Opposition Brief — Young & Rubicam, Inc. v. Midler

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(2 Supreme Court, U.S |

A) StL

No. 91-1002

tpw—o41b32

IN THE

Supreme Court of the Anit

OCTOBER TERM, 1991

YOUNG & RUBICAM, INC

Petitioner,

vs.

BETTE MIDLER,

Respondent.

orgs OF THE Cinsé |

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

RESPONDENT’S BRIEF IN OPPOSITION

PETER LAIRD, ESQ.

Counsel of Record

RALPH C. LOEB, ESQ.

ARROW EDELSTEIN & LAIRD

9220 Sunset Boulevard

Suite 302

| oe

Los Angeles, California 90069

(310) 274-6184

Attorneys for Respondent

BETTE MIDLER

Lawyers Brief Service * Appellate Brief Printers * (213) 383-4457 * (714) 720-1510

QUESTIONS PRESENTED

1. Whether the California common law

tort defined by the Ninth Circuit as

existing when the distinctive voice of

a professional singer who is widely

known is deliberately imitated in order

to sell a product constitutes one of

the rights expressly preserved from

federal preemption by §301(b) of the

arises from rights that are not equiva-

lent to any of the exclusive rights

within the general scope of copyright,

and (b) does not arise from a work of

authorship that is fixed in a tangible

medium of expression, and does not come

within the subject matter of copyright?

2. Whether Young & - Rubican, Inc.

failed to preserve the _ preemption

question raised in its petition for

writ of certiorari in the Court of

Appeals?

TABLE OF CONTENTS

Page

Table of Authorities ....-... iv

STATEMENT OF JURISDICTION. .... 2

CPEMEGNS WEIAU . ws tee e anes 2

STATEMENT OF THE CASE. ..... . 2

REASONS FOR DENYING WRIT. ..... 13

POINT I

THE PREEMPTION QUESTION RAISED BY YOUNG

& RUBICAM, INC. WITH RESPECT TO MIDLER

I DOES NOT CONSTITUTE AN IMPORTANT

ISSUE OF FEDERAL COPYRIGHT LAW WORTHY

OF SUPREME COURT REVIEW ...... 16

POINT II

THE NINTH CIRCUIT’S OPINION IN MIDLER I

DOES NOT CONFLICT WITH THE OPINION OF

ANY OTHER CIRCUITS ON THE ISSUE OF PRE-

EMPTIGN 2. «see es enue veeee a8

POINT III

THE PREEMPTION QUESTION POSED BY YOUNG

& RUBICAM, INC. SHOULD NOT BE REVIEWED

BECAUSE YOUNG & RUBICAM, INC. DID NOT

PRESERVE THE QUESTION IN THE COURT OF

APPBAIS . ~- steven veoevesnecvus 6

POINT IV

THE MIDLER I DECISION DID NOT

IMPOSE LIABILITY ON YOUNG & RUBICAM,

INC. FOR CONDUCT PERMITTED BY THE

COPTRIGHs ACT . ws we se eee tees ae

iii

- POINT V

THE TORT RECOGNIZED IN MIDLER I IS NOT

PREEMPTED BY §301 OF THE COPYRIGHT ACT

DOES NOT CONFLICT WITH THE HOLDING IN

BONITO BOATS AND DOES NOT INTERFERE

WITH THE REGULATORY SCHEME ESTABLISHED

BY CONGRESS .... ++ +++ -e« « « 32

oo OS Co a ee a a

TABLE OF AUTHORITIES

CASES PAGE

Baltimore Orioles v. Major

League Baseball Players,

805 F.2d 663 (7th Cir. 1986)

cert. denied, 48 U.S.

S4R (APSF ce 0 6 0 ec ow te 84g 88, 29,824,393

Bonito Boats, Inc. v.

Thunder Craft Boats, Inc.,

re a a.) ) iS. ' ee oT

Compco Corp. v.

