Ninth Circuit Upholds Marley Estate False Endorsement Claim

The U.S. Court of Appeals for the Ninth Circuit decided there was sufficient evidence to support a jury's finding that merchandiser A.V.E.L.A. violated the Lanham Act by using the unlicensed image of Bob Marley on t-shirts and other merchandise in a manner likely to cause confusion that the Marley estate sponsored or approved of the products. Fifty-Six Hope Road Music Ltd. v. A.V.E.L.A. Inc., 12-17502.

Bob Marley's children own Fifty-Six Hope Road Music Ltd., which exploits the interests of their late father. In 1999, Hope Road granted Zion Rootswear LLC an exclusive license to design, manufacture, and sell t-shirts and other merchandise bearing Bob Marley's image.

Later, Hope Road and Zion sued A.V.E.L.A. and others for trademark infringement under 15 U.S.C. '1114, false endorsement, common law trademark infringement, unauthorized commercial use of right to publicity under Nevada law, and intentional interference with prospective economic advantage. The claims arose from A.V.E.L.A.'s use of Marley photographs on merchandise.

The U.S. District Court for the District of Nevada granted summary judgment in favor of A.V.E.L.A. on the statutory and common law trademark infringement claims, and on the state law right of publicity claim. The remaining claims were tried by a jury, which found in favor of and awarded damages to Hope Road and Zion on their interference claim, but only as against certain A.V.E.L.A. defendants. However, the jury found in favor of Hope Road and Zion as to all of the defendants on the false endorsement claim under the federal Lanham Act.

After re-opening discovery for the submission of evidence of the various defendants' profits from their Marley merchandise, the district court assessed additional damages and entered final judgment. The parties cross-appealed on the merits and as to various orders of the district court. The appeals were consolidated.

The court of appeals affirmed, holding in part that the district court did not err in denying the defendants a judgment as a matter of law on the plaintiffs' false endorsement claim. First, the Ninth Circuit noted, Hope Road had a property right to Marley's persona under the Lanham Act. Case authority plainly recognized that a celebrity's persona is subject to misuse for purposes of a claim under Lanham Act '1125(a).

Next, the evidence supported the jury's finding that consumers would likely be confused about whether Hope Road and Zion sponsored or approved the defendants' Marley products. Reviewing each of the likelihood of confusion factors, the appeals court observed that a jury could find a likelihood of confusion where there was evidence that Marley's image enjoyed a high level of recognition in the defendants' target market and that the image had long been associated with apparel. Nor was there any dispute that A.V.E.L.A. used actual photos of Marley on its merchandise.

Regarding the issue of actual confusion, the appeals court cited a consumer confusion survey offered into evidence that contained answers provided by individuals in shopping malls. The survey respondents were broken into two groups: a test group that viewed a t-shirt with Marley's image and a control group that was shown a t-shirt with the image of an unrenowned African-American man with dreadlocks. Over a third of the test group responded that “Bob Marley/the person on the shirt or his heirs, estate, or agents” gave their permission or approval for the T-shirt to be made or distributed. Twenty percent of the control group answered the same. (The appeals court focused on those responses, which addressed actual confusion, rather than the subsequent opinions of some survey respondents that the law required permission from the person depicted before the person's image could be used on a t-shirt. The appeals court believed that question answered why some of the respondents could be confused, not whether they were actually confused.)

The Ninth Circuit further found that the evidence established A.V.E.L.A.'s licensees sold Marley products in some of the same retail stores as Hope Road and Zion's licensees, that the low prices of the unauthorized items demonstrated a likely low degree of purchaser care, and that the A.V.E.L.A. defendants tried to associate their product with Hope Road and Zion's by intentionally creating similar merchandise. In addition, evidence of Hope Road and Zion's efforts to continue Marley's exclusive sales of merchandise bearing his image demonstrated a sufficiently strong association between Marley, and Hope Road and Zion.

The Ninth Circuit didn't see the lower court judgment as in effect overextending the Lanham Act to create a federal right of publicity. (Rights of publicity are determined under state law. In addition, the Lanham Act requires a plaintiff to show likelihood of consumer confusion, while a right of publicity claim doesn't.) The appeals court similarly concluded that the district court did not err in allowing the plaintiffs to recover the defendant's total net profits. Among other things, the appeals court rejected the notion that there was a Seventh Amendment right to have a jury calculate profits. Further, the district court's specific profit calculations fell within its discretion.

There also was no error found in the district court's order that the A.V.E.L.A. defendants pay attorney fees. According to the appeals court, the district court acted within its discretion in concluding that Hope Road and Zion were the prevailing parties and that the action was an “exceptional case” under 15 U.S.C. '1117(a) as to all of the defendants where their infringement was willful.

But on Hope Road and Zion's Nevada right of publicity claim, the Ninth Circuit concluded that district court did not err in granting summary judgment in favor of the defendants on the ground that the plaintiffs knew of third-party unauthorized commercial use of Marley's publicity right more than six months before they registered the right with the Nevada Secretary of State. Predicting how the Nevada Supreme Court would interpret the requirement of timely registration, the appeals court read the state statutory language to impose a mandatory registration requirement once a party learns of unauthorized use.

