## Facts

- Paul Smith, an actor, contracted with an Italian film company to appear in a motion picture under terms allegedly including star billing in screen credits and advertising, and requiring the producer to include that obligation in later distribution contracts.
- The producer licensed Edward L. Montoro and Film Ventures International, Inc. to distribute the film in the United States under the title “Convoy Buddies.”
- Smith alleged the distributors removed his name and substituted another actor’s name (“Bob Spencer”) in both the film credits and advertising materials.
- Smith alleged resulting harm to his professional reputation and the loss of specific employment opportunities.
- Smith sued for breach of contract, false light publicity, violation of § 43(a) of the Lanham Act, and violation of California’s statutory right of publicity; federal jurisdiction rested solely on the Lanham Act claim, with state claims asserted under pendent jurisdiction.

## Issues

1. Whether substituting another actor’s name for the plaintiff’s in film credits and advertising states a claim under § 43(a) of the Lanham Act as a false designation/false representation, including “reverse passing off.”
2. Whether an individual actor alleging reputational and economic injury has standing to sue under § 43(a) even if not a direct competitor of the defendants.
3. Whether dismissal of pendent state claims for lack of jurisdiction was proper after dismissal of the § 43(a) claim.

## Decision

- The Ninth Circuit reversed the Rule 12(b)(6) dismissal of the § 43(a) claim and held the complaint stated a claim for relief.
- The court held the alleged removal of Smith’s name and substitution of another actor’s name in credits and advertising could constitute a false designation/false representation actionable as reverse passing off.
- The court held Smith had standing under § 43(a) based on alleged damage to reputation and lost employment opportunities.
- Because a viable federal claim existed, the court reversed the dismissal of the pendent state claims and remanded for further proceedings.

## Legal Principles

- Section 43(a) is construed as broad remedial legislation reaching more than classic trademark misuse, including certain forms of unfair competition based on false designations and false descriptions in commerce.
- “Reverse passing off” occurs when a defendant markets another’s goods or services as the defendant’s own; misattribution of a performance through altered credits and advertising can fall within § 43(a)’s prohibition on false designations or representations.
- Standing under § 43(a) extends to “any person who believes that he is or is likely to be damaged” by the challenged misrepresentation and is not limited to direct competitors.
- When a federal claim survives, pendent state claims should not be dismissed solely on the theory that jurisdiction disappears with the federal claim.

## Conclusion

The Ninth Circuit held that an actor plausibly states a Lanham Act § 43(a) claim by alleging distributors replaced his name with another actor’s name in film credits and advertising, recognized standing based on reputational and economic harm, and reinstated associated state claims for further proceedings on remand.


Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981)