Tin Pan Apple v. Miller Brewing: Right of Publicity

When a beer ad hired Fat Boys imitators, a New York court let the look-alike, copyright, and Lanham Act claims proceed but held that copying a distinctive voice did not, by itself, violate the state privacy statute as it then read. The legislature added voice in 1995.

In 1987 the Fat Boys turned down a Miller beer commercial. So the advertisers, the rap group alleged, hired three look-alikes to do the job instead, mimicking the trio’s appearance and their distinctive rap style, built on the human-beatbox vocal sounds that later stages of the case would call the trilling “Brrr” and the percussive “Hugga-Hugga.” The Fat Boys and their companies sued. In Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 826 (S.D.N.Y. 1990), Judge Charles S. Haight, Jr. sorted the claims with care, and the result is a useful map of where personality protection in New York began and ended as the statute then read. The look-alikes could support a claim; the copying could support copyright and trademark theories; but the imitation of the group’s distinctive voices, standing alone, did not violate the state’s privacy statute.

At a glance

Case: Tin Pan Apple, Inc. v. Miller Brewing Co., No. 88 Civ. 4085 (CSH), 737 F. Supp. 826 (S.D.N.Y. 1990).
Court: United States District Court, Southern District of New York; Judge Charles S. Haight, Jr.
Posture: Defendants’ motion to dismiss under Rule 12(b)(6); granted in part and denied in part.
Holding: Copyright, Lanham Act, New York General Business Law, and New York Civil Rights Law §§ 50-51 look-alike claims may proceed; the §§ 50-51 claim premised on imitation of the plaintiffs’ voices (a “sound-alike” theory) is dismissed with prejudice because the statute as then written protected name, portrait, and picture, not voice.
Significance: A leading statement that New York’s statutory right of publicity did not reach voice imitation, distinguishing it from California’s common-law voice cases and channeling such claims into copyright and the Lanham Act. The New York legislature added voice to § 51 in 1995, superseding the holding on that point.

The plaintiffs were Mark Morales, Darren Robinson, and Damon Wimbley (the Fat Boys), together with three corporate plaintiffs: Tin Pan Apple, Inc., which owned the registered FAT BOYS service mark and copyrights in various Fat Boys sound recordings, Sutra Records, Inc., which owned copyrights in various sound recordings, and Fools Prayer Music, Inc., which co-owned and administered the copyrights in the relevant compositions. The defendants were Miller Brewing, its advertising agency Backer & Spielvogel, and the comedian Joe Piscopo, who starred in the spot. The plaintiffs alleged that after the real group declined to appear, the defendants produced and aired a thirty-second prime-time commercial in which three Fat Boys look-alikes performed as Piscopo’s backup in the group’s distinctive style. The defendants moved to dismiss the entire complaint.

The sound-alike theory falls short under §§ 50-51

The most consequential ruling concerns voice. As they read in 1990, New York Civil Rights Law §§ 50 and 51 prohibited the use of a living person’s “name, portrait or picture” for advertising or trade without written consent. In their seventh claim the plaintiffs invited the court, in Judge Haight’s framing, to “correct” an “oversight” of the New York Legislature and hold that the use of sound-alikes violated the statute anyway. He declined the invitation. Treating a close physical resemblance as the functional equivalent of a picture was one thing, because “[t]he same sense, that of vision, is involved.” But, he wrote, “[i]t is quite a different proposition to bring the sense of sound within the statute when the legislature has so far declined to do so. That is not an appropriate judicial function.” He rested on Lahr v. Adell Chemical Co., 300 F.2d 256 (1st Cir. 1962), where the First Circuit read the same New York statute to leave a copy of Bert Lahr’s distinctive voice unactionable because the statute “is very specific.” Midler, he added, construed California law, and he did “not presume to comment on the Ninth Circuit’s exegesis of the law of another state.” His holding was deliberately narrow: “the New York Civil Rights Law does not yet extend to sound-alikes.” The claim was dismissed with prejudice under Rule 12(b)(6).

That holding is the heart of the case for publicity-law purposes. It reflects the textual discipline New York courts bring to §§ 50-51: because the right exists only by statute, courts apply the statute’s enumerated terms rather than a broad, judge-made notion of “identity.” A distinctive voice may be central to a performer’s commercial value, but under the 1990 statute it was not, by itself, the kind of attribute the privacy statute guarded.

The word “yet” turned out to be well chosen. In 1995 the New York Legislature amended § 51 to add voice, and §§ 50 and 51 today reach the “name, portrait, picture, likeness, or voice” of a living person. On the precise question it decided, Tin Pan Apple has been superseded by statute, and the case now reads as a study in how a strictly construed statutory right behaves when it runs out, and in how legislatures rather than courts close such gaps.

What the look-alikes could support

The visual side of the claim fared differently. Defendants also moved to dismiss the §§ 50-51 claim based on the use of look-alikes, and on that point the court denied the motion. Crediting the allegation that the hired performers physically resembled the Fat Boys, Judge Haight found that the use of look-alikes could state a claim under New York law, because presenting imitators who appear to be the plaintiffs can amount to using their “portrait or picture” for trade.

The contrast is instructive. Imitating how the group looked implicated the statute’s protection of portrait and picture; imitating how the group sounded did not. The line New York draws is thus between visual identity, which the statute reaches through the words “portrait or picture,” and aural identity, which the statute’s text does not mention. Whether the look-alikes here crossed that line was a question for later proof, but the claim was at least legally cognizable.