The U.S. Court of Appeals for the Ninth Circuit decided there was sufficient evidence to support a jury's finding that merchandiser A.V.E.L.A. violated the Lanham Act by using the unlicensed image of Bob Marley on t-shirts and other merchandise in a manner likely to cause confusion that the Marley estate sponsored or approved of the products. Fifty-Six Hope Road Music Ltd. v. A.V.E.L.A. Inc., 12-17502.

Bob Marley's children own Fifty-Six Hope Road Music Ltd., which exploits the interests of their late father. In 1999, Hope Road granted Zion Rootswear LLC an exclusive license to design, manufacture, and sell t-shirts and other merchandise bearing Bob Marley's image.

Later, Hope Road and Zion sued A.V.E.L.A. and others for trademark infringement under 15 U.S.C. '1114, false endorsement, common law trademark infringement, unauthorized commercial use of right to publicity under Nevada law, and intentional interference with prospective economic advantage. The claims arose from A.V.E.L.A.'s use of Marley photographs on merchandise.

The U.S. District Court for the District of Nevada granted summary judgment in favor of A.V.E.L.A. on the statutory and common law trademark infringement claims, and on the state law right of publicity claim. The remaining claims were tried by a jury, which found in favor of and awarded damages to Hope Road and Zion on their interference claim, but only as against certain A.V.E.L.A. defendants. However, the jury found in favor of Hope Road and Zion as to all of the defendants on the false endorsement claim under the federal Lanham Act.

After re-opening discovery for the submission of evidence of the various defendants' profits from their Marley merchandise, the district court assessed additional damages and entered final judgment. The parties cross-appealed on the merits and as to various orders of the district court. The appeals were consolidated.

The court of appeals affirmed, holding in part that the district court did not err in denying the defendants a judgment as a matter of law on the plaintiffs' false endorsement claim. First, the Ninth Circuit noted, Hope Road had a property right to Marley's persona under the Lanham Act. Case authority plainly recognized that a celebrity's persona is subject to misuse for purposes of a claim under Lanham Act '1125(a).

Next, the evidence supported the jury's finding that consumers would likely be confused about whether Hope Road and Zion sponsored or approved the defendants' Marley products. Reviewing each of the likelihood of confusion factors, the appeals court observed that a jury could find a likelihood of confusion where there was evidence that Marley's image enjoyed a high level of recognition in the defendants' target market and that the image had long been associated with apparel. Nor was there any dispute that A.V.E.L.A. used actual photos of Marley on its merchandise.

Regarding the issue of actual confusion, the appeals court cited a consumer confusion survey offered into evidence that contained answers provided by individuals in shopping malls. The survey respondents were broken into two groups: a test group that viewed a t-shirt with Marley's image and a control group that was shown a t-shirt with the image of an unrenowned African-American man with dreadlocks. Over a third of the test group responded that “Bob Marley/the person on the shirt or his heirs, estate, or agents” gave their permission or approval for the T-shirt to be made or distributed. Twenty percent of the control group answered the same. (The appeals court focused on those responses, which addressed actual confusion, rather than the subsequent opinions of some survey respondents that the law required permission from the person depicted before the person's image could be used on a t-shirt. The appeals court believed that question answered why some of the respondents could be confused, not whether they were actually confused.)

The Ninth Circuit further found that the evidence established A.V.E.L.A.'s licensees sold Marley products in some of the same retail stores as Hope Road and Zion's licensees, that the low prices of the unauthorized items demonstrated a likely low degree of purchaser care, and that the A.V.E.L.A. defendants tried to associate their product with Hope Road and Zion's by intentionally creating similar merchandise. In addition, evidence of Hope Road and Zion's efforts to continue Marley's exclusive sales of merchandise bearing his image demonstrated a sufficiently strong association between Marley, and Hope Road and Zion.

The Ninth Circuit didn't see the lower court judgment as in effect overextending the Lanham Act to create a federal right of publicity. (Rights of publicity are determined under state law. In addition, the Lanham Act requires a plaintiff to show likelihood of consumer confusion, while a right of publicity claim doesn't.) The appeals court similarly concluded that the district court did not err in allowing the plaintiffs to recover the defendant's total net profits. Among other things, the appeals court rejected the notion that there was a Seventh Amendment right to have a jury calculate profits. Further, the district court's specific profit calculations fell within its discretion.

There also was no error found in the district court's order that the A.V.E.L.A. defendants pay attorney fees. According to the appeals court, the district court acted within its discretion in concluding that Hope Road and Zion were the prevailing parties and that the action was an “exceptional case” under 15 U.S.C. '1117(a) as to all of the defendants where their infringement was willful.

But on Hope Road and Zion's Nevada right of publicity claim, the Ninth Circuit concluded that district court did not err in granting summary judgment in favor of the defendants on the ground that the plaintiffs knew of third-party unauthorized commercial use of Marley's publicity right more than six months before they registered the right with the Nevada Secretary of State. Predicting how the Nevada Supreme Court would interpret the requirement of timely registration, the appeals court read the state statutory language to impose a mandatory registration requirement once a party learns of unauthorized use.