Day-Brite Lighting, Inc.,

376 U.S. 234 -(1964) . « «© © ec Ja, 26

Diamond v. Chakrabarty,

47 U.S. 303, 309 (1960) . « « « « « 35

Heckler v. Campbell,

462i U.B. 456 (2903) «© «© © we ewe 26

Kosak v. U.S.,

465 U.S. G46, (3964)... <« s+ se © « 2&6

Lahr v. Adell Chemical Co.,

300 F.2d 256 (lst Cir. 1962). . . 13,24

Laing v. United States,

San Gils Bee Ce «5% ew ee RF

Layne & Co. v. Western Well Works,

1 ey . i. | er |

Midler v. Ford Motor Co.,

849 F.2d 460, (9th Cir. 1988) .. 5,35

Motschenbacher v. R.J.

Reynolds Tobacco Co.,

498 F.2d 821 (9th Cir. 1974) .... 6

Patterson v. Lamb,

329 U.S. 539 (1947). ... .

Roberts v. Lodge,

45 U.S. 613 (1982) .... .-

Rothensies v.

Electric Battery Co.,

329 U.S. 296 (1946). ... .

Sears, Roebuck & Co. v.

Stiffel Co.,

376 U.S. 225 (1964). ....

Sinatra v. Goodyear Tire &

Rubber Co.,

435 F.2d 711 (9th Cir. 1970)

denied, 402 U.S. 906 (1971).

Tin Pan Apple, Inc. v.

Miller Brewing Co., Inc.,

cert.

. vet,

737 F.Supp. 826 (S.D.N.Y. 1990)...

Wisconsin Electric Co. v.

Dumove Co.,

282 U.S. 813 (1930). ....

Zacchini v. Scripps-Howard

Broadcasting Co.,

Gea Ost OEe CEeTTh« 6 ee

STATUTES

California Civil Code

Sees. 2086s ss se «+ eS

a7 U.S.C. $202 « « 8 ©

17 U.S.C. §102 . « « «

17 U.S.C. §106 .... .

17 U.S.C. §114 - + + > 13,14,30,31

17 U.S.C. §201 o @ @ e es

29 U.0.6c ‘G3es = 4 2

NO. 91-1002

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1991

YOUNG & RUBICAM, INC.,

Petitioner,

Vv.

BETTE MIDLER,

Respondent.

RESPONDENT’S BRIEF IN OPPOSITION

Bette Midler respectfully prays

that Young & Rubicam, Inc.’s writ of

certiorari to review the opinion of the

United States Court of Appeals for the

Ninth Circuit entered in this action on

September 20, 1991 be denied.

ies

STATEMENT OF JURISDICTION

On December 23, 1991 Bette Midler’s

attorneys received a copy of Young &

Rubicam, Inc.’s petition for writ of

certiorari from the Ninth Circuit Court

of Appeals’ opinion in this case which

was filed on September 20, 1991.

OPINIONS BELOW

The five opinions below are set

forth in Young & Rubicam, Inc.’s peti-

tion for writ of certiorari.

STATEMENT OF THE CASE

The statement of the case in Young

& Rubicam, Inc.’s petition contains

certain omissions and inaccuracies with

respect to facts which are material to

the question that this Court is being

requested to review. Respondent Bette

Midler submits the following statement

of the case in an effort to correct

those omissions and inaccuracies.

This action arose out of the tele-

vision broadcast of commercial adver-

tisements for Lincoln-Mercury auto-

mobiles in 1986. Young & Rubicam, Inc.

designed the advertisements to convey

the impression that Bette Midler was

Singing for their commercial. (App.

All). Young & Rubicam, Inc. accom-

plished this deception by utilizing Ula

Hedwig, a former background singer for

Bette Midler to sound as much like

Bette Midler as possible while she was

making the recording which was used for

the television advertisement. (App.

AlO). a

Midler commenced this action by

filing a complaint on April 29, 1986.

(App. A56). A first amended complaint

was filed on May 27, 1986. Midler’s

first amended complaint alleged the

following four substantive causes of

action: (1) unfair competition, (2)

violation of Midler’s right of privacy,

(3) violation of Midler’s right of pub-

licity and (4) violation of California

Civil Code §3344. (App. A56.) Midler

sought compensatory damages, punitive

damages, injunctive relief and an ac-

counting of profits.

In its petition, Young & Rubicam,

Inc. correctly states that its cross-

motion for summary judgment on Midler’s

first amended complaint was granted by

the District Court on July 13, 1987.

(Petition at 13). However, Young &

Rubicam, Inc. has failed to inform the

Court that the District Court’s de-

cision was entirely based on its find-

ing "that Plaintiff has no protectable

rights under the laws of California."

