Battle over Bob Marley Merchandise Involves Significant 'Image' Issues

Hope Road and Zion Rootswear filed suit against A.V.E.L.A. in Nevada federal court in January 2008, after discovering that the Target retail chain was selling Marley t-shirts featuring the Rabanne photos. The complaint's causes of action included trademark infringement and unfair competition under the federal Lanham Act, common law trademark infringement and violation of Nevada's right of publicity statute.

Since 1990, Hope Road says, “Plaintiffs have sent 400 cease and desist letters to individuals and entities manufacturing and selling various infringing merchandise and apparel featuring the Marley IP” and “have filed 29 trademarks, copyright, and rights of publicity suits based on their ownership of the Marley IP.” (Quoting Plaintiffs' Opposition to Defendants' Motion for Summary Judgment.)

In the Nevada case, the Hope Road plaintiffs argued that their trademark rights in the “BOB MARLEY” name extended to visual images of the late musician. The A.V.E.L.A. defendants countered that they hadn't used “the BOB MARLEY mark or the name 'Bob Marley' on any of the shirts or other apparel. ' The only use of the words 'Marley' or 'Bob Marley' has been by retailers to describe the products which are being sold ' shirts which bear an image of Bob Marley.” (Quoting Defendants' Reply to Plaintiffs' Opposition to Defendants' Motion for Summary Judgment.)

In February 2010, Judge Philip M. Pro of the U.S. District Court of the District of Nevada granted summary judgment to A.V.E.L.A. on the trademark infringement claims. Judge Pro emphasized: “Every court to consider the issue has held there is no cognizable trademark in every single photograph ever taken of a famous person.” Then pointing to a bell-weather decision that involved a painting of Tiger Woods golfing, Judge Pro observed: “The Sixth Circuit thus held that 'as a general rule, a person's image or likeness cannot function as a trademark,' except perhaps in the limited circumstance where one specific photograph consistently is used as a mark. [See, ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 918 (6th Cir. 2003)].” Judge Pro added that “no single picture represents a Marley mark for Plaintiffs which would act as a source identifier that is the equivalent to the word mark BOB MARLEY.”

The Hope Road plaintiffs further argued on the trademarks issue that A.V.E.L.A. had been involved in advertisements that used the “BOB MARLEY” name in stores and on Web sites. But the district judge found: “The evidence in the record indicates that retailers such as Target or Wet Seal used the words 'Bob Marley' to describe the product. However, Plaintiffs have presented no evidence that Defendants used the word mark on any product or advertisement.”

Right of Publicity in Nevada

An equally important aspect of the Marley suit focused on the application of Nevada's right of publicity statute, which applies “to any commercial use within this state of a living or deceased person's [for 50 years after death] name, voice, signature, photograph or likeness regardless of the person's domicile.” (See, Nev. Rev. Stat. '597.780). But '597.800(4) states: “A successor in interest or a licensee of a deceased person may not assert any right against any unauthorized commercial use ' that begins before the filing of an application to register” a protectable right of publicity. The $25 application must be filed with the Secretary of State, per '597.800(5), within six months after the successor in interest or licensee “becomes aware or should reasonably have become aware of an unauthorized commercial use.”

Hope Road filed its registration with the Nevada Secretary of State in January 2006, after seeing the company Legends4Life.com hawking Bob Marley t-shirts at a trade show in Las Vegas in August 2005. But A.V.E.L.A. insisted that the statutory six-month filing period began to run upon any unauthorized use, in this case from when Hope Road allegedly became aware in 2001 of unauthorized right of publicity uses in Nevada by parties other than A.V.E.L.A. ' or at least from February 2005 when Hope Road first knew of A.V.E.L.A's Marley use in the state. (Hope Road disputes both the 2001 and February 2005 dates.) Hope Road argued, however, that the six-month requirement was triggered only by the use at issue in a particular dispute. No Nevada court had ruled on the '597.800(5) matter.

