BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, April 23, 1999.)
A federal court has dismissed six of the seven claims brought by the singer Astrud Gilberto relating to the use of her recording of “The Girl From Ipanema” in a television advertisement.1 It left standing plaintiff’s claim of false implied endorsement under section 43a) of the Lanham Act.
In 1964 Gilberto recorded “The Girl From Ipanema” without having a contract or formal agreement with the producers or the record company. The song was released on an album and as a single and was the recipient of a Grammy award. It is estimated that more than twenty-seven million copies of the recording have been sold throughout the world and it is presently available on a Polygram label.
Plaintiff alleges that as a result of publicity, advertising and marketing efforts, the recording has acquired a secondary meaning as her unregistered trademark “signature” song, and that members of the general public associate her with the song. Frequently, it is used in advertisements to promote plaintiff’s public appearances.
In 1996, defendants, acting through its advertising agency, produced a television commercial for Baked Lay’s Potato Crisps, a snack food product of defendant Frito-Lay, Inc. The commercial, broadcast on national television, depicts several celebrity models in bathing suits turning over empty bags of chips. While this is occurring, the Muppet character “Miss Piggy” is shown eating chips while “squawking” (plaintiff’s description) the lyrics of the song while Ms. Gilberto’s actual recorded performance plays in the background. When the mixing of the voices begins, the Miss Piggy character is not visible which, according to the complaint, adds to the “disconcerting nature of the odd sound on top of Plaintiff’s classic performance.”
The defendants obtained licenses from the copyright proprietor of the music and lyrics of the song and from the record company. They did not obtain any rights from plaintiff, who alleges that she “has not assigned any of her rights, including without limitation the common law rights, in her performance or the recording of ‘The Girl From Ipanema,’ nor authorized anyone, including without limitation any record company which has released the recording for public sale, to mix her performance with anything else or to use her performance for advertising purposes without her permission.”
In June of 1997 the Court granted defendants’ motion to dismiss plaintiff’s Amended Complaint except with respect to her Lanham Act claim and granted plaintiff leave to re-plead. On April 24, 1998, plaintiff filed the Second Amended Complaint containing seven claims and defendants thereafter filed a motion to dismiss for failure to state a claim upon which relief can be granted.
The second and third claims of the Second Amended Complaint allege violation of federal and state trademark dilution statutes: 15 U.S.C. § 1125(c) and N.Y. Gen. Bus. Law § 368-d, respectively. These statutes are similar in that both require that the mark have a distinctive quality and both state that a claim for dilution can be established regardless of whether the goods or services are in competition or whether there is likelihood of consumer confusion. Neither statute requires that the trademark be registered.
The opinion indicates that in order to prevail under §1125(c) plaintiff must demonstrate ownership of a distinctive or famous mark and dilution. This section is designed to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it.
The section sets forth several factors relevant to whether a mark is distinctive or famous. These include, but are not limited to, the degree of inherent or acquired distinctiveness of the mark; the duration and extent of use of the mark in connection with the goods or services with which it is used; the duration and extent of advertising and publicity of the mark; the geographical extent of the trading area in which it is used; the channels of trade for the goods or services with which it is used; the degree of recognition of the mark in trading areas and channels of trade used by the mark’s owner and the person against whom an injunction is being sought; the nature and extent of use of the same or similar marks by third parties, and whether the mark was registered.
When a mark is not registered, the plaintiff has the burden of proving that it is a valid trademark. The Court indicates that here, plaintiff cannot fulfill this burden because central to a claim for trademark dilution is the existence of a trademark and there is no federal trademark protection for a musical work. In order to qualify for federal trademark protection the mark must be used in commerce to identify and distinguish goods and that “signature songs” do not so qualify. A fundamental principle of trademark law is that trademark rights arise solely from the use of a mark in commerce to represent the goodwill of an ongoing business.
Protection of a musical work falls under the rubric of copyright, not trademark law and mere allegations that a plaintiff’s signature song is her famous trademark supported by a single newspaper article stating the same is not sufficient.
Accordingly, the Court does not reach the issue of whether there was dilution because it finds that plaintiff cannot allege that she has a trademark in the recording of the song.
New York General Business Law 368-d provides that “likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of the goods or services.”
The opinion cites cases holding that to merit protection under the statute a plaintiff first must possess a trademark or name that is truly of distinctive quality or which has acquired a secondary meaning in the mind of the public. To establish a claim for dilution in New York, plaintiff must prove ownership of a distinctive mark and a likelihood of dilution. Thus the analysis under § 368-d essentially is the same as under 15 U.S.C. § 1125(c) because the federal statute should coexist with state dilution law. Having found that there is no federal trademark protection for plaintiff’s alleged “signature song” it similarly finds no protection under plaintiff’s state claim.
Turning to plaintiff’s claim under § 51 of New York Civil Rights Law, the Court notes that this section has been amended to protect the use of a person’s voice for advertising purposes or for the purpose of trade without the written consent of that person. However, the statute contains an exception that permits a person, firm or corporation to use the voice of any author, composer or artist in connection with his literary, musical or artistic productions when such person has sold or disposed of the voice embodied in the production. The Court states: “Thus, in alleging that she recorded the song ‘without a contract or any formal agreement,’ plaintiff admits that she disposed of her rights to protect her voice in that she placed her work in the public domain. Accordingly, the statutory exception precludes any recovery on this claim.”
In order to prevail on her claim of unfair competition or misappropriation, plaintiff first must allege a cognizable property right. The opinion states that plaintiff cannot allege a trademark violation of her “signature song” because protection of a musical work only is found under federal copyright law. Accordingly, she has not pleaded a cognizable property right and therefore this claim is dismissed.
Turning to plaintiff’s claim of unjust enrichment, the opinion notes that to recover in New York, a plaintiff must show that defendant was enriched, such enrichment was at the expense of the plaintiff and that the circumstances where such that in equity and good conscience defendant should make restitution.
Here, the facts do not permit the legal conclusion that plaintiff maintains a cognizable right that was misappropriated. The Court also notes that New York does not recognize a common law claim for unjust enrichment where, as here, plaintiff’s allegations are based on the unauthorized use of a person’s goodwill, voice, persona or performance. For such alleged uses, the exclusive remedy of plaintiff is under Sections 50 and 51 of the New York Civil Rights Law.
Plaintiff’s seventh claim is for defamation per se. In the June 13 Order referred to above, the Court found that plaintiff was not exposed to hatred, contempt or aversion as required for a per se violation. In the Second Amended Complaint, plaintiff added to her allegations that she was “disparaged,” but the Court indicates that this is a legal conclusion unsupported by the facts. Accordingly, this claim too is dismissed.
The opinion concludes by granting defendants’ motion to dismiss claims two through seven of the Second Amended Complaint.
Plaintiff has indicated that it will appeal this ruling.
1 Astrud Oliveira a.k.a. Astrud Gilberto v. Frito-Lay, Inc. et al., 96 Civ 9289, U.S. District Court for the Southern District of New York (January 15, 1999).