(App. A600.) The District Court speci-

fically indicated that its decision to

grant Young & Rubicam’s Inc.’s motion

for summary judgment was not based on

the determination that the rights that

Midler sought to assert were preempted

by federal copyright laws when it

stated "the Court, however, need not,

and does not decide this issue." (App.

A60).

On June 22, 1988, the Ninth Circuit

reversed the District Court order

granting Young & Rubicam, Inc.’s motion

for summary judgment. Midler v. Ford

Motor Co., 849 F.2d 460, (9th Cir.

1988) (App. A41l.) ("Midler I").

In its petition, Young & Rubican,

Inc. incorrectly states that the Court

in Midler I rejected Midler’s "claims

under Cal. Civil Code §3344 and the

common law of unfair competition and

invasion of privacy..." (Petition at

14). The truth is that the Midler I

court only rejected Midler’s claims

under Civil Code §3344 and for unfair

competition, not her claim for invasion

of privacy. (App. A46.) The Midler I

court cited the case of Motschenbacher

v. R.J. Reynolds Tobacco Co., 498 F.2d

821 (9th Cir. 1974) for the proposition

that "California will recognize an in-

jury from ‘an appropriation of the at-

tributes of one’s identity’" (App.

A47). The Motschenbacher decision in

turn relies on both common law causes

of action for invasion of right of pri-

vacy and publicity under California

law. :

Young & Rubicam, Inc. makes a fur-

ther misstatement of fact when it cites

in its statement of the case that its

conduct with respect to the imitation

of Midler’s voice was consistent with

the 1970 Ninth Circuit Court of Appeals

decision in Sinatra v. Goodyear Tire &

Rubber Co., 435 F.2d 711 (9th Cir.

1970), cert. denied, 402 U.S. 906

(1971). The truth is that the the con-

duct which Midler alleged Young &

Rubicam, Inc. engaged in was not con-

sistent with the Sinatra case. As

stated in Midler I:

If Midler were claiming a secondary

meaning to "Do You Want To Dance"

or seeking to prevent the defen-

dants from using that song, she

would fail like Sinatra. But that

is not this case. Midler does not

seek damages for Ford’s use of "Do

You Want To Dance," and thus her

claim is not preempted by federal

At the time the Midler I court re-

manded the case to the District Court

in June 1988, Young & Rubicam, Inc.’s

answer to the first amended complaint

contained an affirmative defense of

federal copyright preemption. [¢.A.

SER 5) Young & Rubicam, Inc. failed to

disclose in its statement of the case

that, subsequent to the remand, the

District Court’s February 8, 1989 order

granting Plaintiff’s motion for partial

summary judgment included a ruling that

Midler was entitled to summary judgment

as to Young & Rubicam, Inc.’s affirma-

tive defense of preemption by copyright

law. (App. A32). In fact, the District

Court granted summary judgment as to

the federal copyright law preemption

defense because Young & Rubicam, Inc.

had not presented any evidence whatso-

ever to support the affirmative defense

in opposition to Midler’s motion for

partial summary judgment.

As a result of the District Court’s

February 8, 1989 ruling on Midler’s

motion for partial summary judgment,

Young & Rubicam, Inc.’s federal copy-

right _— preemption defense was not at

issue at the jury trial in this action

which commenced on October 24, 1989.

Indeed, the following jury instruction

was given at the trial in this case:

ers

"There were no issues of copyright law,

as such, for you to decide in this

case." (C.A. App. SER at 120.) The

District Court charged the jury with

determining the following facts only:

(1) Whether Young & Rubicam, Inc.

deliberately imitated Bette

Midler’s voice in producing Ford

Motor Company’s Sable automobile

television commercial, and, if the

answer to the first question is

"Yes", then,

(2) The fair market value of Bette

Midler’s voice. (C.A. App. SER at

118.)

In its second appeal, Young &

Rubicam, Inc. did not raise any issue

concerning the propriety of the

District Court’s February 8, 1989 order

granting Midler partial summary judg-

ment with respect to Young & Rubicam,

Inc.’s affirmative defense of federal

In its petition, Young & Rubican,

Inc. makes the following misrepresenta-

tion concerning the record of the trial

in this case: "The evidence was largely

uncontradicted and demonstrated that

the petitioner intended to imitate the

1972 sound recording of ’Do You Want To

Dance. /’" (Petition at 16). This

statement is belied by the verdict in

this case which reflects the jury find-

ing that Young & Rubicam, Inc. had in-

deed intended to imitate Bette Midler’s

voice in its television commercial.