Judge Pro sided with A.V.E.L.A. by finding that “upon discovering an unauthorized use by anyone, a successor must register within six months or forever waive his claim to publicity rights in the deceased person. Registration is permissive until the successor learns of an unauthorized use, at which point it becomes mandatory or the successor waives the claim to publicity rights in Nevada.” But the district judge also found: “Genuine issues of material fact remain as to when Plaintiffs first became aware of an unauthorized use in Nevada. Defendants have presented evidence that Plaintiffs were aware of Internet advertisements by Florida-based companies as early as 2001 and 2004. Whether such Internet activity constitutes a use 'within' Nevada of which Plaintiffs were aware or reasonably should have been aware is a question of fact for the jury.”

Then, in another significant statutory issue in the case, Judge Pro decided that Nevada's right-of-publicity statute applies to individuals like Bob Marley who died before the statute took effect. According to the district judge: “This understanding is supported by the legislative history, which discussed Orson Welles' estate's difficulty policing the use of his image following his death, and that this bill would stop such activity. ' Liberace and Elvis Presley also were referenced, including the potential impact of the bill on impersonators of already-deceased celebrities like Elvis Presley.”

Conclusion

Thus, there is life left in the Marley merchandise suit, including because the district court ruled that a genuine issue of fact exists as to Hope Road's Lanham Act unfair competition claim (i.e., for false association). But the district court's refusal to extend name-trademark protection to celebrity images and the court's strict reading of the Nevada right-of-publicity registration-filing deadline only increase the burden on even highly aggressive estates to constantly police their icons' brands.

High consumer interest in merchandise bearing indicia of deceased celebrity icons has spawned a constantly evolving litigation genre for determining the extent of rights of the icons' estates. The estate of reggae-music legend Bob Marley, who died in 1981, is among the most frequently litigated in the field. A federal lawsuit filed by the Bahamian-based Fifty-Six Hope Road, Marley's children's company, in Nevada has raised some important issues ' in part of first impression in the state ' as to how the registration provisions of the Nevada right-of-publicity apply and how far estate rights may extend in a celebrity's name trademark. Fifty-Six Hope Road Music Ltd. v. A.V.E.L.A. Inc., 2:08-CV-00105-PMP-GWF.

Image As Trademark

Hope Road owns federal registrations for the name “BOB MARLEY” in 11 classes of goods. In 1999, the company licensed the exclusive worldwide right to Zion Rootswear to sell Marley t-shirts as well as to use several hundred Bob Marley photographs. Several years later, A.V.E.L.A. Inc., which licenses artwork for retail goods, licensed photographs of Bob Marley that it had obtained from photographer Roberto Rabanne to third parties that manufactured Marley goods, which in many instances feature Marley lyrics and album and song titles.

Hope Road and Zion Rootswear filed suit against A.V.E.L.A. in Nevada federal court in January 2008, after discovering that the Target retail chain was selling Marley t-shirts featuring the Rabanne photos. The complaint's causes of action included trademark infringement and unfair competition under the federal Lanham Act, common law trademark infringement and violation of Nevada's right of publicity statute.

Since 1990, Hope Road says, “Plaintiffs have sent 400 cease and desist letters to individuals and entities manufacturing and selling various infringing merchandise and apparel featuring the Marley IP” and “have filed 29 trademarks, copyright, and rights of publicity suits based on their ownership of the Marley IP.” (Quoting Plaintiffs' Opposition to Defendants' Motion for Summary Judgment.)

In the Nevada case, the Hope Road plaintiffs argued that their trademark rights in the “BOB MARLEY” name extended to visual images of the late musician. The A.V.E.L.A. defendants countered that they hadn't used “the BOB MARLEY mark or the name 'Bob Marley' on any of the shirts or other apparel. ' The only use of the words 'Marley' or 'Bob Marley' has been by retailers to describe the products which are being sold ' shirts which bear an image of Bob Marley.” (Quoting Defendants' Reply to Plaintiffs' Opposition to Defendants' Motion for Summary Judgment.)

