Prima v. Darden Restaurants, Inc.

• Decision Date: 12 January 2000
• Docket Number: No. CIV. 99-1637 GEB.,CIV. 99-1637 GEB.
• Citation: 78 F.Supp.2d 337
• Parties: Gia M. PRIMA, individually and as beneficiary of the Estate of Louis Prima, Plaintiff, v. DARDEN RESTAURANTS, INC., d/b/a, Olive Garden Restaurant, and Grey Advertising, Inc., Defendants.
• Court: U.S. District Court — District of New Jersey

78 F.Supp.2d 337

Gia M. PRIMA, individually and as beneficiary of the Estate of Louis Prima, Plaintiff, v. DARDEN RESTAURANTS, INC., d/b/a, Olive Garden Restaurant, and Grey Advertising, Inc., Defendants.

No. CIV. 99-1637 GEB.

United States District Court, D. New Jersey.

January 12, 2000.

COPYRIGHT MATERIAL OMITTED

Anthony Sylvester, Riker, Danzig, Scherer, Hyland & Perretti, Morristown, NJ, for Plaintiff Gia Prima.

Stephen Noah Dermer, Lowenstein Sandler PC, Roseland, NJ, for Defendants Darden Restaurants, Inc., and Grey Advertising, Inc.

OPINION

BROWN, District Judge.

This matter comes before the Court upon the motion of defendants, Darden Restaurants, Inc., doing business as the Olive Garden Restaurant ("Darden Restaurants"), and Grey Advertising, Inc., ("Grey Advertising"), for judgment on the pleadings pursuant to Fed.R.Civ.P. 12(c), or in the alternative, for summary judgment pursuant to Fed.R.Civ.P. 56(b). The Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121(a), 28 U.S.C. §§ 1331, 1332 and 1338(a), and supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a). For the reasons discussed below, the defendants' motion is granted in part and denied in part.

I. BACKGROUND

The plaintiff, Gia Prima, is the widow of Louis Prima, and the successor-in-interest to his estate. See Plaintiff's Rule 56.1 Statement at ¶ 1; Defendants' Rule 56.1 Statement at ¶ 3; Plaintiff's Complaint at ¶ 4. Mrs. Prima was born in Roebling, New Jersey, and currently resides in New Jersey. See Certification of Gia Prima in Opposition to the Motion of Defendants for Judgment on the Pleadings or, Alternatively, for Summary Judgment at ¶ 2 ("Prima Cert."). Mrs. Prima and her late husband were residents of the state of Nevada from 1963 to the time of Louis Prima's death in 1978. See id. at ¶¶ 6 and 9.

Louis Prima was born in Louisiana, and left there in the 1930's to pursue his musical career in New York. See Prima Cert. at ¶ 4. Over the next five decades, Louis Prima became a Grammy Award winning singer, songwriter and performer, who performed and sold recordings of his music throughout the world. See Plaintiff's Complaint at ¶ 5. More recently, and long after his death, Mr. Prima's music has been featured in a critically acclaimed Gap "Khakis Swing" commercial, as well as in the motion pictures "Analyze This", "Casino", "Big Night", "City of Angels", and "Bogus". See id. at ¶ 6. In December, 1999 National Public Radio released its list of the 100 most important American musical works of the century, which included Prima's 1936 song "Sing, Sing, Sing". See M. Dion Thompson, NPR Compiles List of Century's Top Works of Music, The Baltimore Sun, December 17, 1999, 1E. Today Prima's music has enjoyed renewed popularity with the resurgence of "Swing" music and dance in 1990's popular culture. See Pamela Kramer, Inside Story: That Swing Thing, How Dance Form Went From Historical Curiosity to Cosmic Craze, Los Angeles Times, October 31, 1999, Los Angeles Times Magazine at 18. One music reviewer even proclaimed that "[p]erhaps the best thing about this resurgence of swing music is renewed popularity of one of pop music's best live acts, Louis Prima and Keely Smith." Richard Torres, Louis Prima and Keely Smith "Wild Cool & Swingin," Newsday, August 15, 1999, D21. "Billboard Magazine" recently reported that Prima's catalog of songs "is generating 25 times more income in the last year or two than it had in past years." Irv Lichtman, Louis Prima's Back in the Swing of Things, Billboard, July 31, 1999, 47. This year two of Prima's Christmas songs were re-released on a CD entitled "Jingle Bell Swing". See Richard Harrington, It's the Most Musical Time of the Year, The Washington Post, December 10, 1999, N40. The reviewer of the Christmas CD found that "[t]he liveliest cuts belong to wildman Louis Prima (`What Will Santa Say When He Finds Everybody Swinging?' and `Shake Hands With Santa Clause')." Id. Nineteen ninety-nine also saw the release of a CD containing Louis Prima's and Keely Smith's music entitled "Wild Cool & Swingin"', and a documentary on his life entitled "Louis Prima: The Wildest!". See Edvins Beitiks, Lounge King Prima Lives on in Film Documentary, San Francisco Examiner, October 20, 1999, B1.