Young & Rubicam, Inc.’s misrepre-

sentation of the record concerning the

evidence of its intent to imitate

Midler’s voice is also disclosed by the

Ninth Circuit’s decision on Young &

Rubicam, Inc.’s cross-appeal issued on

September 20, 1991. In response to

Young & Rubicam, Inc.’s contention that

the District Court had improperly de-

nied its motion for directed verdict

the Ninth Circuit held that "sufficient

evidence was presented to support the

jury’s finding that Young & Rubicam,

Inc. deliberately imitated Midler’s

voice." (App. A9.) Among other evi-

dence, the Ninth Circuit cited the

following as particularly probative of

Young & Rubicam, Inc.’s intent to imi-

tate Midler’s voice:

For instance, Hedwig testified that

she was contacted by a Young &

Rubicam employee "about sending an

audio cassette of myself sounding

like Bette Midler as a sort of

audition tape for this upcoming

jingle." .. . .She also testified

that she was instructed to sound as

much like Midler as possible while

making the recording. (App. Al10)-~-

In summary, Young & Rubicam, Inc.

has distorted the record of this case

in its petition in order to support its

contention that a serious issue of

federal copyright law is involved in

this action. Young & Rubicam, Inc. has

tried to accomplish its purpose first

by misrepresenting to the Court the

evidentiary finding made below that

Young & Rubicam, Inc. had deliberately

intended to imitate Midler’s voice, as

opposed to the sound recording of Bette

Midler’s version of "Do You Wanna

Dance", and second, by failing to dis-

close to the Court that the federal

in its answer to the first amended com-

plaint in this case was disposed of by

the District Court’s February 8, 1989

order of partial summary judgment and

that this order was not challenged in

their subsequent appeal to the Ninth

Circuit. A true reading of the record

in this case reveals that there is no

basis in the record for this Court to

address the issue of federal copyright

preemption presented by Young &

Rubicam, Inc.’s petition for writ of

certiorari.

REASONS FOR DENYING THE WRIT

The Ninth Circuit’s holding in

Midler I is narrowly drawn to address

the unusual factual situation before it

and it will effect very few persons

other than the parties involved. More

than three years after the Midler I

decision was issued, there are cur-

rently no cases pending anywhere in the

United States which raise the alleged

conflict between the right to imitiate

sounds recordings provided in §114 (b)

in the Copyright Act and state common

law rights protecting appropriation of

voice which Young & Rubicam, Inc. urges

this Court to review.

The Midler I decision is not in

conflict with the decision of any other

court and is in fact consistent with

the First Circuit’s decision in Lahr v.

Adell Chemical Co., 300 F.2d 256 (1st

Cir. 1962) and the Ninth Circuit’s own

opinion in Sinatra v. Goodyear Tire &

Rubber Company, 435 F.2d 711 (9th Cir.

1970) cert. denied 402 U.S. 906

(1971). Moreover, The Midler I de-

cision is consistent with the policy

reflected in §301(b) of the Copyright

Act and affirmed by this Court in

Zacchini v. Scripps-Howard Broadcasting

Co., 433 U.S. 562 (1977) which is to

encourage the creativity of those who

use their talents to attain notoriety

by protecting aspects of their persona.

The state common law which was af-

firmed by the Court in Midler I does

not conflict with any of the rights

granted by the Copyright Act. Young &

Rubicam, Inc.’s argument that Midler I

imposes liability for conduct permitted

by §114(b) of the Copyright is based on

its misinterpretation of that provis-

ion. In actuality, §114(b) of the

facts of this case because it is con-

cerned with imitation of a "sound re-

cording" by a person who is making

"another sound recording" not an

"audio-visual work" such as Young &

Rubicam, Inc. ’s Ford television

commercial.

ARGUMENT

POINT I

THE PREEMPTION QUESTION RAISED BY

YOUNG & RUBICAM, INC. WITH RESPECT

TO MIDLER I DOES NOT CONSTITUTE

AN IMPORTANT ISSUE OF FEDERAL

SUPREME COURT REVIEW

Young & Rubicam, Inc. has totally

failed to show why the Midler I de-

cision is of sufficient importance to

proper statutory construction of the

Court review.

