February 26, 2015

Bob Marley's Heirs Jammin' With a Win at the Ninth Circuit

by Stites & Harbison, PLLC

Bob Marley's heirs got up, stood up, stood up for their rights. They didn't give up the fight and last week were sucessful in their claim under Section 43(a) of the Trademark Act before the U.S. Court of Appeals for the Ninth Circuit. The issued an opinion relates both to the factors considered to determine likelihood of confusion and my discussion over the past two weeks of the right of publicity. This opinion also shows how Bob Marley's heirs were able to succeed with a claim considered by the Ninth Circuit where executors of the estate of Diana, Princess of Wales could not.

We saw two weeks ago that the Trademark Office refused to register "PRINCESS KATE" under Section 2(a) of the Lanham Act because it creates a false connection with Kate Middleton. However, Section 2(a) is limited to registration of a mark. Last week we discussed the action brought by the Parks Institute for violation of the right of publicity of Rosa Parks under state law and a successful First Amendment defense to that action.

Back in 2002, in Cairns v. Franklin Mint Co., the Ninth Circuit considered a claim by the executors of the estate of Princess Diana against the Franklin Mint.

The Franklin Mint had been making jewelry, plates, dolls etc. bearing Princess Diana's likeness since she married Prince Charles in 1981. The "right of publicity" claim under state law (California) failed because of the law of Princess Diana's domicile, Great Britain, applied rather than California law.

The executors of Princess Diana's estate also brought a claim under Section 43(a) of the Trademark Act as to whether the use of her likeness with products was likely to cause confusion as to sponsorship or approval of the products under Section 43(a) of the Trademark Act. The Ninth Circuit rejected the claim, finding that "[b]etween 1981 and 1997, many products, including some that were largely indistinguishable from Franklin Mint products, bore the name and likeness of Princess Diana, who neither endorsed nor objected to any of these products. Consumers, therefore, had no reason to believe that Franklin Mint's Diana-related products were endorsed by the Princess."

This is an example of a Princess Diana related product:

Princess Diana

The state "right of publicity" claim asserted by Bob Marley's heirs also failed, but, unlike the executors of Princess Diana's estate, they were successful in their claim under Section 43(a) of the Trademark Act.

We have all seen Bob Marley's image on clothing, posters and other merchandise:

Bob Marley

Some of us may have wondered whether these uses of his likeness were authorized.

Fifty-Six Hope Road Music, Ltd. ("Hope Road") was formed by Bob Marley's heirs for the purpose of commercialization of Bob Marley's name and likeness. A.V.E.L.A was licensing some photographs of Bob Marley it had acquired from a photographer to various other companies for use on clothing and other merchandise in competition with Hope Road's licensee, Zion. The main issue before the Ninth Circuit in Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A. was whether the use of Bob Marley's likeness in connection with products was likely to cause confusion as to the sponsorship or approval of the products under Section 43(a) of the Trademark Act.

The court recognized the importance of the merchandising rights:

Bob Marley transcended celebrity roles form pop idol to muse, championing social change and diffusing his music and message to an ever-growing audience. Even now- more than thirty years after his death â Marley's influence continues to resonate, and his iconic image to command millions of dollars each year in merchandising revenue.

You may remember how effectively the First Amendment was used as a defense in the Rosa Parks case I mentioned above. In this case, however, the Ninth Circuit found that A.V.E.L.A had waived the First Amendment defense (lost the right to make the defense) because it hadn't made the argument in the court below.

You may have already concluded from reading about the Rosa Parks case that the First Amendment defense probably would not have worked anyway as a defense to use of Bob Marley's likeness on such purely commercial products as clothing and posters.

A.V.E.L.A.'s basic defense considered on appeal was that consumers were not likely to be confused as to whether Bob Marley or someone else who held the rights to his likeness sponsored or approved the products bearing his image â that is, the successful defense in the Princess Diana case.

The courts in the Ninth Circuit generally consider eight "likelihood of confusion" factors in deciding celebrity cases:

(1) The level of recognition that the celebrity has among the intended purchasers;

(2) The relatedness of the fame or success of the celebrity to the defendant's product

(3) The similarity of the likeness used by the defendant to the actual celebrity

(4) Evidence of actual confusion

(5) Marketing channels

(6) Degree of purchaser care

(7) Defendant's intent

(8) Likelihood of expansion of product lines

The Ninth Circuit found that all of the factors (except the last one, which was not discussed by either party because the Zion products and A.V.E.L.A. products were already sold in direct competition) weighed in favor of Bob Marley's heirs, including actual confusion, which was shown by a survey.

The court contrasted this case with the prior Princess Diana case, noting that Princess Diana knew of the vast commercial uses of her image but did nothing to prevent such use while she was alive. By contrast, Bob Marley "sold merchandise bearing his image during his lifetime, and his successors-in-interest have continued to do so, implying that his image served (and continues to serve) a source-identifying function". It was also critical that while, as with Princess Diana's name and likeness, there had been significant unauthorized use of Bob Marley's name and likeness, unlike the unauthorized use in Princess Diana's case, such unauthorized use had been vigorously contested, with more than 400 cease and desist letters sent and twenty lawsuits filed.

Finally, the Ninth Circuit rejected A.V.E.L.A.'s claim that allowing a plaintiff to win a Section 43(a) claim predicated on the use of a deceased celebrity's persona essentially created a Federal right of publicity claim. The Ninth Circuit pointed out that while a state right of publicity claim protected against the use of the Plaintiff's identity for commercial advantage without permission, Section 43(a) is different (and narrower) because it requires a showing of likelihood of confusion.

Since we've talked so much about Bob Marley, it seems only appropriate that we give a tribute to his greatest hits: