Oliveira v. Frito-Lay: Right of Publicity

The Second Circuit held Astrud Gilberto had no Lanham Act mark in her famous 'Girl from Ipanema' recording, channeling the grievance to publicity law.

In Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001), decided May 8, 2001, the United States Court of Appeals for the Second Circuit answered whether a singer can claim a federal trademark in a recording of her own famous performance. Astrud Gilberto, who recorded the internationally celebrated 1964 version of “The Girl from Ipanema,” sued after Frito-Lay licensed that recording and used it in a television commercial for Baked Lay’s potato chips. She contended that the public so strongly associates the recording with her that it functions as a mark identifying her, and that the commercial therefore falsely implied her endorsement in violation of section 43(a) of the Lanham Act. Writing for the panel, Judge Pierre Leval affirmed dismissal of the Lanham Act claim, holding that a performer has no trademark right in a recording of her own signature performance. The court vacated the dismissal of her New York state claims and, with no federal claim remaining, directed that they be dismissed without prejudice so she could pursue them in state court.

The decision is the leading authority for the proposition that a signature recorded performance is not a “mark” of the performer. It channels grievances about recorded voice away from trademark and into the right of publicity and copyright.

At a glance

Case: Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001).
Decided: May 8, 2001 by Judge Pierre Leval for the panel; Lanham Act dismissal affirmed, state claims vacated and remanded to be dismissed without prejudice.
Holding: A performer does not own a Lanham Act trademark in a recording of her own signature performance, so use of that recording does not support a false-endorsement claim under section 43(a).
Significance: Confines recorded-performance grievances to the right of publicity and copyright rather than federal trademark law.

The doctrinal frame: false endorsement under section 43(a)

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), prohibits the use in commerce of any word, symbol, or device that is likely to cause confusion as to the origin, sponsorship, or approval of goods. Courts have long recognized that this false-association provision can support a false-endorsement claim when a defendant uses a celebrity’s identity in a way that falsely suggests the celebrity endorses the product. To prevail, however, the plaintiff must show that the thing used functions as a mark, meaning a source-identifying symbol in which the plaintiff holds protectable rights, and that its use is likely to confuse consumers about endorsement.

Gilberto’s theory pressed at the outer edge of that framework. She did not claim that Frito-Lay used her name or image. She claimed that the recorded performance itself was a mark identifying her, so that playing the recording amounted to using her mark and falsely signaling her endorsement. The question was whether trademark law recognizes such a right in a performer’s own recording.

The facts and the licensed recording

The 1964 recording of “The Girl from Ipanema” featuring Gilberto’s vocal is among the most recognizable recordings of its era. Frito-Lay, working through its agencies, licensed the recording for a reported fee and used it in a Baked Lay’s commercial. The license came from the parties recognized as holding rights in the recording, not from Gilberto in her personal capacity. She sued in the Southern District of New York, asserting the Lanham Act false-endorsement claim together with New York state claims for violation of her statutory right of publicity and for unfair competition and unjust enrichment. The district court dismissed all of them, and Gilberto appealed.

The holding: the performance is not a trademark

The Second Circuit affirmed dismissal of the Lanham Act claim, holding that, at least on the showing Gilberto made, the law does not accord a performer trademark rights in a recording of her own signature performance. Not a single precedent in the history of trademark, the court observed, had recognized such a right, and signature performances are not unique to Gilberto: many famous artists have recordings their audiences identify with them, yet none had ever been held to own a mark in the recording. The court was careful not to call the idea unthinkable, adding that if trademark protection were to be extended to signature performances, that was a judgment for Congress rather than a right for a court to recognize for the first time. The court acknowledged that sounds can sometimes function as marks, giving the familiar example of distinctive broadcast chimes, and that musical works are not categorically excluded from trademark protection. But it declined to hold that a singer acquires trademark rights in the very recording of her famous performance.

Two practical concerns animated the ruling. First, recognizing such a right would extend trademark law well beyond its source-identifying purpose, converting every famous recording into the performer’s personal mark. Second, it would create enormous and unpredictable liability for parties who had paid bona fide license fees to the recognized owners of a recording, only to face a separate trademark claim from the performer. Trademark law, the court concluded, does not support that result.

The state claims and the jurisdictional disposition

The court treated the New York claims differently. It found that the district court had improperly resolved factual questions against Gilberto in dismissing her section 51 right-of-publicity claim and her related unfair-competition and unjust-enrichment claims, and it vacated those dismissals. But because the only federal anchor, the Lanham Act claim, had been correctly dismissed, the court declined to exercise supplemental jurisdiction over the surviving state-law theories. It remanded with instructions to dismiss the state claims without prejudice, leaving Gilberto free to refile them in New York state court, where the reach of sections 50 and 51 to a recorded performance could be litigated on its own terms.

The disposition underscores the doctrinal sorting the case performs. Federal trademark law offered no home for a complaint about the use of a recorded performance. If a remedy existed, it lay in state publicity law or in whatever rights the copyright owner of the recording held, not in section 43(a).

Open questions

When can a sound be a performer’s mark? The court left room for sounds to function as marks in some circumstances, but did not map when, if ever, a recorded vocal could acquire secondary meaning as a source identifier for a performer.
How does this interact with false endorsement generally? Celebrities can still bring section 43(a) endorsement claims based on name, voice imitation, or image. The opinion did not fully reconcile those recognized claims with its refusal to protect a recording as a mark.
What did New York law ultimately provide? By remanding the state claims without deciding them, the court left open how sections 50 and 51 apply to the licensed use of a famous recording of the plaintiff’s performance.
Where does copyright fit? The recording is a copyrighted work owned by others. The opinion did not address how the performer’s asserted interest coexists with the recording owner’s exclusive rights.

Implications for brands and businesses

Licensing a recording does not license the performer’s persona everywhere. A valid copyright license to use a recording defeats a trademark theory under Oliveira, but it may not foreclose a state right-of-publicity claim by the featured performer. Clearance should consider both.
Performers should look to publicity and contract, not trademark. A signature recording is not the performer’s mark. Artists seeking control over commercial uses of their recordings should rely on their recording contracts, on copyright ownership, and on state publicity statutes.
False endorsement still requires a protectable mark. Plaintiffs invoking section 43(a) must identify a genuine source-identifying symbol in which they hold rights, not merely a famous work associated with them.
Forum and jurisdiction matter. When the federal claim fails, related state publicity claims may be sent to state court, changing the applicable law and the litigation calculus for both sides.

Frequently asked questions

Can a singer claim a trademark in her own famous recording? No, under Oliveira v. Frito-Lay. The Second Circuit held that a performer does not hold a Lanham Act trademark in a recording of her own signature performance. The court reasoned that treating a famous recording as the singer’s mark would stretch trademark law too far and expose parties who paid legitimate license fees to unforeseeable liability. The performance itself is not a trademark identifying the singer as a source.

What happened to Astrud Gilberto’s state-law claims? The court affirmed dismissal of the federal Lanham Act claim but vacated the dismissal of her New York Civil Rights Law section 51 right-of-publicity claim and related state claims, finding the district court had improperly resolved facts against her. Because the only federal claim was gone, the court declined supplemental jurisdiction and directed that the state claims be dismissed without prejudice so she could refile in New York state court.

Why does Oliveira matter for voice and performance rights? It channels grievances over the use of a signature recorded performance away from trademark law and toward the right of publicity. A performer who objects to the commercial use of her famous recording generally cannot convert that objection into a false-endorsement trademark claim, and must instead rely on state publicity statutes or on the rights of whoever owns the sound recording under copyright.