The importance of a decision in-

volving statutory construction or ap-

plication can be shown by demonstrating

that the issue is novel or troublesome

and involved in numerous cases pending

in lower courts, thereby making desira-

ble an early and definitive ruling by

the Supreme Court. Laing v. United

States, 423 U.S. 161, 167 (1976).

(Seventy pending cases in federal

courts). The importance of a decision

involving construction of a federal

statute may grow out of the fact that

many individuals are involved or are

effected by the decision below.

Patterson v. Lamb, 329 U.S. 539 (1947).

The importance of a decision construing

a federal statute may also be estab-

lished by showing that the decision

will seriously effect administration of

the law. Rothensies v. Electric

Battery Co., 329 U.S. 296 (1946).

None of the above criteria of im-

portance are present in this case. Al-

though Midler I was decided in June

1988, there is currently not a single

case pending anywhere in the United

States which turns on whether a profe-

ssional singer’s distinctive voice can

be imitated in a television commercial.

Furthermore, even under its’ broadest

reading, very few persons are effected

by the Midler I decision. The Midler I

Court was careful to limit its holding

to the parties and factual situation

before it:

We need not and do not go so far as

to hold that every imitation of a

voice to advertise merchandise is

actionable. We hold only that when

a distinctive voice of a profes-

Sional singer is widely known and

is deliberately imitated in order

to sell a product, the sellers have

appropriated what is not theirs and

have committed a tort in

California. (App. A48)

In light of the narrow holding in

Midler I, the following claim made by

Young & Rubicam, Inc. in the conclusion

of its petition concerning its broad

application is simply spurious:

Every artist who has performed a

song which she has also recorded

could, under the concept of "fixed"

expressed in Midler I, assert

state-created rights against those

who subsequently imitate the song

Simply by claiming that she is as-

serting rights in the sound of her

voice and not in the sound record-

ing containing her performance of

the song. (App. A50)

Young & Rubicam, Inc.’s claim is

false for several reasons. Midler I

does not give "every artist" standing

to make a claim for misappropriation of

their voice, only those that are (1)

professional singers, (2) with distinc-

tive voices and (3) are widely known.

Furthermore, Midler I does not allow

artists to "assert state created rights

against those who subsequently imitate

the song" that the artist has previous-

ly recorded. Rather, it only subjects

those to liability who deliberately

imitate a singer’s voice in order to

sell a product.

Because of the way the Midler I

Court limited its holding, the rights

it recognized only affect those in the

advertising business who try to deceive

purchasers about the association of

well known singers with their products.

POINT II

THE NINTH CIRCUIT’S OPINION IN

MIDLER I DOES NOT CONFLICT WITH THE

OPINION OF ANY OTHER CIRCUITS ON THE

ISSUE OF PREEMPTION

A conflict of authority relied upon

as a reason to grant a writ of certio-

rari normally must be direct, with a

case in another appellate court or a

Supreme Court decision which is sub-

stantially indistinguishable. See

Layne & Co. v. Western Well Works, 261

U.S. 387 (1923); Wisconsin Electric Co.

v. Dumove Co., 282 U.S. 813 (1930).

Here, Young & Rubicam, Inc. con-

tends that the opinion of the Court in

Midler I conflicts with the Seventh

Circuit’s holding in Baltimore Orioles

v. Major League Baseball Players, 805

onl

F.2d 663 (7th Cir. 1986) cert. denied,

48 U.S. 941 (1987).

The Baltimore Orioles and the in-

stant case have no factual Similarities

whatsoever. The instant case involved

a one time dispute between a well known

singer and major advertising agency who

had no contractual relationship with

each other and concerning the advertis-

ing agency’s imitation of the singer’s

voice in a television commercial with-

out her consent.

Baltimore Orioles involved a long-

standing dispute between the Major

League Baseball Clubs and the Major

League Players Association regarding

the ownership of the broadcast rights

to the players’ performances during

Major League baseball games. The

Players Association contended that the

telecasts were being made without its

members consent, thereby violating

their rights of publicity. On the

other hand, the Clubs contended that

the telecasts were made within the

scope of the players’ employment agree-

ment. Thus, the Clubs claimed exclus-

ive ownership of the copyrights to the

telecasts under the "works made for

hire" doctrine of 17 U.S.C. §201(b).

