## Facts

- Tom Waits is a well-known singer and actor with a distinctive raspy singing voice and a long-standing public policy of refusing commercial endorsements.
- Frito-Lay, with its advertising agency Tracy-Locke, produced a radio commercial to promote SalsaRio Doritos.
- The agency modeled the jingle on Waits’s song “Step Right Up,” imitating its rhyme and wordplay, and hired a performer experienced in covering Waits’s songs to record the spot.
- The commercial did not use Waits’s name, but the vocal performance closely imitated Waits’s voice and style.
- The advertisement aired on more than 250 radio stations nationwide.
- At trial, Waits presented recordings comparing his voice to the commercial, and witnesses testified they believed Waits was the singer in the ad.

## Issues

1. Whether California law recognizes a claim for misappropriation of a distinctive voice when a sound-alike imitates a celebrity in a commercial, and whether the jury was properly instructed on that claim.
2. Whether a non-competing celebrity has standing under Lanham Act § 43(a) to sue for false endorsement, and whether a voice imitation (without using the celebrity’s name) can create likely consumer confusion about endorsement.
3. Whether the damages awarded—including categories of compensatory damages, punitive damages, and Lanham Act damages and fees—were legally available, supported by the evidence, or impermissibly duplicative.

## Decision

- The Ninth Circuit affirmed liability for voice misappropriation under California law, reaffirming that a distinctive, widely recognized voice is a protectable aspect of identity and that deliberate imitation in advertising can be actionable.
- The court affirmed Lanham Act § 43(a) liability for false endorsement, holding that a celebrity need not be a direct competitor to have standing and that a sound-alike may cause endorsement confusion.
- The court vacated the $100,000 Lanham Act damages award as duplicative of the state-law recovery.
- The court otherwise affirmed the judgment, leaving intact the compensatory and punitive damages on the state claim and the award of attorney’s fees.

## Legal Principles

- Under California law, a celebrity’s distinctive and widely recognized voice can be a protected component of identity; intentional imitation in a commercial may constitute misappropriation even without using the celebrity’s name and even without copying an actual recording.
- Evidence of deliberate targeting (e.g., selecting a sound-alike, modeling the jingle on the celebrity’s work) and listener confusion may support a finding that defendants appropriated identity rather than merely employing a generic “style.”
- Compensatory damages for voice misappropriation may include harm to reputation and emotional distress where the unauthorized ad plausibly attributes conduct to the plaintiff that conflicts with the plaintiff’s publicly known stance.
- Lanham Act § 43(a) covers false endorsement: uses in advertising likely to cause confusion about a person’s sponsorship or approval, including confusion created by imitation of a distinctive voice.
- Direct product-market competition is not required for standing in a false-endorsement claim when the plaintiff alleges commercial injury to identity and goodwill.
- A plaintiff may not obtain duplicative monetary recovery for the same injury under overlapping state and federal theories; duplicative damages must be vacated.

## Conclusion

The Ninth Circuit held that intentionally using a sound-alike to imitate a celebrity’s distinctive voice in a commercial can support both California voice-misappropriation liability and Lanham Act false-endorsement liability, but it vacated the Lanham Act damages award because it duplicated the state-law recovery while otherwise affirming the judgment.


Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992)