All is not bad news for the estate of Bob Marley (you may recall they lost their suit against Island Records over whether the sound recordings were works made for hire). They just won a $300,000 jury verdict in a §43(a) case against a Nevada company that used images of Bob Marley on t-shirts that were carried by such retailers as Wet Seal and Target.
The facts are relatively straightforward. Bob Marley’s children formed Fifty-Six Hope Road Music (named after the street on which Marley lived in Jamaica) to exploit his legacy after Marley’s death in 1981. Fifty-Six owns a federal trademark for BOB MARLEY and claims rights in Marley’s persona. Fifty-Six licenses use of the Marley name and likeness through Zion Rootswear. A Nevada company, A.V.E.L.A., obtained some photographs of Marley from photographer Roberto Rabanne who may or may not have had permission from Marley to commercially exploit them. Regardless, Avela used the images on t-shirts, but never used the words MARLEY or BOB MARLEY as part of their designs (several retailers did use Marley’s name in advertising the t-shirts, but those acts could not be attributed to Avela, according to the district court). Fifty-Six sued Avela in Nevada federal court alleging violations of its federal and common law trademark rights, their rights in Marley’s persona under Nevada’s rights of publicity statute, federal unfair competition, and interference with prospective economic advantage (really another form of unfair competition).
Avela moved for summary judgment on all counts. Fifty-Six moved for partial summary judgment on their unfair competition claim. The district court granted in part and denied in part Avela’s MSJ.
Nevada has a broad right of publicity statute that protects against the unauthorized use of a person’s rights of publicity in his or her name, voice, signature, photograph, or likeness.
Nev. Rev. Stat. § 597.770 et seq. The right of publicity “endures for a term consisting of
the life of the person and 50 years after his death, regardless of whether the person
commercially exploits the right during his lifetime.” In order for the survivors of the celebrity to make claims under the Nevada statute, however, they must register their claim with the state and, importantly, must make such claim within six months of becoming aware of unauthorized use in Nevada or find any future claims waived.
The critical gating item under the Nevada statute, therefore, was when Fifty-Six became aware of unauthorized use in Nevada (i.e., unauthorized use outside the state does not trigger the six month tolling). Because there were material issues of fact surrounding that point, the district court denied Avela’s MSJ on that count.
In granting Avela’s MSJ regarding Fifty-Six’ §1114 (federal) and common law trademark claims, the Court noted that Fifty-Six did not use photographs of Marley as “trademarks.” (i.e., as a designation of source or origin). Citing both the Tiger Woods, ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), and Babe Ruth, Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990), the district court found that trademark owners cannot assert rights in every photo ever taken of a celebrity.
The district court, however, denied Avela’s MSJ on the §43(a) [15 USC §1125(a)] federal unfair competition claim, even though they appear to be very similar. In other words, while Fifty-Six could not bring a §1114 claim for infringement of its BOB MARLEY registered trademark based on the unauthorized use of photos of Marley (for the reasons provided above), Fifty-Six could bring a §1125(a) unfair competition claim based thereon. The court cited the case of Downing v. Abercrombie & Fitch, 265 F.3d 994, 1000 (9th Cir. 2001), in which the retailer was sued for using the picture of a famous surfer without his permission. In Downing, the Ninth Circuit adapted its test for trademark infringement set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (the “Sleekcraft factors”), indicating that for celebrity cases “the term ‘mark’ applies to the celebrity’s persona, the ‘strength’ of the mark refers to the level of recognition that the celebrity has among the segment of the public to whom the advertisement is directed, and the term ‘goods’ concerns the reasons for or source of the celebrity’s fame.” The Ninth Circuit identified an 8 factor test:
1. the level of recognition that the plaintiff has among the segment of the society for whom the defendant’s product is intended;
2. the relatedness of the fame or success of the plaintiff to the defendant’s product;
3. the similarity of the likeness used by the defendant to the actual plaintiff;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. defendant’s intent on selecting the plaintiff; and
8. likelihood of expansion of the product lines.
Finding material issues of fact remained, the district court denied Avela’s MSJ as to this claim.
Ultimately, it was this claim on which the jury found for Fifty-Six.
The relevant documents are below.
Defendant Avela’s Motion for Summary Judgment
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Plaintiff Fifty-Six’ Response to Def. MSJ
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Plaintiff Fifty-Six’ Motion for Partial Summary Judgment
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Defendant Avela’s Response to Plaint. pMSJ
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Order Granting in Part and Denying in Party Defendant’s MSJ
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Jury Instructions on §43(a) Claim
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