Putting aside the fundamental fac-

tual differences between Baltimore

Orioles and the instant case, there is

absolutely no conflict between’ the

principles of law enunciated in the two

cases.

The Baltimore Orioles Court held

that the players’ right of publicity in

their recorded performances were pre-

empted because the performances. at

issue had been "fixed in a tangible me-

dium of expression" within the meaning

of §101 of the Copyright Act. The

Court pointed out that for a work to be

"fixed" as defined by §101, a work must

be recorded "by or under the authority

of the author..." Id. at 675 n.22.

The Court concluded that the players

had given their consent to record their

performances to the Clubs through per-

tinent provisions in their contracts

and thus the Clubs had obtained author-

ity of the author of the work. Id. at

670-673.

Although the Baltimore Orioles

Court found that the players’ rights of

publicity had been preempted in the

games that had already been record-

ed,it was careful to dilineate the

scope of its decision:

It is, of course, true that unre-

corded performances per se are not

fixed in tangible form.. Thus, if a

baseball game were not broadcast or

were telecast without being record-

ed, the players’ performances simi-

larly would not be fixed in tangi-

ble form and their rights of publi-

city would not be subject to pre-

emption. Id. at p. 674.

The Midler I decision is consistent

with Baltimore Orioles in that the

Midler I court held that Midler’s voice

was protectible because it was not

"fixed" in a tangible form, or particu-

lar recording of a vocal performance.

(App. A46). Furthermore, Young &

Rubicam, Inc. did not have a contract-

ual relationship with Midler whereby it

recorded its television commercial "by

or under the authority" as the Clubs

did with the players in Baltimore

Orioles. In summary, although

Baltimore Orioles and the instant case

are factually extremely dissimilar, the

principles of the law applied in the

cases are easily reconcilable.

Additionally, it should be noted

that the Midler I decision is consis-

tent with the sound-alike case decided

by the First Circuit in Lahr v. Adell

Chemical Co., 300 F.2d 256 (1st Cir.

1962) as well as Sinatra v. Goodyear

Tire & Rubber Company, 435 F.2d 711

(9th Cir 1970) cert. denied, 402 U.S.

906 (1971), the only other sound-alike

case decided by the Ninth Circuit.

The case of Tin Pan Apple, Inc. v.

Miller Brewing Co., Inc., 737 F.Supp.

826 (S.D.N.Y. 1990) is cited by Young &

Rubicam, Inc. as refusing to extend the

Midler I holding. In fact, Tin Pan

Apple, Inc. has no relevance to the

issues in this case because it was de-

cided solely under New York statutory

law. Id. at 837. The District Court

Judge specifically noted that Midler I

had no bearing on the case before him

because it was decided under California

law. Id. at 838.

POINT III

THE PREEMPTION QUESTION POSED BY

YOUNG & RUBICAM, INC. SHOULD NOT BE

REVIEWED BECAUSE YOUNG & RUBICAM, INC.

DID NOT PRESERVE THE QUESTION IN THE

COURT OF APPEALS

The Supreme Court’s normal practice

is to refrain from addressing issues

not raised in the Court of Appeals.

Roberts v. Lodge, 45 U.S. 613, 628 n.n.

10 (1982); Heckler v. Campbell, 461

U.S. 458, 468-469 n. 12 (1983 ; Kosak

v. U.S., 465 U.S. 848, 850 n. 3 (1984).

Young & Rubicam, Inc. has failed to

preserve the question of whether Bette

Midler’s claim for misappropriation of

her voice is preempted by §301 of the

issues related to the preemption ques-

tion in the Court of Appeals and in its

petition for writ of certiorari.

Young & Rubicam, Inc.’s answer to

A sa rs a wa

the first amended complaint alleged an

affirmative defense of preemption by

provisions of the Copyright Act. (C.A.

App. SER 5). The District Court grant-

ed Bette Midler’s motion for partial

summary judgment as to Young & Rubican,

Inc.’s affirmative defense of copyright

preemption in its order dated February

8, 1989. (App. A32).