Mr. Prima was a resident of New York from the late 1930's through in or about 1953-54. See Prima Cert. at ¶ 5. He was a resident of the State of Nevada from approximately 1954 to the time of his death in 1978. See Prima Cert. at ¶¶ 5-6 and 9. As a result of complications from brain surgery performed in California, Mr. Prima fell into a coma in or about 1976, after which time he lived in a clinic and then a hospital in Louisiana, where he died in 1978. See id. at ¶¶ 7-8. Following his death, Mr. Prima's Last Will and Testament was filed in the probate court in Las Vegas, Nevada. See id. at ¶ 10.

Among Louis Prima's many recordings was a song entitled "Oh Marie", which is the song at issue in this litigation. See Complaint at ¶ 13. Prima first popularized "Oh Marie" in 1944, and eventually the song became publicly associated with him. See Complaint at ¶ 13; Defendants' Rule 56.1 Statement at ¶ 15. "Oh Marie" appeared on many of Prima's albums, including "Cream of Prima", "Louis Prima In All His Moods", "Louis Prima and His Orchestra at the Terrace Room", "Breakn' It Up", "The Wildest", "Hey Boy! Hey Girl!", "The Hits of Louis & Keely", "Doin' the Twist With Louis Prima", "Angelina", "A Tribute to Louis Prima", "Just a Gigilo", "The Best of Louis Prima", "Zooma Zooma", "Jump Jive and Wail", "Louis Prima & the Witnesses", "Louis Prima Collectors' Series", and "The Golden Hits of Louis Prima". See Complaint at ¶ 13.

In 1953, Prima registered a copyright in an arrangement of "Oh Marie" on behalf of an entity known as "Prima Publishing Co." located in New York. See Hughes Aff. at Exhibit C. Neither Prima, nor Prima Publishing Co. owns a copyright in that arrangement today because the copyright was not timely renewed. See id. at ¶ 5. Accordingly, there is no evidence before the Court that either the plaintiff or Louis Prima owns a copyright in any work of authorship as defined in 17 U.S.C. § 101 in "Oh Marie".

Defendant Darden Restaurants is a corporation organized and incorporated under the laws of Florida, with its principal place of business in Orlando, Florida. See Complaint at ¶ 7; Answer at ¶ 7. In or about July, 1996, Darden Restaurants retained the services of Grey Advertising, and in 1997 commissioned Grey Advertising to create and produce a series of commercials for the Olive Garden Restaurants (the "Olive Garden"), which are family-style Italian restaurants located throughout the United States. See Affidavit if Vincent Infantino at ¶¶ 4-5 ("Infantino Aff.").

Grey Advertising is a corporation organized and incorporated under the laws of Delaware with its principal place of business in New York, New York. See Complaint at ¶ 8; Answer at ¶ 8. "Grey is an advertising agency in the business of conceiving, developing, producing and/or distributing television commercials and/or causing television commercials to be displayed or aired." Infantino Aff. at ¶ 3. In the summer of 1997, Darden Restaurants commissioned Grey Advertising to develop a series of television commercials for the Olive Garden, the underlying theme of which was "When You're Here, You're Family." See id. at ¶ 5.

One of the commercials that Grey produced at the behest of Darden for the Olive Garden was entitled "Aunt Marie" (the "Commercial" or "Aunt Marie"). See id. at ¶ 6. The Commercial depicts a boisterous family enjoying a festive meal at the Olive Garden. See Defendants' Rule 56.1 Statement at ¶ 9; Infantino Aff. at Exh. A. The narrator of the commercial, who apparently is a member of the family, discusses the dinner being served at the Olive Garden, fondly recalls dinners prepared by his Aunt Marie, and remarks that his Aunt Marie enjoys dinners at the Olive Garden so much that she asked for the Olive Garden's Chicken Parmesan recipe. See id. The music playing in the background of the Commercial is "Oh Marie." See id. Grey commissioned a professional singer to sing "Oh Marie," and used its own musical arrangement. See Infantino Aff. at ¶¶ 10-11. For purposes of this motion only, the defendants admit that the voice singing "Oh Marie" in the background of the Commercial sounds like Louis Prima's voice, and that the song "Oh Marie" is associated with him. See Defendants' Rule 56.1 Statement at ¶¶ 14-15. The defendants did not request permission from the plaintiff to use "Oh Marie," or to use a voice that sounds like Prima's voice in the Commercial. See id. at ¶ 13; Complaint at ¶ 14.

Gia Prima and her son both saw the Commercial and recognized the voice in the Commercial as an imitation of Louis Prima's voice. See Prima Cert. at ¶ 11. This action followed.

The plaintiff's Complaint alleges six separate causes of action. Count I alleges that the defendants' use of a voice that "unmistakably imitates Louis Prima's voice, singing style and manner of presentation including his style of musical arrangement" violates Nevada Revised Statutes § 597.790. See Complaint at ¶¶ 10-20. Count II alleges a cause of action under New Jersey's common law right of publicity. See id. at ¶¶ 21-27. Count III alleges that the Commercial violates Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), because the Commercial uses false representations in connection with the sale of goods in interstate commerce. See id. at ¶¶ 28-32. The plaintiff alleges in Count IV that the defendants interfered with the plaintiff's prospective economic advantage. See id. at ¶¶ 33-37. Counts V and VI allege that the defendants' use of an imitation of Louis Prima's singing voice constitutes common law unfair competition and unjust enrichment. See id. at ¶¶ 38-45.

II. DISCUSSION

This Court must determine which state's law governs the substantive rights at issue. We must then determine...