Sinatra v. Goodyear Tire & Rubber Co.

• Decision Date: 20 November 1970
• Docket Number: No. 23472.,23472.
• Parties: Nancy SINATRA, Plaintiff-Appellant, v. The GOODYEAR TIRE & RUBBER CO., an Ohio corporation, Young & Rubicam, Inc., a New York corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

435 F.2d 711 (1970)

Nancy SINATRA, Plaintiff-Appellant, v. The GOODYEAR TIRE & RUBBER CO., an Ohio corporation, Young & Rubicam, Inc., a New York corporation, Defendants-Appellees.

No. 23472.

United States Court of Appeals, Ninth Circuit.

November 20, 1970.

Newton Kalman (argued), James A. Cohen, of Caidin, Bloomgarden & Kalman, Beverly Hills, Cal., for plaintiff-appellant.

Anthony Liebig (argued), Michael E. Meyer, of Lillick, McHose, Wheat, Adams & Charles, Los Angeles, Cal., for defendants-appellees.

Before DUNIWAY, KILKENNY and TRASK, Circuit Judges.

TRASK, Circuit Judge:

This is an appeal brought by Nancy Sinatra from a summary judgment entered against her in favor of appellees, on her complaint against Goodyear Tire and Rubber Company based upon unfair competition, on the ground that there was no genuine issue as to a material fact. The district court's jurisdiction was founded on diversity of citizenship. 28 U.S.C. § 1332. This court has jurisdiction under 28 U.S.C. § 1291.

Plaintiff-appellant is a professional entertainer. She had made a recording of a song entitled "These Boots Are Made For Walkin'" which had become popular. The music, lyrics and arrangement of this composition had been copyrighted with Criterion Music as the copyright proprietor.

The defendants Goodyear Tire and Rubber Company, a corporation, and Young and Rubicam, Inc., an advertising agency, conceived the idea of coining the phrase "wide boots" as a descriptive term for tires manufactured by defendant Goodyear. As part of a widespread advertising campaign based upon this "wide boots" theme, the defendants produced and exhibited six radio and television commercials centered around a musical background using the music and revised lyrics from "These Boots Are Made For Walkin'" in combination with the voice of a female singer who was not shown on the screen or identified by name. In the four television commercials, two had a group of female voices singing the song and two had a single female voice. All four had a male voice narrating the commercial with four girls dressed in high boots and "mod" clothes appearing briefly with rolling tires. Each of the two radio commercials had a single female voice singing the song and a male narrator giving the commercial.¹

The complaint alleges that the song has been so popularized by the plaintiff that her name is identified with it; that she is best known by her connection with the song; that said song and the arrangement used by defendants "has acquired a secondary meaning"; that the defendants selected a singer whose voice and style was deliberately intended to imitate the voice and style of the plaintiff; and that the physical appearance and dress of the girls who appeared in fleeting views on the television commercials utilized the mannerisms and dress of the plaintiff. All of this, the complaint alleges, was intentionally accomplished for the purpose of deceiving the public into believing that the plaintiff was a participant in the commercials.

Plaintiff Sinatra further alleged that the defendant Young and Rubicam had previously contacted her agent in an effort to employ her on behalf of Goodyear but no contract was concluded.

She thereupon prayed for general and punitive damages, an accounting of all sales of Goodyear tires during the period the commercials were used and a reasonable royalty therefrom, together with a permanent injunction restraining defendants from further use of all of the commercials.

The defendants filed a motion to dismiss and a motion for summary judgment supported by affidavit and exhibits consisting of the film and tapes in question. The plaintiff filed her counteraffidavit and that of her agent.

Upon these papers the district court found that:

"The performances of `These Boots Are Made For Walkin" on each of said two radio commercials and four television commercials are anonymous; that is, there is no audio or visual representation, holding out, or inference that any of the commercials embody the performance or voice of any particular individual or individuals."

The Court thus concluded in part:

"Defendants did not pass-off; that is, they did not mislead the public into thinking their commercials were the product of plaintiff or anyone else. "Imitation alone does not give rise to a cause of action; there is, therefore, no genuine issue of fact and defendants are entitled to Summary Judgment."

On appeal, Sinatra asserts that her complaint alleged the essential elements of the tort of passing-off and raised genuine issues as to material facts so that the district court erred in granting summary judgment. We disagree and affirm.

