Copyright: Waits v. Frito-Lay

"I get it all the time, and they offer people a whole lot of money. Unfortunately I don't want to get on the bandwagon. You know, when a guy is singing to me about toilet paper - you may need the money but, I mean, rob a 7-11! Do something with dignity and save us all the trouble of peeing on your grave. I don't want to rail at length here, but it's like a fistula for me. If you subscribe to your personal mythology, to the point where you do your own work, and then somebody puts decals over it, it no longer carries the same weight. I have been offered money and all that, and then there's the people that imitate me too. I really am against people who allow their music to be nothing more than a jingle for jeans or Bud. But I say, "Good, okay, now I know who you are." 'Cause it's always money. There have been tours endorsed, encouraged and financed by Miller, and I say, "Why don't you just get an office at Miller? Start really workin' for the guy." I just hate it... The advertisers are banking on your credibility, but the problem is it's no longer yours. Videos did a lot of that because they created pictures and that style was immediately adopted, or aborted, by advertising. They didn't even wait for it to grow up. And it's funny, but they're banking on the fact that people won't really notice. So they should be exposed. They should be fined! [bangs his fist on the table] I hate all of the people that do it! All of you guys! You're sissies! "

WAITS V. FRITO-LAY, INC., 978 F.2D 1093

In September and October 1988, some 250 American radio-stations aired a commercial to introduce a new Frito-Lay product (SalsaRio Doritos corn chips) featuring a song very similar to Waits's "Step Right Up" (performed by Waits impersonator Stephen Carter).


Waits himself apparently first heard the commercial when he was at the Los Angeles radio station KCRW to do an interview (KCRW-FM: Morning Becomes Eclectic. October 3, 1988). Since the mid- 1970's Waits had spoken out against doing commercials. As a matter of fact, the song "Step Right Up" itself was condemning business talk in the music industry and in general. One can imagine Waits was not amused when he heard Carter sing: "It's buffo, boffo, bravo, gung ho, tallyho, but never mellow / Try 'em, buy 'em, get 'em, got 'em!" Waits was outraged. He realized "immediately that whoever was going to hear this and obviously identify the voice would also identify that Tom Waits in fact had agreed to do a commercial for Doritos."(5)

cop
Frito-Lay Inc. company logo. Copyright Frito-Lay

In November 1988 Waits sued Frito-Lay Inc. and its advertising agency Tracy-Locke Inc., alleging claims of:

- False endorsement (under the Lanham (Federal trademark) Act. This act prohibits the use of false designations of origin, false descriptions, and false representations in the advertising and sale of goods and services)
- Misappropriation of his voice (under California law)

A false endorsement claim based on the unauthorized use of a celebrity's identity is a type of false association claim, for it alleges the misuse of a trademark, i.e., a symbol or device such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to confuse consumers as to the plaintiff's sponsorship or approval of the product.(5)

Waits testified that when he heard the Doritos commercial, "this corn chip sermon," he was shocked and very angry. These feelings "grew and grew over a period of a couple of days" because of his strong public opposition to doing commercials. Waits testified, "It embarrassed me. I had to call all my friends, that if they hear this thing, please be informed this is not me. I was on the phone for days. I also had people calling me saying, Gee, Tom, I heard the new Doritos ad." Added to this evidence of Waits' shock, anger, and embarrassment is the strong inference that, because of his outspoken public stance against doing commercial endorsements, the Doritos commercial humiliated Waits by making him an apparent hypocrite.(5) The jury could have inferred from the evidence that the commercial created a public impression that Waits was a hypocrite for endorsing Doritos. Moreover, it also could have inferred damage to his artistic reputation, for Waits had testified that "part of my character and personality and image that I have cultivated is that I do not endorse products."(5)

