Oliveira v. Frito-Lay, Inc.
251 F.3d 56 (2001)
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Rule of Law:
A performing artist's signature recorded performance of a song does not constitute a protectable trademark or service mark for the artist herself under the Lanham Act, even if the public strongly associates the artist with that performance.
Facts:
- In 1964, Astrud Gilberto performed as the lead singer on a recording of the song 'The Girl from Ipanema,' which subsequently became a world-famous hit.
- Gilberto alleges she recorded the song without signing any contract or release with the recording company or its producers.
- The 1964 recording became Gilberto's 'signature song,' and she claims the public identifies her with it, making her known as 'The Girl from Ipanema.'
- In 1996, Frito-Lay, through its advertising agency BBDO, used the 1964 recording in a television commercial for its 'Baked Lays' potato chips.
- BBDO obtained licenses to use the song's composition and the master recording from the music publisher (Duchess Music) and the record company (PolyGram Records), respectively.
- BBDO and Frito-Lay did not seek or receive authorization from Gilberto to use her performance in the commercial.
Procedural Posture:
- Astrud Gilberto sued Frito-Lay, Inc. and its advertisers in the U.S. District Court for the Southern District of New York.
- The complaint alleged false implied endorsement under the Lanham Act and several pendent state-law claims.
- The district court initially dismissed the state-law claims but denied the motion to dismiss the Lanham Act claim.
- Gilberto filed a Second Amended Complaint, broadening the Lanham Act claim to general trademark infringement and re-asserting state claims, including one for violation of her right of publicity under N.Y. Civil Rights Law § 51.
- The district court again dismissed the state-law claims.
- Frito-Lay then moved for summary judgment on the sole remaining claim under the Lanham Act.
- The district court granted summary judgment in favor of Frito-Lay, dismissing the entire case.
- Gilberto, as appellant, appealed the dismissal of her Lanham Act claim and three of her state-law claims to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does a singer's signature recorded performance of a song qualify as a protectable trademark under the Lanham Act, such that its use in a commercial without the singer's permission constitutes trademark infringement?
Opinions:
Majority - Leval, J.
No. A singer's signature recorded performance of a song does not qualify as a protectable trademark under the Lanham Act. While a musical composition can serve as a trademark for goods or services (e.g., NBC's chimes), a performance of a song cannot serve as a trademark for the performer herself. The court reasoned that granting trademark status to a signature performance has no precedent and would be 'profoundly disruptive to commerce.' It would upset reasonable commercial expectations by creating immense, unforeseen liabilities for companies that had already paid bona fide license fees to all known copyright and master recording holders. The court concluded that other legal avenues, such as contract law and right of publicity statutes, are the proper means for artists to protect their interests, and declined to expand trademark law in this novel way.
Analysis:
This decision clarifies a crucial boundary between trademark and copyright law concerning musical performances. It establishes that an artist's personal association with a song, no matter how strong, does not transform their performance into a personal trademark under the Lanham Act. This ruling protects the stability of the music licensing industry by affirming that licenses from publishers and record labels are sufficient for commercial use, without requiring an additional, novel 'trademark' license from the original performer. The case directs artists to seek protection for their performances through contracts and state-level right of publicity laws rather than federal trademark law.