Young & Rubicam, Inc. never raised

the issue of whether the District Court

properly granted summary judgment as to

its affirmative defense of copyright

preemption in the Court of Appeals and

has not raised the issue in its peti-

tion for writ of certiorari. There-

fore, Young & Rubicam, Inc. has not

taken the steps necessary to preserve

the copyright preemption question it is

requesting this Court to review.

Further, as a matter of fairness

and judicial economy, Young & Rubicam,

Inc. should not now be heard by this

Court on the preemption issue. The

preemption issue was ripe for a peti-

tion for writ of certiorari after the

Ninth Circuit ruling in Midler I. If

there was any merit to the issue it

should have been addressed at that

stage of the case. Instead, the

parties and the courts went foward with

a jury trial in the District Court and

yet another appeal in the Ninth

Circuit, with all of the attendant

costs to the parties, as well as the

considerable burden on the - court

system. If Young & Rubicam, Inc.

wished to seek this Court’s review on

the preemption issue there was no

reason not to do so after Midler I.

Now, unhappy with the results of the

jury trial, they seek this Court’s

review without regard for the very con-

Siderable expenditure of time and re-

sources since Midler I.

POINT IV

THE MIDLER I DECISION DID NOT IMPOSE

LIABILITY ON YOUNG & RUBICAM, INC. FOR

CONDUCT PERMITTED BY THE COPYRIGHT ACT

The primary reason Young & Rubicam,

Inc. gives for granting its writ of

certiorari is that the Midler I deci-

sion imposed liability on it for con-

duct which §114(b) of the Copyright Act

explicitly permits. In actuality,

§114(b) of the Copyright Act is inap-

plicable to the facts of this case

because it applies only to the permit-

ted imitation of a sound recording in

another sound recording. It does not

apply to an imitation of a sound re-

cording being incorporated into an

audio-visual work, such as a television

commercial.

Young & Rubicam, Inc. contends that

its right to imitate Midler’s sound re-

cording of "Do You Want To Dance" in a

television commercial is set forth in

§114(b) of the Copyright Act. §114(b)

of the Copyright Act states in perti-

nent part:

The exclusive rights of the owner

of copyright in a sound recording

under clauses (1) and (2) of §106

do not extend to the making or du-

plication of another sound record-

ing that consists entirely of an

independent fixation of other

sounds, even though such sounds

imitate or simulate those in the

copyrighted sound recording.

(Emphasis added.)

The term "sound recording" is de-

fined in §101 of the Copyright Act as

follows:

"Sound Recordings" are works that

result from the fixation of a

series of musical, spoken, or other

sounds, but not including the

sounds accompanying a motion

picture or other audiovisual work,

regardless of the nature of the

material objects, such as disks,

tapes or other phonorecords, in

which they are embodied. (Emphasis

added. )

The definition of sound recordings

excludes sound tracks accompanying "au-

dio-visual works". "Audiovisual works"

are defined in §101 of the Copyright

Act as follows:

"Audio-visual works" are works that

consist of a series of related im-

ages which are intrinsically in-

tended to be shown by the use of

machines or devices such as pro-

jectors, viewers, or electronic

equipment, together with accompany-

ing sounds, if any, regardless of

the nature of the material ob-

jects,such as films or tapes, in

which the works are embodied.

The provisions of the Copyright Act

set forth above reveal that §114(b) has

no application to the facts of this

case because even if one accepts Young

& Rubicam, Inc.’s contention that it

was imitating the sound recording of

"Do You Want To Dance," it was imi-

tating it in connection with’ the

creation of an “audiovisual work",

i.e., the Lincoln-Mercury television

commercial, not "another sound record-

ing" as permitted by §114(b). Since

imitating a sound recording in the

making of an audio-visual work such as

a television commercial, is not conduct

which §114(b) permits, the Midler I

Court’s imposition of liability for im-

itation of a voice in a television com-

mercial does not give rise to any con-

flict whatsoever with the provisions of

§114(b).