Copyright and the Lanham Act carry the rest

Because the privacy statute could not capture the voice imitation, the plaintiffs’ strongest avenues lay elsewhere. The court allowed the copyright infringement claims, on both the compositions and the sound recordings, to proceed. For purposes of the motion the defendants conceded copying the Fat Boys’ particular expression of rap music, so the fight was over their main defense: that the spot was an “obvious parody of rap” and therefore a fair use. Judge Haight rejected it. Reading Elsmere, Berlin, and Warner Bros., he concluded that a valid parody must build upon the original and contribute “something new for humorous effect or commentary,” while this commercial’s “use is entirely for profit: to sell beer.” Following Judge Leval’s decision in D.C. Comics v. Crazy Eddie, he treated appropriation for commercial promotion, unrelieved by any creative purpose, as no parody at all. The allegation that the defendants copied the group only after being rebuffed by it supplied a further factor, bad faith, cutting against fair use.

The court likewise let the Lanham Act claims advance. Sections 32(1) and 43(a) reach uses likely to cause confusion about the source or sponsorship of a product, and the court walked the Polaroid factors, finding each either sufficiently alleged or unsuited to resolution on the pleadings. Leaning on Allen v. National Video, the Woody Allen look-alike case, it noted that the bad-faith factor was stronger here than in Allen, since the defendants had approached the Fat Boys first and hired imitators only after being refused. That, Judge Haight wrote, “is bad faith raised to a higher power,” a course of conduct the Ninth Circuit had described in Midler as that “of the average thief.” The unfair-competition claims under New York General Business Law §§ 349 and 350 went forward on the same reasoning. The two defamation counts, for trade libel and disparagement and for libel per se, were dismissed with prejudice alongside the sound-alike claim, because nothing in the commercial would let an ordinary viewer infer that the plaintiffs were underage or trafficking in alcohol. The net effect was to narrow the case to its durable claims while pruning the voice-based and weaker counts.

Open questions

Could a voice-imitation claim ever succeed in New York? Tin Pan Apple foreclosed it under §§ 50-51 as the statute then read, and pointed the answer at the legislature. The legislature responded in 1995 by adding voice, so the question the case left open has since been answered by amendment rather than by a court.
How short can a protectable sound be? Whether brief vocal devices like “Brrr” or “Hugga-Hugga” clear copyright’s originality threshold was left for later proceedings. Judge Haight reached it in 1994 on summary judgment, holding that a jury could find those sounds, as used in the copyrighted composition, creative enough to warrant protection, and it remains a recurring puzzle for distinctive musical signatures.
When do look-alikes become a person’s “picture”? The opinion accepted that imitators can implicate §§ 50-51, but how close the resemblance must be, and how confusion is shown, stayed open.

Implications

A statutory right stops where its text stops. In 1990 §§ 50-51 ran to name, portrait, and picture, so copying a distinctive voice was not actionable under them. That is the enduring lesson even though the specific gap is closed: a strictly construed statute reaches only what it enumerates, and the fix comes from the legislature.
The legislature closed the gap in 1995. Sections 50 and 51 now cover “name, portrait, picture, likeness, or voice,” so Tin Pan Apple’s sound-alike holding no longer states current New York law. Anyone reading pre-1995 New York voice cases has to check the statute’s text as of the relevant date.
Choice of law mattered enormously. California’s common law reached deliberate voice imitation in Midler and Waits while New York’s statute did not, so the same advertising conduct could succeed in one forum and fail in the other. The 1995 amendment narrowed that divergence.
Look-alikes carry real risk. Hiring performers who resemble a known act can support a §§ 50-51 claim and a false-endorsement theory, even when no voice issue is present.
Declining a deal is not consent. That the Fat Boys turned down the commercial did not authorize the use of imitators; advertisers who proceed with substitutes invite exactly this kind of suit.

Frequently asked questions

Did Tin Pan Apple recognize a right against voice imitation? No. The court held that imitating the Fat Boys’ voices did not state a separate claim under New York Civil Rights Law Sections 50 and 51, which at the time reached only a person’s name, portrait, or picture. Judge Haight said extending the statute to sound was a legislative rather than a judicial function, and held only that the statute did not yet extend to sound-alikes. The legislature added voice to Section 51 in 1995, so the specific gap the case identified no longer exists.

Then what survived the motion to dismiss? The court allowed the copyright infringement claims, the Lanham Act claims, the New York General Business Law unfair-competition claims, and the Section 50 and 51 claim based on visual look-alikes to go forward. It dismissed the sound-alike statutory claim and the two defamation claims, all with prejudice.

How does this compare to California voice cases like Midler v. Ford? California recognized a common-law right against deliberate imitation of a famous singer’s distinctive voice in Midler v. Ford and Waits v. Frito-Lay. Tin Pan Apple shows how much turned on the governing state law in 1990, when New York’s statute did not reach voice as such. New York’s 1995 amendment adding voice narrowed that gap considerably.

Authorities and sources

Opinion, Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 826 (S.D.N.Y. May 14, 1990) (Caselaw Access Project): https://case.law/caselaw/?reporter=f-supp&volume=737&case=0826-01
Later summary judgment opinion on the originality of the “Brrr” and “Hugga-Hugga” sounds, Tin Pan Apple, Inc. v. Miller Brewing Co., No. 88 Civ. 4085 (CSH), 1994 U.S. Dist. LEXIS 2178 (S.D.N.Y. Feb. 23, 1994), reproduced by the George Washington Univ. Music Copyright Infringement Resource: https://blogs.law.gwu.edu/mcir/case/tin-pan-apple-v-miller-brewing/
New York Civil Rights Law § 50, current text (New York State Senate): https://www.nysenate.gov/legislation/laws/CVR/50
New York Civil Rights Law § 51, current text including the 1995 addition of “voice” (New York State Senate): https://www.nysenate.gov/legislation/laws/CVR/51
Comparative voice case, Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (Caselaw Access Project): https://case.law/caselaw/?reporter=f2d&volume=849&case=0460-01