Sounds Like Teen Spirit: Musicians And Advertisers At Odds Over Use Of Sound-Alikes In Advertising

An increasingly important source of revenue for songwriters and performing artists has been licensing their compositions or sound recordings for use by commercial advertisers. Even when such advertising licenses are not particularly lucrative for the band, the use of its song in a national advertising campaign can be a valuable source of exposure. At the same time, advertisers have recognized the potential value of associating their brands with a particular band or musical work, or using a work to conjure a particular mood or theme and make the advertising message more powerful and memorable. According to one recent article, "[i]n recent years in a relentless quest for young customers, ad agencies have begun trolling among buzzed-about indie rock groups for musical ideas to use in ads for, say, cars and restaurants."  James M. McKinley, Jr., "To Singers, Ad Sounds Too Familiar," New York Times (June 7, 2012).

On some occasions, however, advertising agencies may resort to creating sound-alike tracks when a band declines to allow its music to be licensed for advertising or asks for more money than the advertiser is willing to pay. Several controversies have arisen recently over the use of such "sound-alike" music in advertisements. As recounted by Alex Scally of the indie rock duo Beach House (regarding the  incident described below), "it feels like something close to what we have made. A feeling and a sentiment and an energy has been copied and is being used to sell something we didn't want to sell."  Id. In that instance, Beach House raised objections to a Volkswagen advertisement that used music alleged to be highly evocative of its "dream pop" musical style and, in particular, its song "Take Care."  An advertising agency had previously sought a license to use that song for the Volkswagen commercial, but the band is reported to have repeatedly declined the offer.  Volkswagen has denied that the song used was purposely made to imitate the Beach House song. In another incident, the rock duo The Black Keys reportedly sued Pizza Hut and Home Depot for using what they have alleged to be their single "Gold on the Ceiling" in commercials.

Numerous other such instances have arisen over the years, including the alleged use by a Spanish sporting goods company of a song that sounded like Fleet Foxes' "White Winter Hymnal," and Audi's alleged use of a song that sounded like one from Sigur Ros. Other artists or their music publishers, such as Santana and Eminem, have likewise protested the use of sound-alikes in commercial advertisements. As discussed below, in the United States, the most prominent cases dealing with the potential liability of advertisers involved a Frito-Lay advertisement using a Tom Waits sound-alike and a Mercury automobile advertisement that used a Bette Midler sound-alike. It should also be noted that, when an advertisement is shown outside the United States, the laws of those countries may provide the artist with broader rights against infringement.

Such allegations raise interesting questions of liability, because federal copyright and trademark protections often do not prohibit such uses and, moreover, federal copyright laws may be held to preempt state law claims in some instances. While the federal copyright statute precludes the unlicensed synchronization use of a musical composition or sound recording, the statute generally does not prohibit another band's performance of a different composition that simply resembles the overall style and mood of the plaintiff artist. It is not difficult to imagine over the years numerous recording artists and songwriters who achieved fame for themselves even though their style was highly evocative of another who came before them. To show infringement of a musical composition would generally require a showing of copying through a substantial similarity analysis (in essence, akin to plagiarism) involving a note-by-note analysis usually undertaken in legal proceedings by expert musicologists.

Further, the copyright statute provides a mechanical licensing scheme that generally permits the creation of cover versions of compositions without any need for a permission from the prior sound recording artist. Thus, when the songwriter and recording artist are different parties, as long as the songwriter has licensed the use of the work for an advertisement, to preclude a second recording merely because it sounded like the first artist's recording of the same song would seem to conflict with the statute. Indeed, the legislative history for Section 114(b) of the Copyright Act states, "[m]ere imitation of a recorded performance would not constitute a copyright infringement even where one performer deliberately sets out to simulate another's performance as exactly as possible."  H.R. REP. NO. 94-1476, at 106.

Likewise, trademark law is generally not sufficient legal protection for the style or sound of a musical performer. Trademark law likely will not provide a cause of action based on a use expressly permitted by the copyright statute, such as when an advertiser has obtained synchronization rights for the use of a musical composition. See, e.g., Butler v. Target Corp., 323 F. Supp.2d 1052, 1058-59 (C.D. Cal. 2004) (musical composition cannot be protected as a trademark; "[a] contrary conclusion would allow any copyright claim for infringement of rights in a musical composition to be converted automatically into a Lanham Act cause of action") (citation omitted); Davis v. Trans World Airlines, 297 F. Supp. 1145 (C.D. Cal. 1969) (no cause of action existed over broadcast commercials imitative of plaintiffs' recorded performance where defendants had acquired license to use composition); but see Waits v. Frito-Lay, 978 F.2d 1093, 1106-11 (9^th Cir. 1992) (affirming verdict that use of sound-alike created false association between plaintiff and products advertised, but vacating damages as duplicative of right of publicity claim).