POINT V

TEE TORT RECOGNIZED IN MIDLER I IS NOT

PREEMPTED BY §301 OF THE COPYRIGHT ACT

DOES NOT CONFLICT WITH THE HOLDING IN

BONITO BOATS AND DOES NOT INTERFERE

WITH THE REGULATORY SCHEME

ESTABLISHED BY CONCRESS

Section 301(a) of the Copyright Act

set forth two conditions that both must

be satisfied for preemption of a right

under state law: First, the work in

which the right is asserted must be

fixed in tangible form and come within

the subject matter of copyright as

specified in §102. Second, the right

must be equivalent to any or all of the

rights specified in §106. Baltimore

Orioles Vv. Major League Baseball

Players 805 F.2d 663, 674 (7th Cir.

1986). The tort recognized by Midler I

does not satisfy either of the two

conditions for preemption.

The Midler I court made it clear

that it was affording protection to

Bette Midler’s voice as an element of

her persona, a type of subject matter

which certainly is not eligible for

such protection the Midler I court was

doing no more than affirming the tradi-

tional state protection of aspects of

persona such as name and likeness.

Young & Rubicam, Inc.’s contention

that Bette Midler’s right to protect

her voice from misappropriation under

state law is preempted because certain

of her vocal performances have been

"fixed" and embodied in sound record-

ings does not withstand scrutiny. When

Young & Rubicam, Inc.’s contention is

followed to its natural conclusion, the

illogical outcome is that if someone

consents to have a photograph made of

his face, then he is precluded from

eenerting any common law rights of

publicity or privacy against anyone

else who appropriates the likeness of

his face because those rights would be

preempted by the Copyright Act. As the

Court in Midler I stated, "A voice is

as distinctive and personal as a face."

(App. A47.)

In its petition, Young & Rubicam,

Inc. contends that Bonito Boats, Inc.

v. Thunder Craft Boats, Inc., 489 U.S.

141 (1987), decided after Midler I,

"explained the preemptive force of

Article 1, Section 8 of the United

States Constitution" in a way that re-

quires preemption of the California

common law rights recognized in Midler

I. (Petition at 47.)

If anything can be said about

Bonito Boats, it is that the decision

represents a step back from the broad

preemptive approach of earlier patent

decisions. Discussing Sears, Roebuck &

Co. v. Stiffel Co., 376 U.S. 225 (1964)

and Compco Corp. v. Day-Brite Lighting,

Inc., 376 U.S. 234 (1964), the Bonito

Court rejected a broad and literal

reading of these cases, noting that

such a broad reading would improperly

preclude state regulation or "’anything

under the sun that is made by man,’"

Bonito Boats, 489 U.S. at 154, quoting

Diamond v. Chakrabarty, 447 U.S. 303,

309 (1980). While Sears and Compco

might be read as suggesting that patent

and copyright preemption is derived

from the patent and copyright clauses

of the Constitution, Bonito Boats takes

pains to point out, in line with post

Sears/Compco cases, that "the Patent

and Copyright Clauses do not, by their

own force or by negative implication,

deprive the States of the power to

adopt rules for the promotion of intel-

lectual creation within their own jur-

isdictions." Bonito Boats, 489 U.S. at

165.

Bonito Boats does not purport to

construe §301 of the Coyright Act and

adds nothing new to the contentions of

Young & Rubicam, Inc. originally re-

jected by the Ninth Circuit in Midler

Finally, the tort recognized in

Midler I does not interfere with the

regulatory scheme established by the

pressly reserves the rights and reme-

dies available under state statutes and

common law concerning subject matters

that are not eligible for copyright

protection. The court in Zacchini v.

Scripps-Howard Broadcasting Co., 433

U.S. 562, 571 (1977) recognized that

states’ protection of aspects of per-

sonas encouraged creativity by protect-

ing those who used their talents to at-

tain notoriety and did not conflict

with the policies behind copyright

law. The numerous articles that have

been written about the Midler I

decision which are cited by Young &

Rubicam, Inc. in their petition all

agree with the result reached by the

Court of Appeals. (Petition at 41

n.7.)

For

CONCLUSION

the foregoing reasons, Re-

spondent Bette Midler respectfully re-

quests that Petitioner Young & Rubican,

Inc.’s petition for a writ of certio-

rari be denied.

Dated:

Los Angeles, California

January 17, 1992

Respectfully submitted,

Peter Laird, Esq.

Ralph C. Loeb, Esq.

ARROW EDELSTEIN & LAIRD, P.C.

9220 Sunset Boulevard, #302

Los Angeles, California 90069

(310) 274-6184

Counsel of Record For

the Respondent

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.