The Ninth Circuit Court of Appeals upheld a district court ruling that T-shirts with the image of reggae singer Bob Marley infringed his family’s trademark rights.
As the court noted in its opinion,
Bob Marley transcended celebrity roles from 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—Marley’s influence continues to resonate, and his iconic image to command millions of dollars each year in merchandising revenue.
The plaintiff in the case was Fifty-Six Hope Road Music, Ltd., an entity owned by Marley’s children and formed for the purpose of commercializing his intellectual property.
Iron Lion Zion
In 1999, Hope Road granted Zion Rootswear, LLC an exclusive license “to design, manufacture, and sell T-shirts and other merchandise bearing Marley’s image.”
The defendants in the case sold competing Marley merchandise, including posters and other artwork. These products were sold at Target, Walmart, and other retail stores.
In 2008, plaintiffs sued the defendants, alleging causes of action including trademark infringement and false endorsement.
The case went to trial, and the jury awarded $300,000 in damages against only one set of defendants, and only for intentional interference with prospective economic advantage.
After the trial, the judge reopened discovery to allow the submission of evidence about the defendants’ profits. Based on this new evidence, the District Court ordered the defendants to pay damages of more than $1.5 million.
The Ninth Circuit noted,
This case presents a question that is familiar in our circuit: when does the use of a celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act? We conclude that the evidence presented at trial was sufficient for a jury to find Defendants violated the Lanham Act by using Marley’s likeness.
The defendants argued that a celebrity’s “persona” was too “amorphous” to constitute a “name, symbol, or device” under US trademark law. The court disagreed, noting that a “celebrity whose endorsement of a product is implied through the imitation of a distinctive attribute of the celebrity’s identity, has standing to sue for false endorsement.”