Sinatra v. Goodyear: When a Music License Defeats a Voice Claim

Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970) (No. 23472), decided November 20, 1970, is the case that maps the outer boundary of the voice-imitation tort. Nancy Sinatra had made “These Boots Are Made for Walkin’” a hit in 1966. Goodyear, advertising its “wide boots” tire line, obtained a license to the composition from the copyright proprietor, Criterion Music, and then ran television commercials featuring the song performed by unidentified vocalists in a style evoking Sinatra’s recording. Sinatra sued for unfair competition on a passing-off theory. The district court granted summary judgment to Goodyear, and the Ninth Circuit affirmed — holding that because Goodyear had paid for and lawfully used a federal copyright license, allowing a state passing-off claim to proceed would collide with federal copyright policy. Sinatra is therefore the indispensable counterweight to Midler: it shows when a sound-alike is protected rather than punished.

At a glance

• Case: Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970)
• Docket / decided: No. 23472; decided November 20, 1970
• Posture: District court’s summary judgment for the defendants affirmed
• Holding: A state-law passing-off claim premised on the imitation of a singer’s recorded performance of a licensed musical composition is preempted by federal copyright policy and otherwise fails for want of competition and protectable secondary meaning
• Why it matters: It marks the line Midler later had to distinguish — imitation tied to a lawfully licensed work is treated very differently from imitation of identity untethered to any license

The facts, and why the license is everything

The mechanics of Sinatra are the opposite of those in the classic sound-alike case. Goodyear did not freelance an imitation of a performer it could not sign. It went to the copyright owner of the song, paid “a very substantial sum,” and obtained a license to use the music, lyrics, and arrangement. It then used the licensed composition in its commercials, performed by other singers. Sinatra did not own the song; her contribution was the famous recorded performance of it.

That distinction drove the result. Sinatra was not complaining that her recording had been replayed — it had not — nor that anyone had falsely claimed she sang the commercial. She was complaining that the style of her hit rendition had been copied to ride on its popularity. But the popularity she pointed to was, in the court’s view, inseparable from the copyrighted song that Goodyear had lawfully licensed. To hand her a state remedy would be to let her control uses of a work the copyright owner had already authorized.

Distinguishing Lahr: secondary meaning in a copyrighted work

The court took pains to distinguish Lahr v. Adell Chemical Co., the First Circuit’s 1962 decision allowing a voice-imitation claim. Bert Lahr had asserted a purely personal vocal characteristic — a distinctive comic delivery untethered to any particular copyrighted text. Sinatra, by contrast, sought protection for “the combination of sound together with copyrighted lyrics, melody and arrangement.” Her claimed secondary meaning was bound up with the song itself, not with a vocal signature she carried from work to work.

That difference mattered for two reasons. First, it weakened the secondary-meaning showing: it is one thing to say the public recognizes a performer’s voice across her career, and another to say the public associates a single licensed song with one of its many performers. Second, and more fundamentally, it placed the claim squarely on top of the federal copyright the defendant had paid to use. The closer a state claim hugs the copyrighted work, the more directly it interferes with the rights the Copyright Act distributes — and the more vulnerable it is to preemption.

The preemption rationale

The dispositive holding was one of conflict preemption. Goodyear had bought the right to use the composition from the entity federal law empowered to sell it. If Sinatra could nonetheless extract damages or an injunction under state unfair-competition law for the defendant’s use of that very composition, the court reasoned, the “resulting clash with federal law seems inevitable.” The practical effect would be to confer “state copyright benefits without the federal limitations” — to give a performer, through the back door of unfair competition, a veto over licensed uses that federal copyright law deliberately does not grant.

Two contextual points sharpen the doctrine. First, Sinatra predates the Copyright Act of 1976 and its express preemption provision, 17 U.S.C. § 301; the court was working from Supremacy Clause conflict principles and the federal scheme of the 1909 Act, in the lineage of Sears and Compco. Second, the holding is narrow in a way that is easy to miss. The court did not say that imitating a voice is always lawful. It said that this claim — anchored to a licensed copyrighted song and unsupported by genuine competition between the parties — could not stand. There was, as the court bluntly put it, “no competition between Nancy Sinatra and Goodyear Tire Company.”

