells Billboard his client is pleased to be able to move on from this five-year long litigation.
"This is a matter that's been drawn out for quite some time and he's excited to once again finally get it behind him," says Rose.
Jackson's rep could not be reached for comment at time of publishing.