The Tom Waits Case

by Gerhard W. Volz

The American musician Tom Waits and his production company in Spain brought intellectual property and unfair competition claims against Volkswagen-Audi España, as well as against certain advertising production agencies in Volkswagen-Audi’s employ, over a song featured in an Audi commercial.  The song was a close imitation - in terms of both musical style and the impersonation of Mr. Waits’ unique voice - of a Waits song for which his production company holds the copyright.  Mr. Waits had denied permission for Volkswagen-Audi to use his original song in the commercial, at which point Volkswagen-Audi and the advertising production agencies collaborated to develop a close imitation.  The imitation song was featured in the Audi ad without Mr. Waits’ knowledge or consent.

The Barcelona Court of Appeals ruled that, under Spain’s Intellectual Property Law, the commercial use of an imitation song that is substantially similar to another musician's original work constitutes an infringement of the moral rights of authorship and copyrights associated with the original song.  The author and/or copyright holder of the original song may maintain causes of action against the musician that developed the imitation song, the production company responsible for producing the imitation song, and the advertiser that knowingly benefited from the inclusion of the imitation song in its advertisements. The proper remedies include cease-and-desist orders and money judgments for both copyright and moral damages.  When the public in general or the market as a whole has been harmed, the plaintiffs may also maintain additional actions based upon Spain's Law of Unfair Competition.  However, such actions will be dismissed when only the musician and the copyright holder – and not the general public or the market as a whole – have been harmed.

The Court of Appeals declared that the imitation song was substantially similar to Mr. Wait’s original song, both in terms of the musical score itself and the close impersonation of Mr. Waits’ unique voice.  Therefore, Mr. Waits' moral rights of authorship and his production company’s copyright interests had been violated.  The Court entered a cease-and-desist order against Volkswagen-Audi and its advertising production agency, which were also held jointly and severally liable for money damages in the amount of 36,060.73 euros (for copyright infringement) and 30,000 euros (for infringing Mr. Waits' moral rights of authorship).  Because neither the general public nor the market as a whole had been damaged, all unfair competition claims were dismissed.

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Gerhard W. Volz
Abogado & Rechtsanwalt
Partner
 
SCHILLER LEXCONSULT Abogados
Henri Dunant, 19
28036 Madrid
Spain
 
Tel : ++34. 914 179 780
Fax: ++34. 915 971 266
mail: gwvolz@schillerlexconsult.es 
web site: www.schillerlexconsult.com

• Summary of "Tom Waits" Case 79kb  (Added: 20 Nov 2006)