Waits v. Frito-Lay, Inc.
978 F.2d 1093 (1992)
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Rule of Law:
The deliberate imitation of a celebrity's distinctive and widely known voice for a commercial purpose is a tort of misappropriation under California law, and may also constitute false endorsement under the Lanham Act if it is likely to cause consumer confusion regarding sponsorship or approval.
Facts:
- Tom Waits is a professional singer with a widely known and distinctive raspy, gravelly voice.
- Waits has a publicly known and consistently maintained policy of not performing in commercials, believing it detracts from his artistic integrity.
- Advertising agency Tracy-Locke, Inc. developed a radio commercial for Frito-Lay's 'SalsaRio Doritos' inspired by Waits' song 'Step Right Up'.
- Tracy-Locke hired singer Stephen Carter specifically because he could perform a near-perfect imitation of Tom Waits' voice.
- During production, Tracy-Locke employees acknowledged the imitation, expressed concern about legal problems, and were aware of Waits' policy against endorsements.
- Despite being advised of a 'high profile' legal risk, Tracy-Locke recommended using the imitative commercial, and Frito-Lay, Inc. approved its broadcast after Tracy-Locke agreed to indemnify them.
- The commercial was broadcast on over 250 radio stations nationwide, and upon hearing it, Waits was shocked and concerned listeners would believe he had endorsed the product.
Procedural Posture:
- Tom Waits (plaintiff) sued Frito-Lay, Inc. and Tracy-Locke, Inc. (defendants) in the United States District Court for the Central District of California.
- The complaint alleged voice misappropriation under California law and false endorsement under the Lanham Act.
- Following a trial, the jury found for Waits on both claims.
- The jury awarded Waits $375,000 in compensatory damages and $2 million in punitive damages for voice misappropriation.
- The jury also awarded $100,000 in damages for the Lanham Act violation.
- The district court awarded Waits attorney's fees under the Lanham Act.
- Frito-Lay and Tracy-Locke (appellants) appealed the entire judgment to the U.S. Court of Appeals for the Ninth Circuit, with Waits as the appellee.
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Issue:
Does the deliberate commercial imitation of a professional singer's distinctive and widely known voice constitute tortious voice misappropriation under California law and false endorsement under the Lanham Act?
Opinions:
Majority - Boochever, J.
Yes, the deliberate commercial imitation of a professional singer's distinctive voice constitutes both voice misappropriation and false endorsement. The court reaffirmed its holding in Midler v. Ford Motor Co. that a celebrity's distinctive and widely known voice is a protected property right, and its imitation for commercial purposes is a tort. This state-law claim is not preempted by federal copyright law because a voice is part of a person's identity and is not a 'fixed' work of authorship. Furthermore, such an imitation can create a claim for false endorsement under the Lanham Act. A celebrity has standing to bring such a claim without being a direct competitor of the defendant, as the celebrity has a commercial interest in controlling the use of their identity, which functions like a trademark. Given the evidence of intentional imitation and actual consumer confusion, the jury's findings on both claims were justified.
Analysis:
This case significantly solidifies the right of publicity for voice appropriation that was first recognized in Midler v. Ford Motor Co. It affirms that this protection is not limited to superstars but extends to any performer with a distinctive and widely known voice. The decision's analysis of the Lanham Act is particularly impactful, as it reconciles conflicting circuit precedent to establish that a celebrity has standing to sue for false endorsement without being a direct competitor of the advertiser. This broadens the scope of celebrity protection under federal trademark law against misleading commercial uses of their identity.
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