At the outset it must be remembered that this is not a copyright infringement case.² The copyright proprietor was Criterion Music. Criterion owned the copyright on the music, the lyrics and the arrangements of "These Boots Are Made For Walkin'." On March 3, 1967, and before the production of the commercials complained about, Criterion entered into a written agreement with Young and Rubicam on behalf of the defendant Goodyear for a license to use the composition, "including any arrangements thereof owned or controlled by you, music and/or lyrics. * * *" Complete rights were given for television and radio and for commercial use for advertising purposes on behalf of Goodyear. The written agreement with all of its provisions, warranties and representations was accepted and approved by Lee Hazelwood, designated as the author.

Neither is it a case where an actual tape or other recording of the voice of the plaintiff has been replayed.³ It is not falsely stated to be a Nancy Sinatra rendition. The defendant candidly admitted for purposes of the motion for summary judgment and the district court assumed that the vocal rendition was an imitation of plaintiff's recorded performance of this particular song.

The power to provide copyright protection for a limited time to the "Writings and Discoveries" of authors and inventors is one of the enumerated powers of Congress.⁴ The items designated by Congress to be within the constitutional protection of "writings" were broadened to include a musical composition in 1831,⁵ and the author was given the exclusive right "to arrange or adapt it * * *."⁶ When the Copyright Act was amended in 1909 it provided that any person complying with the provisions of the Act (i.e., obtaining a copyright) should have the exclusive right:

"to perform the copyrighted work publicly for profit if it be a musical composition; and * * * to make any arrangement or setting of it or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced."⁷

Thus the author or composer was accorded copy protection, but no provision has yet been made in the Act for a performer's right, per se.⁸

The appellant recognizes all of this and submits to this court the question as to whether or not she is entitled to relief from the alleged unfair competition by appellees.

Since this is a diversity action and reliance may not be based on the Federal Copyright Act, the law to be applied is the law of the state. The complaint indicates that the plaintiff is a resident of the State of California, the forum state. The defendants are both doing business in the State of California although one is alleged to be incorporated in Ohio and the other in New York. The wrong, if it occurred, is alleged to have occurred in many states since the advertising campaign was nationwide. None of the parties has urged that the law of any state other than that of the forum be applied. In the absence of any other showing we apply the law of the State of California. Cf. Bowser, Inc. v. Filters, Inc., 398 F.2d 7 (9th Cir.1968).

Under the laws of California unfair competition is defined by code.⁹ As thus defined, unfair competition shall mean and include "unlawful, unfair or fraudulent business practice and unfair, untrue or misleading advertising * * *."

An examination of the cases decided under the statute immediately disclosed an obvious distinction on the facts between this case and the great mass of unfair competition cases. There is no competition between Nancy Sinatra and Goodyear Tire Company. Appellant is not in the tire business and Goodyear is not selling phonograph records. There is no passing-off by the defendant of the plaintiff's products as its own either by simulation of name, slogan, device or other unfair trade practice.¹⁰

No real assistance is therefore obtained from the California statute or cases decided under it. Neither counsel has relied upon the statute or the ordinary cases construing it. We turn then to an examination of the general authorities cited by Sinatra to determine if a cause of action exists.

Dean Prosser defines the tort of "passing-off" as involving the basic idea of competing for custom in the trade. Thus it is:

"The making of some false representation to the public or to third persons, likely to induce them to believe that the goods or services of another are those of the plaintiff. * * * The test laid down in such cases has been whether the resemblance is so great as to deceive the ordinary customer acting with the caution usually exercised in such transactions, so that he may mistake one for the other." Prosser, Law of Torts 982-83 (1964).

Here we have a claim of an incidental or secondary passing-off. Appellant seeks to bring her case within the orbit of the traditional pattern of unfair competition by asserting that because some people would read her voice into the commercial the defendant has increased its sale of tires "by many millions of dollars."

Counsel has called attention to, and we have discovered, four cases which directly bear on appellant's claim. They are: Davis v. Trans World Airlines, 297 F. Supp. 1145 (C.D.Cal.1969); Lahr v. Adell Chemical Co., 300 F.2d 256 (1st Cir.1962); Sim v. H. J. Heinz...