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Following jury verdict on Lanham Act claim in favor of entity owned by Bob Marley’s children, Ninth Circuit affirms denial of defendants’ motion for judgment as matter of law, finding that trial evidence supported jury’s finding that defendants’ use of Marley’s image on T-shirts and other merchandise constituted false endorsement and rejecting argument that allowing plaintiffs to vindicate false endorsement claim based on use of deceased celebrity’s persona essentially creates federal right of publicity.

This appeal stems from a dispute regarding the unauthorized production and sale of T-shirts and other merchandise bearing reggae legend Bob Marley’s image. Plaintiff Fifty Six Hope Road Music, Ltd. is an entity owned by Marley’s children, formed for the purpose of acquiring and exploiting the assets and rights of, and commercial interests in, the late Bob Marley, and plaintiff Zion Rootswear, LLC, is Hope Road’s licensee, which uses hundreds of different images of Marley on its products. Defendants were involved with the sale of competing Marley merchandise, including merchandise utilizing photographs of Marley that A.V.E.L.A. had obtained from a third-party photographer.

Plaintiffs asserted five claims against defendants: (i) trademark infringement under 15 U.S.C. § 1114, (ii) false endorsement under 15 U.S.C. § 1125(a), (iii) common law trademark infringement, (iv) unauthorized commercial use of right to publicity under Nev. Rev. Stat. § 597.770 et seq., and (v) intentional interference with prospective economic advantage. The district court granted defendants’ motion for summary judgment on the § 1114 claim, the common law trademark claim, and the state law right of publicity claim. The two remaining claims were tried by a jury.

After a trial, the jury found for the plaintiffs and awarded $300,000 in compensatory damages on the interference claim. The district court ordered post-trial discovery on profits and later ordered defendants to disgorge approximately $800,000 in profits to plaintiffs, apportioning the profits among the defendants and granting plaintiffs’ motion for more than $1.5 million in attorney’s fees. After trial, defendants moved for judgment as a matter of law, which the district court denied. Defendants appealed that denial, as well as several related pre- and post-trial orders, to the Ninth Circuit. Plaintiffs appealed, inter alia, the order granting summary judgment on the right of publicity claim.

With respect to the false endorsement claim under 15 U.S.C. § 1125(a), the appeals court concluded that plaintiffs adduced sufficient evidence of false endorsement at trial. Applying the “likelihood of confusion” factors used in celebrity endorsement cases, the panel found that the evidence indicated (1) there was a high level of recognition of Marley’s image; (2) Marley’s image had long been associated with the kind of apparel at issue here; (3) A.V.E.L.A. used actual photos of Marley on its merchandise; (4) A.V.E.L.A.’s licensees sold Marley products through the same retailers as Hope Road’s licensees; (5) the merchandise was inexpensive, implying a low degree of consumer care with respect to purchasing the products; (6) A.V.E.L.A.’s merchandise was similar to that of Hope Road, implying an intent to confuse; and (7) Hope Road’s affiliation with Marley and his image was a matter of common industry knowledge. While consumer survey results revealed “some” actual consumer confusion regarding Marley and his family’s sponsorship of the A.V.E.L.A. merchandise, the remaining factors strongly indicated the requisite likelihood of confusion.

The Ninth Circuit did note that defendants raised what it described as “several potentially salient defenses” challenging the judgment on appeal; however, the court declined to consider those defenses, finding that defendants had not properly raised them before the district court and therefore had not preserved them on appeal. These waived defenses included an “aesthetic functionality” defense, a Copyright Act defense under Dastar Corp. v. Twentieth Century Fox Film, Corp., and a First Amendment defense under Rogers v. Grimaldi.

The Ninth Circuit also rejected defendants’ argument that allowing plaintiffs to vindicate a § 1125(a) claim predicated on the use of a deceased celebrity’s persona essentially created a federal right of publicity, finding that § 1125(a) claims require an additional element—that the use would be likely to confuse consumers as to the sponsorship or approval of a defendant’s goods.

With respect to the “intentional interference with prospective economic advantage” claim, the panel similarly determined that sufficient evidence supported the jury’s verdict, as a Hope Road’s licensee had lost apparel orders to A.V.E.L.A., resulting in the loss of a $250,000 royalty for Hope Road. On the question of disgorgement of profits, the panel held that the district court properly considered and calculated defendants’ profits to which plaintiffs were entitled. Because a claim for disgorgement of profits under the Lanham Act is equitable, the panel determined that the Seventh Amendment did not compel submission of the profit calculation to a jury. Nor, accordingly to the panel, did the district court err in awarding plaintiffs’ attorney’s fees against A.V.E.L.A., as it correctly determined that plaintiffs were the prevailing party, and A.V.E.L.A.’s conduct was “exceptional” under the Lanham Act in light of its apparent willful infringement of Hope Road’s rights to Marley’s likeness.

The panel left undisturbed the district court’s remaining orders granting summary judgment to defendants on plaintiffs’ right of publicity claim under Nevada law and denying an award of punitive damages. With respect to the right of publicity claim, the Ninth Circuit agreed that pursuant to the applicable Nevada statute (Nev. Rev. Stat. § 597.770 et seq.), plaintiffs had waived their publicity rights by failing to register them within six months of learning of defendants’ unauthorized use.

Judge Morgan Christen concurred in the result but declined to join in the majority’s reasoning regarding the sufficiency of evidence on the false endorsement claim, cautioning that goods bearing celebrity images may too easily imply actual confusion and suggesting that “where a celebrity image is itself the only indication of sponsorship . . . a finding of actual confusion under §43(a) must be supported by some evidence that the confusion could have had an impact on the consumers’ purchasing decisions.”