5.15.2015

Rights in Bob Marley's name and likeness trump free speech where defence not properly pleaded | World Trademark Review

written by Diane Reed of Knobbe Martens Olson & Bear LLP
Fifty-Six Hope Road is a company run by some of Bob Marley's children, and it owns the property rights to Bob Marley's name, voice and likeness. Hope Road licensed Zion Rootswear the exclusive right to use Marley's name and likeness on t-shirts.
One of the defendants, AVELA, acquired photos of Marley from a photographer and licensed the photos to Jem Sportswear for production of t-shirts and other merchandise bearing Marley's image, which merchandise which was then sold at Target, Walmart and other large retailers.
Hope Road sued in district court for violation of its rights under Nevada's right of publicity laws, the common law and the Lanham Act, claiming the merchandise bearing Marley's image created a likelihood of confusion as to plaintiff's sponsorship or approval of the merchandise. The district court dismissed the state law right of publicity claim and the common law trademark infringement claim, but found for Hope Road on its Lanham Act infringement claim, and its claim that defendants interfered with the plaintiff’s prospective economic advantage. The district court awarded damages and attorneys' fees to the plaintiff.
The defendants filed an appeal, arguing that t-shirts are expressive works protected under the First Amendment.
In Fifty-Six Hope Road Music v AVELA (Cases 12-17502, 12-17519, 12-17595, 13-15407 and 13-15473, February 20 2015), the Ninth Circuit found that the jury properly found that the defendants waived their First Amendment defence and several other defences by failing to properly raise them in the district court. The court found that the defendants had raised "several potentially salient defences" to challenge the judgment, but would not reverse the district court ruling because those defences were not sufficiently asserted in district court.
The court ruled that the Lanham Act claim for misuse of a celebrity's persona was supported by sufficient evidence to establish that Marley's endorsement of the defendant's products was implied through the imitation of a distinctive attribute of his identity. The court distinguished this case from a similar case involving Princess Diana's image (Cairns II, 107 F Supp 2d at 1217) where the court held that Princess Diana's image was only weakly associated with the plaintiffs, largely because her image had not served a source-identifying function during her life or after her death. In that case, the court found that many parties had been selling products bearing the Princess' image before her death and continued to do so after her death and, thus, there was no one source of that merchandise.
Marley, however, sold merchandise bearing his image during his lifetime and the plaintiff continued to do so after his death, and both Marley and the plaintiff have routinely contested the unauthorised use of Marley’s name or image by others.
This article first appeared on WTR Daily, part of World Trademark Review, in April 2015. For further information, please go to www.worldtrademarkreview.com.

MORAL OF THE STORY: assert your free speech defenses from the get-go if you think you might raise them on appeal and consider the history of the celebrity trademark owner to see if he or she has consistently used their trademark in a source-identifying function. ~DJ

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