Sinatra and Midler: two sides of one doctrine

The relationship between Sinatra and Midler v. Ford Motor Co. (9th Cir. 1988) is the most important thing a reader can take from this case. Midler did not overrule Sinatra; it distinguished it. Bette Midler did not seek royalties for the song “Do You Want to Dance,” which Ford had licensed. She sought damages for the appropriation of her identity — her distinctive voice, deliberately imitated so listeners would think she was singing. That claim, the Midler court held, was not equivalent to a copyright claim and was not defeated by the song license, because the protected interest was Midler’s persona, not the composition.

Sinatra supplies the negative space that makes Midler coherent. Where the plaintiff’s grievance is, in substance, about uses of a licensed work, copyright policy controls and the state claim yields. Where the grievance is about the appropriation of identity — a separate interest that copyright does not address — the state claim survives. The two cases together draw the line on which every modern sound-alike dispute is decided: license to the song is not license to the singer, but a claim that is really about the song cannot be dressed up as a claim about the singer.

Open questions

Sinatra leaves the boundary deliberately blurry. How does a court tell whether a plaintiff is really complaining about appropriation of identity (protected) or about uses of a licensed work (preempted)? The answer often turns on framing, and clever pleading can blur the categories. The 1976 Act’s § 301 has since reorganized the preemption inquiry around “subject matter” and “equivalent rights,” so Sinatra’s pre-1976 reasoning must now be translated into that framework — a translation courts have performed unevenly. There is also an unresolved tension with false-endorsement law: if a licensed sound-alike is convincing enough to imply the original artist’s sponsorship, does the Lanham Act offer a path around copyright preemption that Sinatra did not consider? And the rise of AI raises a sharp version of the question — when a model is trained on lawfully licensed recordings, does Sinatra’s logic immunize the output, or does Midler’s identity theory cut through?

Implications

• A song license can be a defense — but only to song-based claims. Lawful use of a licensed composition defeats a state claim that is really about that composition.
• Frame the interest carefully. Plaintiffs must locate the wrong in identity, not in the licensed work, or risk preemption; defendants will argue the reverse.
• No competition, no classic passing off. Where the parties sell unrelated goods and the claim rides on a licensed song, the traditional unfair-competition theory is weak.
• Read it with Midler. Sinatra and Midler are complementary; neither states the rule alone, and the line between them decides most sound-alike cases.
• Preemption analysis has evolved. Post-1976, the inquiry runs through § 301; counsel should not rely on Sinatra’s pre-Act reasoning without translating it.

Frequently asked questions

Did Goodyear use Nancy Sinatra’s actual recording? No. The commercials used the licensed song performed by other, unidentified singers in a style reminiscent of her hit. No recording of her voice was replayed, and no one claimed she had performed.

If she lost, how did Bette Midler later win on similar facts? The claims were different. Sinatra’s grievance was tied to a licensed song, which triggered copyright preemption. Midler’s was framed as appropriation of her identity — her distinctive voice — an interest copyright does not protect, so the song license was no defense.

Is imitating a singer always legal if you license the song? No. Licensing the composition protects you against song-based claims, but it does not authorize deliberately imitating a specific artist’s identity in a way that implies her participation or endorsement, which can trigger right-of-publicity or false-endorsement liability.

Authorities and sources

• Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. Nov. 20, 1970) (No. 23472) — full text via Law.Resource.Org and Justia.
• Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) — the contrasting identity-based decision, full text via Law.Resource.Org.
• Lahr v. Adell Chemical Co., 300 F.2d 256 (1st Cir. 1962) — the distinguished voice-imitation precedent, Justia.
• WIPO Magazine, Can the distinctiveness of musical identity be protected under U.S. law? (secondary analysis).