In February 2010, Judge Philip M. Pro of the U.S. District Court of the District of Nevada granted summary judgment to A.V.E.L.A. on the trademark infringement claims. Judge Pro emphasized: “Every court to consider the issue has held there is no cognizable trademark in every single photograph ever taken of a famous person.” Then pointing to a bell-weather decision that involved a painting of Tiger Woods golfing, Judge Pro observed: “The Sixth Circuit thus held that 'as a general rule, a person's image or likeness cannot function as a trademark,' except perhaps in the limited circumstance where one specific photograph consistently is used as a mark. [ See , ETW Corp. v. Jireh Publishing, Inc. , 332 F.3d 915, 918 (6th Cir. 2003)].” Judge Pro added that “no single picture represents a Marley mark for Plaintiffs which would act as a source identifier that is the equivalent to the word mark BOB MARLEY.”

The Hope Road plaintiffs further argued on the trademarks issue that A.V.E.L.A. had been involved in advertisements that used the “BOB MARLEY” name in stores and on Web sites. But the district judge found: “The evidence in the record indicates that retailers such as Target or Wet Seal used the words 'Bob Marley' to describe the product. However, Plaintiffs have presented no evidence that Defendants used the word mark on any product or advertisement.”

Right of Publicity in Nevada

An equally important aspect of the Marley suit focused on the application of Nevada's right of publicity statute, which applies “to any commercial use within this state of a living or deceased person's [for 50 years after death] name, voice, signature, photograph or likeness regardless of the person's domicile.” (See, Nev. Rev. Stat. '597.780). But '597.800(4) states: “A successor in interest or a licensee of a deceased person may not assert any right against any unauthorized commercial use ' that begins before the filing of an application to register” a protectable right of publicity. The $25 application must be filed with the Secretary of State, per '597.800(5), within six months after the successor in interest or licensee “becomes aware or should reasonably have become aware of an unauthorized commercial use.”

Hope Road filed its registration with the Nevada Secretary of State in January 2006, after seeing the company Legends4Life.com hawking Bob Marley t-shirts at a trade show in Las Vegas in August 2005. But A.V.E.L.A. insisted that the statutory six-month filing period began to run upon any unauthorized use, in this case from when Hope Road allegedly became aware in 2001 of unauthorized right of publicity uses in Nevada by parties other than A.V.E.L.A. ' or at least from February 2005 when Hope Road first knew of A.V.E.L.A's Marley use in the state. (Hope Road disputes both the 2001 and February 2005 dates.) Hope Road argued, however, that the six-month requirement was triggered only by the use at issue in a particular dispute. No Nevada court had ruled on the '597.800(5) matter.

Judge Pro sided with A.V.E.L.A. by finding that “upon discovering an unauthorized use by anyone, a successor must register within six months or forever waive his claim to publicity rights in the deceased person. Registration is permissive until the successor learns of an unauthorized use, at which point it becomes mandatory or the successor waives the claim to publicity rights in Nevada.” But the district judge also found: “Genuine issues of material fact remain as to when Plaintiffs first became aware of an unauthorized use in Nevada. Defendants have presented evidence that Plaintiffs were aware of Internet advertisements by Florida-based companies as early as 2001 and 2004. Whether such Internet activity constitutes a use 'within' Nevada of which Plaintiffs were aware or reasonably should have been aware is a question of fact for the jury.”

Then, in another significant statutory issue in the case, Judge Pro decided that Nevada's right-of-publicity statute applies to individuals like Bob Marley who died before the statute took effect. According to the district judge: “This understanding is supported by the legislative history, which discussed Orson Welles' estate's difficulty policing the use of his image following his death, and that this bill would stop such activity. ' Liberace and Elvis Presley also were referenced, including the potential impact of the bill on impersonators of already-deceased celebrities like Elvis Presley.”

Conclusion

Thus, there is life left in the Marley merchandise suit, including because the district court ruled that a genuine issue of fact exists as to Hope Road's Lanham Act unfair competition claim (i.e., for false association). But the district court's refusal to extend name-trademark protection to celebrity images and the court's strict reading of the Nevada right-of-publicity registration-filing deadline only increase the burden on even highly aggressive estates to constantly police their icons' brands.