In the Courts: Can Distinctiveness of Musical Indentity be Protected under U.S. Law?

• Author: Barry Werbin

Distinctive musical identity arises either when a famous recording artist becomes uniquely identified by the public with a particular song or melody, or when the artist's voice is so distinctive as to develop trademark significance in his or her own vocal sound. The extent to which such musical identity is protectable under trademark law is explored in this article by Barry Werbin of Herrick, Feinstein LLP, New York, a member of the INTA Bulletin Features-Policy & Practice Subcommittee. The article first appeared in the INTA Bulletin of February 1, 2007 (Vol. 62 No. 3) and is reprinted in revised form with permission of the International Trademark Association.

The distinct, sultry voice of Astrud Oliveira, known professionally as Astrud Gilberto, had long been identified with The Girl from Ipanema, the classic 1964 recording of the famous Antonio Carlos Jobim song. Gilberto’s vocal performance won her a Grammy award. But that fame was not enough to win a lawsuit she brought in 2001 for infringement of alleged trademark rights in her vocal performance, when the song was used in a Frito-Lay television commercial. Although Gilberto owned no copyrights in the underlying song or performance, she claimed she had become identified by the public with the recording and that she had acquired trademark rights in the song, requiring the advertiser to obtain her consent. Without such consent, she argued, use of the recording capitalized on her reputation and was likely to cause confusion as to her affiliation with, or endorsement of, Frito-Lay.

A song as signifier of the singer?

The U.S. Court of Appeals for the Second Circuit (New York) upheld a dismissal of Gilberto’s trademark claim based on a false endorsement, on the grounds that a fact-finder "could not reasonably find an implied endorsement." The district court had, however, also issued a broader ruling that "there is no federal [trademark] protection for a musical work," because such works are otherwise protected by copyright law. The Court of Appeals rejected this broad proposition, and held instead that musical compositions could indeed be eligible for trademark protection as "a symbol or device to identify a person’s goods or services," just as graphic designs can serve as trademarks and still be protected by copyright. Nevertheless, the Court rejected Gilberto’s remaining trademark and dilution...