Tom Waits did not sue Frito-Lay for copyright infringement. At the time Waits didn't own the copyright (in the work of authorship) to the song "Step Right Up". This was, and is, owned by Fifth Floor Music Inc (controlled by Martin/ Herb, Evan Cohen). One might assume Frito-Lay did indeed obtain the "synch" license from Fifth Floor Music to use the song in the commercial. And as they were not using the song as recorded by Waits himself, they didn't have to worry about copyright in the musical work (owned by Elektra/ Asylum). Had Waits at that time owned the copyrights to the song, he would surely have sued for copyright infringement. Publicity rights allow a person to control the use of his name or likeness in association with the sale of a commercial product. Waits sued for "false endorsement" (the public was led to believe that Waits was singing, and this deception violated Waits' publicity rights by associating him with a commercial product he did not want to endorse) and "misappropriation of his voice" (suggesting there was as a matter of fact something recognizable and distinctive as: "his voice"). Had Frito-Lay used the music only or used a voice that sounded nothing like Waits', Waits would probably not have had a case. But Frito-Lay somehow wanted the "real thing."

Jay S. Jacobs (2000): "Waits's song "Step Right Up," on Small Change is a parody of hucksterism, couched in the same angry language Waits used when he spoke to interviewers about art peddling. The mystery product that the song's persona is hustling does everything and nothing. It'll shine your car. Get rid of embarrassing stains. Lie to your wife. Pay off your credit cards. Walk the dog and pick up the kids at school. Make you six foot five, blond, and beautiful. Do your taxes. Return your tapes to the video store. And then, when you're done with it, it'll turn into a six-pack of beer and a pizza. Who in the world could take "Step Right Up" seriously as a sales pitch? Well, Frito-Lay did. The snack-food giant actually hit on the notion that "Step Right Up" would make the perfect jingle to introduce their newest corn-chip flavor, Salsa Rio Doritos. A hot and spicy song for a hot and spicy chip. They couldn't use their old corporate spokescartoon, the Frito Bandito; he'd been forced to retire during the seventies when a Mexican group protested that he was nothing but a racist stereotype. So, since they couldn't have their Bandito, the Frito-Lay people wanted the next best thing: Tom Waits." (1)

cop
Waits's predecessor Frito Bandito: "The bandito character was created by animation legend Tex Avery
for a commercial ad campaign in the late 1960's"

The 9th Circuit Court decision documents some entertaining background information on how Frito-Lay came to this particular commercial:

"The story of Tracy-Locke's search for a lead singer for the commercial suggests that no one would do but a singer who could not only capture the feeling of "Step Right Up" but also imitate Tom Waits' voice. The initial efforts of the ad agency's creative team, using a respected professional singer with a deep bluesy voice, met with disapproval from executives at both Tracy- Locke and Frito-Lay. Tracy-Locke then auditioned a number of other singers who could sing in a gravelly style. Stephen Carter was among those who auditioned. A recording engineer who was acquainted with Carter's work had recommended him to Tracy-Locke as someone who did a good Tom Waits imitation. Carter was a professional musician from Dallas and a Tom Waits fan. Over ten years of performing Waits songs as part of his band's repertoire, he had consciously perfected an imitation of Waits' voice. When Carter auditioned, members of the Tracy-Locke creative team "did a double take" over Carter's near-perfect imitation of Waits, and remarked to him how much he sounded like Waits. In fact, the commercial's musical director warned Carter that he probably wouldn't get the job because he sounded too much like Waits, which could pose legal problems. Carter, however, did get the job. At the recording session for the commercial David Brenner, Tracy-Locke's executive producer, became concerned about the legal implications of Carter's skill in imitating Waits, and attempted to get Carter to "back off" his Waits imitation. Neither the client nor the members of the creative team, however, liked the result. After the session, Carter remarked to Brenner that Waits would be unhappy with the commercial because of his publicly avowed policy against doing commercial endorsements and his disapproval of artists who did. Brenner acknowledged he was aware of this, telling Carter that he had previously approached Waits to do a Diet Coke commercial and "you never heard anybody say no so fast in your life." Brenner conveyed to Robert Grossman, Tracy-Locke's managing vice president and the executive on the Frito-Lay account, his concerns that the commercial was too close to Waits' voice. As a precaution, Brenner made an alternate version of the commercial with another singer. On the day the commercial was due for release to radio stations across the country, Grossman had a ten-minute long-distance telephone consultation with Tracy-Locke's attorney, asking him whether there would be legal problems with a commercial that sought to capture the same feeling as Waits' music. The attorney noted that there was a "high profile" risk of a lawsuit in view of recent case law recognizing the protectability of a distinctive voice. Based on what Grossman had told him, however, the attorney did not think such a suit would have merit, because a singer's style of music is not protected. Grossman then presented both the Carter tape and the alternate version to Frito-Lay, noting the legal risks involved in the Carter version. He recommended the Carter version, however, and noted that Tracy-Locke would indemnify Frito-Lay in the event of a lawsuit. Frito-Lay chose the Carter version."(5)