As a result, plaintiffs in cases of this nature have more commonly relied on a common law right of publicity claim. Both the Waits and Midler cases were decided in favor of the artist based on state right of publicity grounds, which were held not to be preempted by the federal copyright statute. In the Midler case, in 1988 the Ninth Circuit Court of Appeals held that vocalists have common law property rights to their distinctive voices. Midler v. Ford Motor Co., 849 F.2d 460, 463 (9^th Cir. 1988). Like the allegations made in the Beach House controversy, the Midler case also involved a situation in which the advertising agency sought Midler's permission but was refused. Id. at 461. The agency then enlisted Midler's back-up singer who, according to the allegations, was played Midler's version of the song and instructed to imitate it. Id.

The Ninth Circuit noted that the use of the song was licensed, and therefore the copyright statute provided Midler with no remedy on that point. Also, the parties were not in competition (and therefore the state unfair competition statute provided no remedy), and, because the commercial did not use Midler's actual voice, California Civil Code Section 3344 (which generally prohibits the unlicensed use of a person's voice or likeness in commercial advertising) also was of no assistance to Midler. Id. at 462.

The court held, however, that summary judgment for the advertiser was improper, because the California common law right of publicity recognized "an injury from 'an appropriation of the attributes of one's identity,'" which included the imitation of Midler's recognizable voice. Although the court cautioned that not every imitation of a voice to advertise merchandise was actionable, it held that "when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California."  Id. at 463. As the court stated:

Four years later, the Ninth Circuit held that the use of a sound-alike to perform an advertising jingle was an infringement. Waits, 978 F.2d at 1100-04. In the Waits case, the artist won a judgment in excess of $2 million (comprised mostly of a punitive damages award) from Frito-Lay for mimicking his voice in Doritos' ads. Like the Midler case, here, the defendant had attempted to find a singer who could accurately imitate Waits' distinctive voice. Id. at 1097-98. The court stated that while a vocal style "per se" is not protectable under the right of publicity, the imitation of a distinctive voice that identifies a person is.

The Midler and Waits cases serve as important reminders that state right of publicity claims may impose liability, even where federal copyright and trademark laws do not. Such claims, however, raise complex questions of possible preemption by the federal copyright statute as well as the factual issue of when a performer's voice or combination of voices is distinctive. Moreover, it should be noted that while most states recognize a right of publicity, not all states provide that their respective right of publicity laws extend to vocal imitations. See, e.g., Romantics v. Activision Pub., Inc., 574 F. Supp.2d 758, 764 (E.D. Mich. 2008) (Michigan common law right of publicity has not recognized a right of publicity in the sound of a voice or combination of voices, even if distinctive). Further, the analysis in these cases is likely to be complicated when it is the imitation of a musical style or genre of a musical group (especially if purely instrumental) that is at issue, rather than a more simple imitation of a recognizable singer's distinctive voice. Courts will likely be cautious against extending the right of publicity in such a way that it would give a band an effective monopoly to a particular musical style, sound or genre.

Conclusion

Advertisers and their agencies should use caution and carefully consider the legal issues when contemplating the use of sound-alike music for an advertisement. The opportunity to engage with the consumers' buzz and enthusiasm for a musical performer or a particular song is a powerful lure, and when the artist refuses the license it may be tempting to resort to a sound-alike musical track. While this may seem to be an inexpensive way to appeal to a particular demographic, an accusation of musical plagiarism may engender negative reactions among the very consumers the advertiser seeks to appeal to, and result in legal consequences. Even when federal copyright and trademark laws are not likely to provide a legal basis for an artist's infringement claim, the possibility of state common law protections, such as the right of publicity, may remain viable.

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This article, which may be considered advertising under the ethical rules of certain jurisdictions, is provided with the understanding that it does not constitute the rendering of legal advice or other professional advice by Goodwin Procter LLP or its attorneys. © 2012 Goodwin Procter LLP. All rights reserved.