## Facts

- Astrud Oliveira (professionally known as Astrud Gilberto) recorded “The Girl from Ipanema” in 1964; the recording became widely known.
- Frito-Lay and related advertising entities ran a 30-second television commercial for “Baked Lays” using the 1964 recording as background music while models appeared poolside.
- Gilberto did not consent to the commercial’s use of the recording.
- Gilberto alleged the commercial exploited her performance and vocal identity and implied her endorsement of the product.
- She asserted a federal claim under Lanham Act § 43(a) for false endorsement/trademark-type infringement and New York claims including violation of the right of publicity (N.Y. Civ. Rights Law § 51), unfair competition, and unjust enrichment.
- The district court dismissed the Lanham Act claim for lack of implied endorsement and dismissed the New York claims on the theory that publication of the recording extinguished her common-law rights in it.
- Gilberto appealed the dismissal of the Lanham Act claim and the New York right-of-publicity claim.

## Issues

1. Whether a famous sound recording/performance can function as a protectable source identifier under Lanham Act § 43(a) such that its use in a commercial states a false-endorsement claim.
2. Whether the complaint could be dismissed at the pleading stage on the ground that publication of the recording eliminated Gilberto’s New York-law rights supporting her publicity-related and restitutionary claims.
3. Whether, after dismissal of the federal claim, the remaining New York-law claims should be left for state court resolution.

## Decision

- The Second Circuit affirmed dismissal of the Lanham Act § 43(a) claim.
- The court held the complaint did not state a cognizable Lanham Act theory because the alleged “mark” was the performance/recording itself, which the court declined to treat as a trademark-like interest under § 43(a).
- The court vacated dismissal of the New York-law claims and remanded with instructions to dismiss those claims without prejudice to refiling in state court.
- The court reasoned the district court improperly assumed facts against the plaintiff in concluding she had relinquished all relevant rights upon publication of the recording.

## Legal Principles

- Lanham Act § 43(a) does not automatically provide trademark-type protection for a sound recording or performance merely because it is famous or strongly associated with a performer.
- A false-endorsement theory under § 43(a) cannot proceed where the asserted basis is effectively a claimed property right in the performance/recording “as such,” absent a recognized trademark-like interest.
- Courts may decline to extend § 43(a) in ways that would impose unexpected liabilities on customary commercial practices involving licensed recordings.
- When the federal claim supplying jurisdiction is dismissed early, fact-dependent and unsettled state-law publicity and related claims may be dismissed without prejudice so they can be litigated in state court.
- On a motion to dismiss, a court should not resolve contested factual premises against the plaintiff, such as whether rights were surrendered or placed into the public domain.

## Conclusion

The Second Circuit held that using a famous recording in an advertisement did not, without more, state a Lanham Act § 43(a) false-endorsement claim because the recording/performance was not treated as a protectable trademark-like identifier; it also required that the New York publicity and related claims be dismissed without prejudice so state courts could address them without factual assumptions against the plaintiff.


Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001)