This past weekend, while out on a walk with man’s best friend, I listened to one of my favorite legal podcasts, This Week in Law. It’s a great source of information for lawyers interested in IP, tech, privacy, and other areas. The discussions are rich, and it helps me keep up with emerging legal issues in my practice.

Last week’s episode involved music copyright infringement — which is not an area I typically find myself in, but involves copyright, which I do practice. The discussion was highly informative and interesting (I recommend a listen). 

One segment (really just an aside) fits more into my practice and is well worth some further discussion. At close to the 30-minute mark one of the guests, Joe Bennett, while discussing the issues that come with licensing copyrighted music, explained projects he had done which involved him replicating the “production value and vocal stylings” of an artist. These are advertisements in which a business either cannot afford a copyright license or an artist just won’t give one. As Bennet mentioned, the businesses get around the copyright issue by creating their own content that replicates the sound and style of the artist. (For example he mentioned the sound and style of the Beach Boys, which is similar throughout their catalog, and would be easily recognized by many.) At first blush, this seems valid — the ad isn’t using a copy of any protected content. But, As J. Michael Keys noted, there are a few issues that could arise from this sort of practice. One is the rights of derivative works (which under US law retains with the copyright owner), but also, and what I want to discuss here, the right to publicity, which doesn’t involve a specific work, but rather deals with a persons image, likeness, persona, etc. A few well-known cases that IP practitioners would recall involve Tom Waits, Woody Allen, and Vanna White.

This aside, demonstrating that one can be liable even without direct copying, authoring a derivative work, or sampling a piece of work, is an important take-away for businesses, or ad agencies, that advertise their products or services. Although an advertisement such as that circumvents copyright and trademark law, it does not free you from all liability.

In the Tom Waits case, an ad agency for Frito-Lay produced an ad for SalsaRio Doritos, a new Frito-Lay product at the time (this was the 80’s). In developing the advertisement, one of the creatives at the ad agency was inspired by the Tom Waits song Step Right Up, and decided to create a radio ad that mimics Tom Waits’s voice — which is quite distinct and was noted in the case as sounding “like how you’d sound if you drank a quart of bourbon, smoked a pack of cigarettes and swallowed a pack of razor blades. … Late at night.” The ad agency found a Tom Waits voice double, produced the ad, and released it. Waits then sued Frito-Lay for voice misappropriation and false endorsement.

The problem here was, although the advertisement did not include any actual recordings of Waits, a person who hears the advertisement would likely think that Waits in fact is the singer, and thereby, endorsed the product. Such endorsements must be authorized, which Waits did not do. It does not matter that Waits had no part in it, what matters is how the public would perceive the ad. The jury found for Waits, and he was awarded $2,475,000 plus attorneys fees (this was in 1992).

Now, Fito-Lay is a heavy hitter, and they could probably afford to pay off Tom Waits, but the right to publicity/false endorsement doctrine — especially when involving images, recordings, etc. that are not the actual celebrity — can be big issues for businesses that often times have no idea they are doing anything wrong. (Of course, using actual images and recordings are an issue, but that’s more standard practice that most people are aware of.)

Remember, the test here is how the public would perceive the content, and/or a person’s right to control their public image. The simple solution is, stay away from using marketing materials that are meant to evoke a public figure; it won’t end well. (Michael Jordan)

(The other cases I noted, involving Woody Allen and Vanna White, are further examples of how a business thought it was getting around trademark or copyright law, only to find that creating an association with the person, or using their likeness, is still a violation of a person’s rights. The Woody Allen case involved a look-a-like for a video store ad, and the Vanna White case involved an ad that included a robot dressed like White and positioned next to a game board, similar to the board in Wheel of Fortune.)