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


"Palming off" or "passing off" is the selling of a good or service of one's own creation under the name or mark of another. Passing off may be either "express" or "implied." Express passing off occurs when an enterprise labels goods or services with a mark identical to that of another enterprise, or otherwise expressly misrepresents that the goods originated with another enterprise. Implied passing off occurs when an enterprise uses a competitor's advertising material, or a sample or photograph of the competitor's product, to impliedly represent that the product it is selling was produced by the competitor. Such practices have consistently been held to violate both the common law of unfair competition and the Lanham Act.


Plaintiff Paul Smith contracted to star in a film to be produced by defendant Producioni Atlas Cinematografica (PAC), an Italian film company. The contract allegedly provided that Smith would receive star billing in the screen credits and advertising for the film and that PAC would so provide in any subsequent contracts with distributors of the film. PAC then licensed defendants Edward Montoro and Film Venture International, Inc. (FVI) to distribute the film in the United States under the name "Convoy Buddies." Plaintiff complains, however, that Montoro and FVI removed Smith's name and substituted the name of another actor, "Bob Spencer," in place of Smith's name in both the film credits and advertising material. Plaintiff alleges that, as a result of defendants' substitution, plaintiff has been damaged in his reputation as an actor, and has lost specific employment opportunities. Plaintiff sought damages under several theories, including breach of contract, "false light publicity," violation of section 43(a) of the Lanham Act, and violation of Cal. Civ. Code § 3344 regarding commercial appropriation of a person's likeness. There being no diversity of citizenship, federal subject matter jurisdiction was based solely on plaintiff's Lanham Act claim. Plaintiff asserted that the district court had jurisdiction of the state law claims as a matter of pendent jurisdiction. The district court dismissed for lack of jurisdiction, holding the allegations were in the nature of state law breaches of contract and plaintiff did not have standing to sue. Plaintiff appealed.


Was the defendant film distributor liable for “palming off” to the prejudice of the plaintiff actor?




Plaintiff had standing to sue because, while plaintiff was not in any sort of competition with defendants, plaintiff was uniquely situated to complain of injury resulting from defendants' misidentification of plaintiff's contribution to the film. Defendants' conduct amounted to express reverse palming off, an attempt to profit from another's talents, to deprive plaintiff of goodwill, and to deprive the viewer of the truth.

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