Since his death in 1981, reggae superstar Bob Marley and his “image” continue to be broadly popular and command millions of dollars each year in merchandising revenue. His children own an entity called Fifth Six Hope Road, Music, Ltd. which was formed to acquire and exploit the assets, rights and commercial interests of their late father. In 1999, Hope Road granted Zion Rootswear, LLC, an exclusive license with regard to the use of Bob Marley’s image on various clothing and other merchandise.
After discovering that several companies had been selling t-shirts and other merchandise with the image of Bob Marley on them, Hope Road and Zion brought a lawsuit against them and included a claim for “false endorsement” under 15 USC §1125(a). (This article does not address the other claims pursued in this lawsuit.)
After trial, a jury found that the Defendants were liable under a false endorsement theory and awarded Plaintiffs almost $800,000 in damages plus their attorney’s fees of approximately $1.5 million. The Defendants appealed the decision to the Ninth Circuit arguing that there was not sufficient evidence to support a finding against them and that Plaintiffs’ use of the false endorsement claim under 15 USC §1125 effectively created a federal “right of privacy,” which Congress had not intended.
The primary issue facing the Ninth Circuit in the case Fifty Six Hope Road, Ltd., et al. v. A.V.E.A., Inc., et al. was “when does the use of the celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act.” The Court began by looking at the text of section 1125(a) which provides in relevant part, “any person who, on or in connection with any goods … uses in commerce any … name, symbol or device or any combination thereof … which … is likely to cause confusion or to cause mistake or to deceive as to … the origin, sponsorship or approval of his or her goods … by another person … shall be liable in a civil action by any person” who has been damaged.
The Defendants first argued that a celebrity’s “persona” was too “amorphous” to constitute a “name, symbol or device” under section 1125(a) to allege a Lanham Act violation. The Ninth Circuit rejected this and found that it had long been recognized that “a celebrity whose endorsement of a product is implied through the imitation of a distinctive attribute of the celebrity’s identity” can sue for such a violation. Given that the Defendants were appealing post-verdict, the Ninth Circuit was bound to construe the evidence in a light most favorable to plaintiffs given that they had won at trial.
The Ninth Circuit began by focusing on the “likelihood of confusion” inquiry which asks “whether a reasonably prudent consumer in the marketplace is likely to be confused” with regard to the goods bearing the marks at issue. In a celebrity case such as this one, the Court ordinarily uses an eight factor test to determine the likelihood of confusion: (1) the celebrity’s level of recognition in the intended market; (2) the link between the celebrity’s fame or success and the defendant’s product; (3) the similarity of the likeness used by defendant’s product to the celebrity; (4) evidence of actual confusion; (5) the marketing channels used by plaintiffs and defendants; (6) the degree of care exercised by the likely purchaser; (7) the intent by defendant to use the celebrity’s likeness; and (8) the likelihood of expansion of product lines. Given that the lawsuit was not brought by Bob Marley, the Court must also consider an additional factor concerning the strength of association of the mark and the Plaintiff. In analyzing these factors, the Ninth Circuit found that it could not conclude as a matter of law that the jury erred in finding a Lanham Act violation for false endorsement.
Factors 1-3. The Ninth Circuit found that evidence on these first three factors was essentially undisputed. Bob Marley’s image had a high level of recognition in the target market and had long been associated with clothing merchandise. In fact, while he was alive Bob Marley sold his own merchandise bearing his image and his heirs continued to do so following his passing. Furthermore, it was undisputed that Defendants were using photos of him on their merchandise.
Factor No. 4. Defendants’ primary argument was on the fourth factor that there was insufficient evidence of actual confusion. In proving their case, Plaintiffs provided data from a survey of interviews they conducted with two groups of people, those who were shown Defendants’ merchandise bearing Bob Marley’s image and a control group who were shown a t-shirt bearing the image of an unknown African American man with dreadlocks. Almost twice as many people in the first group responded that Bob Marley (or his heirs) had granted permission for the t-shirt to be sold as compared to the other group. The Ninth Circuit found that this bore some evidence of actual confusion. To the extent the Defendants contended that there were problems with the data or the survey process, this would have gone the survey’s probative value. Furthermore, the Ninth Circuit noted that while evidence of actual confusion is relevant to likelihood of confusion, it is not required in a false endorsement claim.
Factor No. 5. Plaintiffs produced evidence at trial that showed that Defendants had marketed their products in the same retail stores as Plaintiffs’ and their licensees.
Factor No. 6. The Court again found that Plaintiffs had produced sufficient evidence as to the low degree of purchaser care. In fact, Defendants’ representatives testified that given the cost of their merchandise between $7 and $15, the products were not generally expensive and were typically “a good value” and “an impulse purchase.” Defendants could not dispute the well standing legal principle “that low prices imply correspondingly low consumer care” when purchasing a certain product.
Factor No. 7. Here, the Ninth Circuit clarified that Plaintiffs were not required to prove that the Defendants knew that their actions were unlawful but only that “they intended to `confuse’ consumers concerning the endorsement of their products”. To satisfy this burden, Plaintiffs offered evidence that demonstrated that Defendants’ t-shirts contained a nearly identical photograph of Bob Marley with similar Rastifarian green, yellow and red stripes on a black t-shirt. The Court held that a reasonable jury could “infer that [Defendants] sought to associate their product with Plaintiffs by intentionally creating similar merchandise.”
None of the parties addressed the eight factor of likelihood of expanding product line and so the Court turned to the additional factor as to the association between Bob Marley and the Plaintiffs. The Court found that there was sufficient link here because Bob Marley himself sold merchandise bearing his image during his lifetime and his successors had continued to do so after his passing. Furthermore, over the years, Plaintiffs have actively prosecuted similar claims of improper uses of Bob Marley’s likeness and there was testimony offered that even Defendants were aware that Hope Road and Zion held the license to Bob Marley’s image based on “market knowledge.” Thus, the Ninth Circuit concluded that the jury properly found that there was a likelihood of confusion as to Bob Marley’s “endorsement” of Defendants’ products.
Defendants also argued that the claim for a false endorsement should fail because Bob Marley’s image had not been used to endorse some other product. The Court rejected this argument and held that the use of Bob Marley’s image on Defendants’ product itself was sufficient to state a claim under the Lanham Act since it had been “used directly on the Defendants’ goods,” as required by section 1125(a).
Finally, the Defendants argued that allowing Plaintiffs to prevail on their false endorsement claim under 15 USC §1125(a) would essentially create a “federal right of publicity.” The Ninth Circuit rejected this argument as well, recognizing that a claim under the Lanham Act for false endorsement was different than a state right of publicity claim because it added the additional element of likelihood of confusion. The Court found that the inclusion of this additional factor, coupled with the assumption as to Congress’ intent, led to the conclusion that a false endorsement claim under the Lanham Act was sufficiently different from and did not create a federal right of privacy claim.
One issue that permeates the Ninth Circuit’s opinion appears to be the fact that Defendants chose to waive or not pursue certain defenses as to Plaintiffs’ false endorsement claim. These included the aesthetic functionality defense as well as a defense under the Copyright Act that were not developed in the lower court. As a result, the Ninth Circuit was precluded from considering them and thus it is uncertain whether the assertion of these defenses would have led to a different result.