The case was tried before a jury in April and May 1990. Waits did not include Stephen Carter in the suit because Carter had only been paid scale for his participation. In fact, Carter became one of Waits's strongest witnesses. He felt badly about his part in the fiasco and wanted to redeem himself.(1)

Tom Waits (1992): "They imitated my voice. The guy who did the voice was like a fan of mine who does an impersonation of me and lives in Texas; plays in a band... He felt so bad that he did this. He knew when he did it he was doing a bad thing. But he vindicated himself by helping us win the case."(3)

Tom Waits (1999): "This guy from Texas got paid 300 bucks to do me. That was his specialty, anyway, that he does this perfect impersonation of me. And they did this whole thing around "Step Right Up," and every now and then they would say "Fritos" or whatever. And afterward, the guy felt so bad, he came out as our star witness."(2)

After (a four week) trial before Judge James Ideman in the United States District Court (Central District of California)(4), the jury returned a $2.6 million verdict in Waits' favor comprised of:

- $375,000 in actual compensatory damages, for infringement of the right of publicity/ false endorsement (including $100,000 for the fair market value of Waits' services under the Lanham Act claim. $200,000 for injury to his peace, happiness, and feelings. $75,000 for injury to his goodwill, professional standing, and future publicity value);
- $2,000,000 in punitive damages for voice misappropriation ($1.5 million against Tracy-Locke and $500,000 against Frito- Lay);
- $100,000 damages for violation of the Lanham Act
- $125,000 Attorney fees

Tom Waits (1992): "I haven't seen a dime. These things go on forever and forever. Never get involved in litigation. Your hair will fall out, your bones will turn to sand. And it will still be going on. "It was like throwing a rock through a window-but you wait for five years to hear the sound. Litigation is like picking up a glass of water with a prosthetic hand. It's very frustrating, and you'll never get it to your lips. But when you have to, you have to. If somebody burned your house down, you'd have to do something about it."(3)

Defendants Frito-Lay Inc. and Tracy-Locke Inc. appealed on December 3, 1991.

In challenging the judgment on Waits' false endorsement claim(5)
- that Waits lacks standing to sue for false endorsement. Asserting that because he is not in competition with the defendants, he cannot sue under the Lanham Act.
- that Waits did not establish his claim at trial, and that damages and attorney's fees were improperly awarded. Because it is duplicative

In challenging the judgment on Waits' voice misappropriation claim(5)
- that the decision, recognizing voice misappropriation as a California tort, is no longer good law.
- that the district court erred in instructing the jury on the elements of voice misappropriation.

Discussing the right of publicity, the Ninth Circuit affirmed the jury's verdict that the defendants had committed the "Midler tort" by misappropriating Tom Waits' voice for commercial purposes. The Midler tort is a species of violation of the right of publicity that protects against the unauthorized imitation of a celibrity's voice which is distinctive and widely known, for commercial purposes.(6) On August 5, 1992 the 9th Circuit Court vacated the award of damages under the Lanham Act as duplicative of the damages awarded for infringement of the right of publicity, but affirmed all other aspects of the verdict and judgment. Waits had won...

Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992):
"Waits' voice misappropriation claim and his Lanham Act claim are legally sufficient. The court did not err in instructing the jury on elements of voice misappropriation. The jury's verdict on each claim is supported by substantial evidence, as are its damage awards. Its award of damages on Waits' Lanham Act claim, however, is duplicative of damages awarded for voice misappropriation; accordingly we vacate it. Finally, the court did not abuse its discretion in awarding attorneys' fees under the Lanham Act. Waits is awarded his costs on appeal."(5)

Tom Waits (2002): "... Yeah, we nailed 'em. It was David and Goliath... They were lame. The problem with a big company like that is that its hands don't talk to its feet, and nobody knows what anyone else is doing. In this case, it was an ad agency that hired a fan of mine actually, in Texas. And they paid him like 60 bucks to come in and do an impersonation of me. Then, a little later, I was doing a radio interview, and the guy says we have to break for a commercial, so he punches that ad in... I said that guy sounds just like me. I mean, there's a lot of things I can't remember, but I think I would have remembered doing that. I had an excellent attorney that went to bat for us."(7)

Tom Waits (1999): "Two and a half million bucks. Spent it all on candy. My mom told me I was foolish. I've always been foolish when it comes to money...."(8)

Perception of Doors(9)
(The Nation: September 19, 2002)

Woodland Hills, Calif.

Thank you for your eloquent "rant" by John Densmore of The Doors on the subject of artists allowing their songs to be used in commercials ["Riders on the Storm," July 8]. I spoke out whenever possible on the topic even before the Frito Lay case (Waits v. Frito Lay), where they used a sound-alike version of my song "Step Right Up" so convincingly that I thought it was me. Ultimately, after much trial and tribulation, we prevailed and the court determined that my voice is my property.

Songs carry emotional information and some transport us back to a poignant time, place or event in our lives. It's no wonder a corporation would want to hitch a ride on the spell these songs cast and encourage you to buy soft drinks, underwear or automobiles while you're in the trance. Artists who take money for ads poison and pervert their songs. It reduces them to the level of a jingle, a word that describes the sound of change in your pocket, which is what your songs become. Remember, when you sell your songs for commercials, you are selling your audience as well.

When I was a kid, if I saw an artist I admired doing a commercial, I'd think, "Too bad, he must really need the money." But now it's so pervasive. It's a virus. Artists are lining up to do ads. The money and exposure are too tantalizing for most artists to decline. Corporations are hoping to hijack a culture's memories for their product. They want an artist's audience, credibility, good will and all the energy the songs have gathered as well as given over the years. They suck the life and meaning from the songs and impregnate them with promises of a better life with their product.

Eventually, artists will be going onstage like race-car drivers covered in hundreds of logos. John, stay pure. Your credibility, your integrity and your honor are things no company should be able to buy.

TOM WAITS

Notes:

(1) Source: "Wild Years - The Music And Myth Of Tom Waits" Jay S. Jacobs. ECW Press, 2000

(2) Source: "The Man Who Howled Wolf ". Magnet: Jonathan Valania. June/July 1999

(3) Source: "The Lie In Waits", VOX magazine (USA), by Peter Silverton. October, 1992

(4) Source: http://www.findlaw.com "Practitioner's Guide to California Right of Publicity Law" by Amy D. Hogue. Copyright © 1994- FindLaw. Read: full text

(5) Source: U.S. 9th Circuit Court of Appeals WAITS v. FRITO-LAY, INC., 978 F.2d 1093 (9th Cir. 1992), Caselaw.findlaw.com, Solomon L. Wisenberg/ Mark Roesler

(6) Texas Intellectual Property Law Journal. Vol. 11 No. 11. March 14 - 20, 2002. "Recent Developments in the Right of Publicity" by Jeffrey W. Tayon © 1994.

(7) Source: "Tom Waits" Big Brother Skateboarding magazine (USA), by Russell Bongard. July, 2002

(8) Source: "Holding On: A Conversation With Tom Waits" Newsweek, by Karin Schoemer. Jerry's/ Monte Rio. April 23, 1999

(9) Source: "Perception of the Doors". , Posted September 19, 2002. The Nation original John Densmore article